Infringement Analysis – 21 Defenses to a Patent Infringement Suit

Infringement Analysis: 21 Defenses to a Patent Infringement Lawsuit

Copyright 2000-2011. Frederic M. Douglas, All Rights Reserved.

Determining whether a patent is infringed should entail the same process that a court would use. Generally, a court would make findings on validity, infringement, and enforceability. Below is a list of twenty-one specific defenses to patent infringement claims:

(1) Expired Patent,

(2) Noninfringement under 35 USC § 271,

(3) Anticipation by prior art under 35 USC § 102 (a), (b), (d), (e), or (g) (Subsection (g) repealed with America Invents Act),

(4) Obvious over prior art under 35 USC § 103,

(5) Double patenting,

(6) Improper inventorship under 35 USC § 102 (f),

(7) Improper scope of claims under 35 USC § 112,

(8) Fraud,

(9) Antitrust violation,

(10) Plaintiff does not own the patent (standing),

(11) License to the patent,

(12) Abandonment under 35 USC § 102 (c),

(13) Misuse,

(14) Laches,

(15) Intervening Rights,

(16) Lack of utility under 35 USC § 101,

(17) Inoperable invention under 35 USC § 112,

(18) Not statutory subject matter under 35 USC § 101,

(19) Foreign filing after non-publication request.

(20) Dis-joinder (Multiple defendants with no joint infringement).

(21) Prior commercial use – 35 U.S.C. Section 273.

I identified the above 21 defenses to patent infringement.

Note: Best Mode repealed by America Invents Act.

Do you know of any others?  Did I get any wrong?  Let me know

About freddouglas
Attorney registered with the U.S. Patent and Trademark Office. Litigation in state and federal courts, copyrights, patents, trademarks, trade secrets, entertainment law, general litigation. Frederic Douglas | Featured Attorney Litigation

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