Legal Definitions - breaking a patent

Breaking a patent refers to the legal process of proving that an existing patent is either invalid (meaning it should never have been granted in the first place) or unenforceable (meaning it was granted properly but the patent holder has misused it). This action is often taken by a defendant in a patent infringement lawsuit to defend themselves against allegations of copying an invention, or by a competitor seeking to remove a patent barrier from the market.

Here are some examples illustrating how a patent might be "broken":

• Example 1: Prior Art Discovery

  A small tech startup, "InnovateCo," develops a new method for encrypting data. A larger company, "SecureCorp," holds a patent on a similar encryption method and sues InnovateCo for infringement. InnovateCo's legal team conducts a thorough search and uncovers a forgotten academic paper published 30 years ago that describes the exact same encryption algorithm. This "prior art" demonstrates that SecureCorp's patented method was not truly novel when the patent was filed.

  How it illustrates "breaking a patent": By presenting this evidence, InnovateCo is "breaking the patent" by proving it is invalid because the invention already existed in the public domain before SecureCorp claimed it as new and unique.

• Example 2: Patent Misuse and Anti-Competitive Practices

  "PharmaGiant" holds a patent on a life-saving drug. To license this patent to generic drug manufacturers, PharmaGiant imposes a condition that licensees must also purchase all their manufacturing equipment exclusively from a subsidiary of PharmaGiant, even if cheaper or better equipment is available elsewhere. This creates an illegal "tying arrangement" that stifles competition in the equipment market.

  How it illustrates "breaking a patent": A generic drug manufacturer challenges this condition, arguing that PharmaGiant is using its patent monopoly to unfairly dominate an unrelated market (manufacturing equipment). If a court agrees that PharmaGiant's licensing terms constitute an anti-competitive practice, the patent could be deemed unenforceable due to patent misuse, effectively "breaking" its power to control the market in this abusive way.

• Example 3: Fraudulent Patent Application

  An inventor applies for a patent on a new type of durable plastic. During the application process, the inventor is aware of a very similar plastic formulation developed by a competitor that was never patented but was publicly disclosed. The inventor intentionally fails to disclose this crucial information to the U.S. Patent and Trademark Office (USPTO), making their invention appear more unique than it actually is.

  How it illustrates "breaking a patent": Years later, when the inventor tries to enforce their patent against another company, that company discovers the withheld information. They can then argue that the patent was obtained through "fraud on the patent office." If proven, this would "break the patent" by rendering it invalid because it was improperly issued due to the applicant's deceptive conduct during the application process.