Patents give inventors exclusive rights to their inventions. But these rights have limits. When a patent owner tries to extend control beyond the scope of the patent, courts may find patent misuse.
What Is Patent Misuse?
Patent misuse is a defense to patent infringement. The doctrine prevents patent owners from using their patents in ways that violate public policy or antitrust principles. If a court finds patent misuse, it can make the patent unenforceable until the misuse ends and its effects fade.
The doctrine protects the public from patent owners who try to expand their monopoly beyond the scope of their patent grant.
Understanding Patent Tying
Patent tying occurs when a patent owner conditions the sale or license of a patented item on the purchase of a separate, unpatented item. This is one of the most common forms of patent misuse.
A Clear Example
Imagine a company owns a patent on a coffee machine. The patent owner tells customers: “You can buy our patented coffee machine, but you must also buy our unpatented coffee pods from us for the next two years.”
The coffee pods are not part of the patented invention. By forcing customers to buy the unpatented pods to get the patented machine, the patent owner extends its monopoly beyond the scope of the patent. This is patent tying.
Why Patent Tying Matters
Patent tying harms competition. It prevents customers from choosing alternative suppliers for the unpatented item. The practice can also harm innovation by blocking competitors from entering the market for the tied product.
Courts have treated patent tying as misuse because it:
- Extends the patent monopoly to unpatented goods
- Restricts competition in markets for unpatented items
- Forces customers into arrangements they might not otherwise accept
Exceptions and Defenses
Not every tying arrangement violates patent misuse principles. Courts consider several factors:
Market Power: The patent owner must have market power in the market for the patented item. Without significant market power, the tying arrangement may not harm competition enough to constitute misuse.
Separate Products: The tied items must be separate products. If the unpatented item is essential to the patented invention’s use, courts may not find tying.
Business Justifications: Some tying arrangements serve valid business purposes, such as maintaining quality standards or protecting the patented invention from damage.
Consequences of Patent Misuse
A finding of patent misuse can have serious consequences:
Unenforceability: The patent becomes unenforceable against all infringers, not just the party that raised the defense.
Duration: The patent remains unenforceable until the patent owner stops the misuse and eliminates its effects.
No Damages: The patent owner cannot collect damages for any infringement that occurred during the period of misuse.
Avoiding Patent Misuse
Patent owners can protect their rights while avoiding misuse by:
- Offering the patented item without requiring purchase of unpatented items
- Providing legitimate options for obtaining necessary supplies from multiple sources
- Ensuring any bundled arrangements serve genuine technical or quality purposes
- Seeking legal counsel before implementing licensing or sales terms that could raise tying concerns
Conclusion
Patent tying and patent misuse doctrines balance the rights of patent owners against the public interest in competition. While patents grant exclusive rights, those rights do not extend to forcing customers to buy unpatented goods or services. Understanding these limits helps patent owners maximize the value of their patents while staying within legal boundaries.
Justin Miller is a solo patent attorney. In 2025 he started his own law firm, Distinct Patent Law, after nearly 15 years of practice. His firm is located in Saint Petersburg Florida. He serves clients in Tampa Bay, and because patent law is federal, can file patent applications for clients all over the United States.