Can One Infringe an Invalid Patent? The Blindside of Patent Arbitration

By: Luiz Miranda


Enforceability of U.S. Patents are primarily a matter for the Courts. However, when disagreement arises from an international patent licensing agreement, these matters typically end up in arbitration. Parties cite the many advantages of arbitration as the reasoning behind such arrangements. But given the availability of the new Post-Grant Review forums at the United States Patent and Trademark Office, are licensees of “weak” patents giving up too many rights by their use of arbitration?

This paper aims to educate its reader on the advantages of arbitration clauses in U.S. patent licensing agreements, yet stress the caveats of blindly pursing them. It will then illustrate scenarios of inequitable arbitration awards upheld by U.S. Courts, contrary to public policy, such as upholding an award that was based on a now invalid patent.

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