Post-Sale Restrictions: Protecting Patented Products After Lexmark

The Supreme Court’s decision in Impression Products v. Lexmark Int’l (U.S. 2017) changed the playing field for enforcing patent rights once a patented item is sold. The Court invalidated the long-standing precedent under which patent owners could raise infringement claims to enforce post-sale rights to limit how the patented products would be used or resold.

The Court’s decision left open the possibility of maintaining control of the patent rights through licensing. However, the Court gave little guidance as to how patent owners can use licensing to control use of the products in question.

Without an infringement remedy, companies should proceed carefully to enforce post-sale restrictions. In light of the Lexmark decision, patent owners and their counsel should reassess contracts and reevaluate their strategic approach for protecting patent rights and controlling the use of the patented products downstream.

Listen as our authoritative panel of attorneys reviews the Lexmark decision and discusses the impact of the decision for the patent world. The panel will also provide insight for how to best protect patented products without post-sale restrictions.

1. Impression Products v. Lexmark Int’l
2. Implications of the decision for patent practice
3. Best practices for protecting patented products without post-sale restrictions

The panel will review these and other key issues:

• What implications does Lexmark have for patent practice?
• What types of licenses are enforceable under contract law?
• What strategies can patent owners and counsel employ to control use of patent products after a sale?