The Interaction of Patent Exhaustion and Transactions in Patented Goods After Impression Products v. Lexmark International
SMU Sci. & Tech. L. Rev., vol. 22, p. 3 (2019)
20 Pages Posted: 15 Nov 2019
Date Written: 2019
In Impression Products, Inc. v. Lexmark International, Inc., the U.S. Supreme Court provided a justification for patent exhaustion and established rules governing its application. Both U.S. and foreign sales of a patented product trigger application of the doctrine to the article sold. This allows patented articles to flow in commerce without any attached patent rights interfering with the free alienability of such articles. Further, conditions attached to the sale of patented articles are enforceable via breach of contract actions rather than by patent infringement actions. Analogizing to copyright law, these bright-line rules should permit avoidance of exhaustion by licensing mere use rights for patented products. However, it is proposed that bona fide purchaser rules apply to such licenses so that downstream users of patented products may possess these products free of any use restrictions they lack notice of; thereby furthering the policy of minimizing restraints on alienation of such goods.
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