Contractual Expansion of the Scope of Patent Infringement through Field-of-Use Licensing

Patentees sometimes license their inventions through field-of-use licenses, which permit licensees to use the inventions, but only in specified ways. Field-of-use licensing is often procompetitive, because the ability to provide different licensing terms for different users can encourage broader licensing of inventions. But in recent United States cases, the Federal Circuit Court of Appeals and lower courts have upheld field-of-use licenses prohibiting activities that licensees would otherwise have been permitted by patent law, such as the repair and resale of patented products. The recent cases rely on the Federal Circuit\u27s decision in Mallinckrodt, Inc. v. Medipart, Inc., where the court effectively allowed the patentee to use contract to avoid limitations on infringement liability. The opportunities that Mallinckrodt made available to patentees were anticipated by several commentators at the time of the decision in 1992, but the exploitation of those opportunities has recently accelerated. This article seeks to demonstrate the dramatic expansion of patent law that has resulted, and to do so specifically by showing how the courts have allowed patentees to expand the range of acts that constitute patent infringement. The article also briefly compares these effects in patent law to the analogous effects of shrink-wrap licenses and the DMCA in copyright law, and it assesses the potential for similar expansion of patent infringement liability in Europe