Legal Nuances When a Patent-Holding Company Seeks to Enforce a U.S. Patent


The patent-holding company business model, so prominent in today’s patent litigation, has its drawbacks. A patentee’s status as a nonpracticing entity, e.g., a patent-holding company, can dramatically impact the scope of remedies available for patent infringement, particularly in the areas of obtaining lost-profit damages and injunctive relief. The fact that a patentee does not practice the patent can, in some circumstances, impact procedural aspects in an infringement litigation such as the patentee’s ability to resist motions to transfer venue, limit jurisdictional contacts for declaratory judgment actions asserted against the patent, and even resist motions to stay an infringement action pending a PTO reexamination. This paper, by the author of the patent law treatise "Annotated Patent Digest," discusses the current state of the law for these topics as applied to the various types of patent-holding companies; the licensing-only patent-holding company, the manufacturer subsidiary patent-holding company, and the educational or commercial research entity.

LOADING PDF: If there are any problems, click here to download the file.

Written by:

Published In:

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© Robert Matthews, Jr., Matthews Patent-Law Consulting | Attorney Advertising

Don't miss a thing! Build a custom news brief:

Read fresh new writing on compliance, cybersecurity, Dodd-Frank, whistleblowers, social media, hiring & firing, patent reform, the NLRB, Obamacare, the SEC…

…or whatever matters the most to you. Follow authors, firms, and topics on JD Supra.

Create your news brief now - it's free and easy »

All the intelligence you need, in one easy email:

Great! Your first step to building an email digest of JD Supra authors and topics. Log in with LinkedIn so we can start sending your digest...

Sign up for your custom alerts now, using LinkedIn ›

* With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name.