Patent infringement arises when one “makes, uses, offers to sell, or sells” a patented invention without authority from the patent holder. However, once the first authorized sale of the patented product has occurred, the patent holder’s rights with respect to that invention are exhausted, and the purchaser is free to use or resell the purchased product as it wishes. This legal doctrine of “first sale” or patent exhaustion attempts to strike a balance between protecting a patentee’s intellectual property (incentive to invent), while encouraging secondary markets in patented articles and limiting the patentee’s power in those markets (encouraging competition).

Traditional patent exhaustion protects subsequent uses and re-sales of a patented invention. However, courts generally have not extended this protection to “making” the patented invention. That is, the law does not protect an authorized purchaser from subsequently making the patented invention without authority from the patent holder.

Originally published in Genetic Engineering & Biotechnology, May 1, 2013.