Monday, August 15, 2011

Can We License Individual Patent Claims?

Dear Rich: We recently received a CIP patent (continuation in part patent) with numerous claims pertaining to different industries. For example, one claim covers the invention as it relates to government. Another claim covers the invention as it relates to the medical industry, etc. Can the owner of a patent assign or license the rights to specific claims within the patent? For example, can we license or assign only the rights of the claims pertaining to the medical industry to a biochemical company? According to Patent it Yourself author, David Pressman, the answer is "Generally yes, unless the licensing of less than all of the patent claims is in furtherance of a scheme to monopolize a certain industry beyond the monopoly conferred by the patent -- for example, in one case when a company was willing to license a critical patent only if the licensee took licenses under some additional undesirable patents, that was held to be an illegal antitrust practice since it extended the patent monopoly beyond its ordinary scope." Occasionally, a party sued for patent infringement will raise this issue as a defense (known as "patent misuse"). Pressman reminds readers that when it comes to questions of  antitrust law, things can get complicated (as the law is often vague on the subject). It's one of those areas where an attorney's consultation is probably necessary.