In Impression Products, Inc. v. Lexmark International, Inc. the United States government has taken its most anti-patentee position on international exhaustion in modern history, as manifested by its summary of the argument (reproduced as part of the pdf version of this note).
What did Ms. Lee Say on the Record in Impression Products? Nothing! Absolutely nothing! Neither she nor anyone else from the PTO is even a signatory to the Government’s brief.
Should Ms. Lee be Asked to Stay as PTO as Pres. Trump’s Director? Good question!
An Answer in Impression Products: The case, No. 15-1189, is set for Supreme Court argument March 21, 2017. A decision is expected by the end of June 2017.
From the Government’s Brief in Impression Products:
“II. A. With respect to the [U.S.-patented] cartridges that [the patentee] sold outside this country, the Court should apply a rule of presumptive international exhaustion, under which a foreign sale authorized by the U.S. patentee exhausts U.S. patent rights unless those rights are expressly reserved. Lower courts have coalesced around that rule, which appropriately reconciles the territorial nature of patent law with a purchaser’s traditional entitlement to assume that an unrestricted sale conveys all of a seller’s rights in the article sold.
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“C. The Court should *** reject the rule, advocated by [the patentee] and adopted by the [Federal Circuit] court below, that foreign sales can never exhaust the seller’s U.S. patent rights. Nothing in the nature of a foreign sale logically precludes a U.S. patentee from conveying his U.S. rights as part of the foreign transaction. A foreign sale should be understood to have that effect unless the patentee expressly reserves his U.S. rights at the time of sale.”