For one reason or another, the patent owner may not be ready to make or sell the patented invention. The patent owner, for example, University or individual inventor, may be thinking of licensing the invention to another who can market the invention, and collect royalty payments rather than undertake efforts to secure financing necessary to bring their works to market themselves. However, much to the patent owner's surprise and anger, it may notice an infringer illegally making and selling the invention. Can the patent owner go and automatically get an order to halt the infringer's operations? The answer may be surprising. The courts are not always sympathetic to the patent owner.



In the recently decided fight between internet giant eBay and another company Mercexchange, who owned a patent for doing business on the web, Justice Clarence Thomas, speaking for the United States Supreme Court, ruled that the patent owner, besides showing that the patent has been violated, must prove that a number of things are lining up in its favor before it can stop the infringer. This is a dramatic departure from the earlier lower court ruling that, except in rare situations, a court should automatically issue an order to halt the infringer's operations.

To succeed in stopping the infringer's operations, Justice Clarence Thomas, writing for the Supreme Court, said that the patent owner must show that the patent owner has suffered beyond repair by the actions of the infringer; that money cannot compensate for the infringer's actions; how the patent owner's hardship outweighs the hardship of the infringer; and that public interest would not be served by stopping the infringer. This is commonly called the "four-factor test".

In proving that things are lining up in his favor, one question that would come up is how strong the patent is - i.e., can it survive an attack on its validity. A weak or vague patent is of little use. In the words of Justice Anthony Kennedy, "the potential vagueness and suspect validity of ... the patents may affect" the outcome.

Securing a strong patent is not trivial. It is important that the patent is filed promptly and accurately. If the patent was filed long after the invention was published in a magazine or displayed as a poster, its validity or vitality comes into question. Or the patent may have been filed promptly but the patent may not cover the invention adequately. In some instances, important information may have been hidden from the Patent Office. To succeed in stopping the infringer, or getting a sizable royalty or settlement, it is critical that the patent is strong and robust.