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(Message started by: Peter123 on Oct 2nd, 2007, 1:37pm)

Title: Invalid vs. unenforceable
Post by Peter123 on Oct 2nd, 2007, 1:37pm
Can a patent be found unenforceable but not invalid?

Title: Re: Invalid vs. unenforceable
Post by Isaac on Oct 2nd, 2007, 2:31pm

on 10/02/07 at 13:37:33, Peter123 wrote:
Can a patent be found unenforceable but not invalid?


Yes.


Title: Re: Invalid vs. unenforceable
Post by Peter123 on Oct 3rd, 2007, 10:41am
Thanks. Does this mean that the difference between an invalid patent and a non-enforceable patent is that the former cannot be enforced against anybody whereas the latter cannot be enforced against the other party in a law suit? ???

Title: Re: Invalid vs. unenforceable
Post by patent_type on Oct 3rd, 2007, 12:42pm
Not entirely.  What it means is that there are different legal standards for whether a patent is a valid patent and whether a patent is enforceable.  An opponent may be able to prove its case against one set of standards but not another.

While an invalid patent is not enforceable, an unenforceable patent may still be valid.  If it is unenforceable, I believe it is unenforceable against the world.  This can have implications such as if there were a terminal disclaimer filed relating to the patent, licensing issues ("so long as the patent is not declared invalid"), and other various issues for which the distinction is material.

Also, certain claims may be declarared invalid while others remain valid (and thus enforceable), but I believe if a patent is unenforceable, that goes to all of the claims of the patent.

Title: Re: Invalid vs. unenforceable
Post by Isaac on Oct 3rd, 2007, 5:15pm

on 10/03/07 at 10:41:00, Peter123 wrote:
Thanks. Does this mean that the difference between an invalid patent and a non-enforceable patent is that the former cannot be enforced against anybody whereas the latter cannot be enforced against the other party in a law suit? ???


A patent is but unenforceable when the court finds it inequitable under the circumstances to find the infringer liable despite the fact that the patent may be both valid and infringed.    Generally the reasons have to do with conduct of the patentee, and in the typical case that conduct results in the patent being unenforceable against anyone.


Title: Re: Invalid vs. unenforceable
Post by DJoshEsq on Nov 27th, 2007, 7:47pm
Read ....Gardco Manufacturing, Inc. v. Herst Lighting Co., 820 F.2d 1209 (Fed. Cir. 1987)




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