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Chicago-Kent Journal of Intellectual Property


patent misuse doctrine, economic tools, Princo v. International Trade Commission, Mark Lemley


This Article seeks to use economic tools and insights to find the best way for courts to construe or for Congress to modify the patent misuse doctrine. As the title suggests, it attempts to continue the conversation begun by Professor Mark Lemley in his often-cited Comment, The Economic irrationality of the Patent Misuse Doctrine.

Part I provides a brief history of the doctrine of patent misuse. Part II begins with a premise that a partial economic equilibrium can be achieved by attempting to match Congress's intended patent scope with the actual patent scope, even assuming that economic tools can never perfectly determine the ideal scope of patent law. Part II also holds that the ideal patent misuse doctrine should ( 1) adequately discourage patentees from seeking to exceed their patent scope while (2) continuing to encourage innovation by permitting patentees to fully benefit up to Congress's intended scope.

Part II then discusses a variety of solutions proposed by prior scholarship, determines which solutions satisfy this balancing point, and recommends several novel modifications to the patent misuse doctrine. Specifically, subpart A suggests that the misuse doctrine, if it is not abolished, should apply only where antitrust law applies. Subpart B recommends that an antitrust injury requirement should be added to the misuse doctrine, much like the doctrine of unclean hands requires the party asserting it to have been harmed. Subpart C recommends that the remedy for patent misuse should be balanced in a way that is fair to all parties and does not under-or over-deter misuse or infringement, which necessarily requires the abolishment of the unenforceability remedy.

Last, Part lll briefly discusses how recent Federal Circuit decisions like Princo v. International Trade Commission might reignite the conversation on the value of the doctrine of patent misuse.