Navigate Up
Sign In

Patent Exhaustion Condensed Law Summary

Patent Exhaustion is a common-law (non-statutory) affirmative defense to patent infringement, and is also known as the ‘first-sale doctrine’ for patents.  Essentially, the defense applies when there has been an authorized sale by the patentee (or by an entity in privity with the patentee) within the United States, of an article which substantially embodies the patent.
Patent Exhaustion may be asserted in a variety of contexts, as it is concerned with the limited scope of the legal monopoly conferred in the grant of the patent right.  Within the doctrine of Patent Exhaustion, there are a number of sub-doctrines that delineate exhausted material from material that remains within the scope of the patent right.  Material within the scope of the patent right, however, may still be shielded from infringement because, for instance, the activity is covered by a legally enforceable license.
This page features a tiring list of dualities within patent exhaustion.
Patent right is exhausted – purchaser may use, sell, repair, etc.
Patent right has not been exhausted
1.      Authorized sale vs. Legally enforceable license or post-sale restriction
Authorized sale
Legally enforceable license or post-sale restriction
2.      Legally enforceable license vs. Anti-competitive license
Anti-competitive license
Legally enforceable license or condition on sale
3.      Repair vs. Reconstruction
4.      Authorized sale in U.S. vs. Authorized sale abroad
Authorized sale in U.S.
Authorized sale abroad
5.      Substantial embodiment vs. Insubstantial embodiment
Article subject to “authorized sale” substantially embodies patent
Article subject to “authorized sale” does not substantially embody the patent
6.      After patent term has expired vs. During life of patent
Expired (patentee can only collect damages before time of expiration)
Patent has not yet expired