A recent Supreme Court decision involving Marvel Comic‘s Spiderman provides a convenient opportunity to compare patents to superpowers, albeit superpowers with an expiration date. Here’s the background – an inventor creates and patents a real-life webslinger a la your friendly neighborhood Spiderman.  When Marvel began selling their own version of the invention, the inventor sued. The parties eventually settled under terms that included perpetual royalties to the inventor. Eventually, Marvel requested a judicial confirmation that it would only owe royalties for the remainder of the patent period.  Remember, patents provide inventors with exclusive rights but these rights only last the duration of a valid patent term. When the patent expires, the invention becomes public domain.

The Supreme Court sided with Marvel, basing its decision heavily on its 1964 decision in Brulotte vs Thys, which declared that patent royalties could only be required during the term of the underlying patent. What makes this decision frustrating is that the court agrees that there are numerous ways for parties to draft their royalty agreements to avoid the restrictions of Brulotte (discussed here). Unfortunately, this reality creates numerous traps for the weary inventor already frustrated with navigating the rules of US patent law.

If you’re considering options for licensing or otherwise profiting from you invention, or have not yet taken measures to protect your inventions, contact Zak Shusterman to discuss your best options.