Patent Defenses is a way for businesses and individuals to find information about possible defenses to patent infringement claims under U.S. law. Although prepared by a law firm, it does not constitute and is not a substitute for competent patent law advice from competent patent professionals. Among other things, the variability of the kinds of inventions to which patent law can apply and the different circumstances in which inventions are made and infringement claims are brought prevent any overview or analysis that would cover any and all specific circumstances. In addition, and even though we seek to update this website on a roughly weekly basis, we necessarily cannot cover all related developments on all issues.

We seek instead to provide information that we hope will be useful as a starting point for thinking about issues relating to defenses against U.S. patent infringement claims.

Patent Defenses was last updated on October 11, 2018.

3 Ways to Use Patent Defenses

Below are some examples of how this research tool may be used:

  1. Search for a specific term or keyword. The search box in the upper left-hand side of the page can be used to search Patent Defenses for a keyword or phrase. For example, search “double patenting,” “exhaustion,” or “Princo” (or other case name), and then click on the section(s) of interest in the search results.
  2. Browse topics of interest. Patent Defenses is organized into easy-to-navigate sections found in the left-hand column of the page. Simply select a category on the left-hand column to learn more about that subject. For example, information about “direct” and “indirect” infringement can be found by expanding the “Non-Infringement” section.
  3. Explore “Recent Case Highlights.” Short summaries of selected recent patent decisions can be found by selecting “Recent Case Highlights” in the left-hand column. These decisions are also referenced elsewhere in Patent Defenses.

Redacted Areas of Patent Defenses

You may note that some areas in Patent Defenses are indicated as “redacted.” These areas contain confidential tips and strategies that are restricted to clients of the firm. If you are a client of the firm and would like access to the redacted confidential areas, please contact businessdevelopment@klarquist.com.

About Klarquist

Klarquist is an intellectual property boutique law firm with its main office in Portland, Oregon. Founded more than 75 years ago, our firm has more than 55 professionals dedicated to intellectual property matters. Our patent prosecutors and litigators have deep technical knowledge in a wide range of technologies, and our focus on intellectual property matters sets us apart from other firms.

We counsel international and domestic clients in all facets of intellectual property law for both prosecution and litigation matters. Klarquist represents a broad range of clients – solo inventors, mid-size companies, universities, governmental agencies, and Fortune 500 companies. To learn more, visit klarquist.com.

First-to-File Regime Effective Date (FITF): “(n) Effective Date-

(1) IN GENERAL- Except as otherwise provided in this section, the amendments made by this section shall take effect upon the expiration of the 18-month period beginning on the date of the enactment of this Act [Mar. 16, 2013], and shall apply to any application for patent, and to any patent issuing thereon, that contains or contained at any time

(A) a claim to a claimed invention that has an effective filing date as defined in section 100(i) of title 35, United States Code, that is on or after the effective date described in this paragraph; or

(B) a specific reference under section 120, 121, or 365(c) of title 35, United States Code, to any patent or application that contains or contained at any time such a claim.

(2) INTERFERING PATENTS- The provisions of sections 102(g), 135, and 291 of title 35, United States Code, as in effect on the day before the effective date set forth in paragraph (1) of this subsection, shall apply to each claim of an application for patent, and any patent issued thereon, for which the amendments made by this section also apply, if such application or patent contains or contained at any time–

(A) a claim to an invention having an effective filing date as defined in section 100(i) of title 35, United States Code, that occurs before the effective date set forth in paragraph (1) of this subsection; or

(B) a specific reference under section 120, 121, or 365(c) of title 35, United States Code, to any patent or application that contains or contained at any time such a claim.” (AIA, § 3(n)). CfBiogen (Fed. Cir. 05/07/15) (“the effective date provisions in the AIA are far from a model of clarity;” applications filed before March 16, 2013, remain subject to interference proceedings, but pre-AIA § 146 (trial court) review was eliminated for interference proceedings declared after September 15, 2012.)