Bad faith assertions of patent infringement; exemptions

  1. Law
  2. Mississippi Code
  3. Regulation of Trade, Commerce and Investments
  4. Regulation of Business for Consumer Protection
  5. Bad Faith Assertions of Patent Infringement
  6. Bad faith assertions of patent infringement; exemptions

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  1. It is a violationof Sections 75-24-351 through 75-24-357 for a person, inconnection with the assertion of a United States patent, to send,or cause any person to send, any written or electronic communicationthat states that the intended recipient or any affiliated person isinfringing or has infringed a patent and bears liability or owes compensationto another person if:
    1. The communicationthreatens litigation if compensation is not paid or the infringementissue is not otherwise resolved and there is a consistent patternof such threats having been issued and no litigation having been filed;
    2. The communicationfalsely states that litigation has been filed against the intendedrecipient or any affiliated person; or
    3. The assertionscontained in the communication lack a reasonable basis in fact orlaw because:
      1. The person assertingthe patent is not a person, or does not represent a person, with thecurrent right to license the patent to, or to enforce the patent against,the intended recipient or any affiliated person;
      2. The communicationseeks compensation for a patent that has been held to be invalid orunenforceable in a final, unappealable or unappealed judicial or administrativedecision;
      3. The communicationseeks compensation on account of activities undertaken after the patenthas expired; or
      4. The content ofthe communication fails to include the information necessary to informan intended recipient or any affiliated person about the patent assertionby failing to include any one of the following:

      1. The identityof the person asserting a right to license the patent to or enforcethe patent against the intended recipient or any affiliated person;

      2. The patent numberissued by the United States Patent and Trademark Office alleged tohave been infringed; or

      3. The factual allegationsconcerning the specific areas in which the intended recipient or affiliatedperson's products, services, or technology infringed the patentor are covered by the claims in the patent.

  2. It is not a violationof Sections 75-24-351 through 75-24-357 for any personwho owns or has the right to license or enforce a patent to:
    1. Advise othersof that ownership or right of license or enforcement;
    2. Communicate toothers that a patent is available for license or sale;
    3. Notify anotherof the infringement of the patent; or
    4. Seek compensationon account of past or present infringement, or for a license to thepatent, if the person is not acting in bad faith.
  3. The provisionsof Sections 75-24-351 through 75-24-357 shall not applyto any written or electronic communication sent by:
    1. Any owner ofa patent who is using the patent in connection with substantial research,development, production, manufacturing, processing or delivery ofproducts or materials;
    2. A state institutionof higher learning;
    3. An agency ofthe State of Mississippi;
    4. A technologytransfer organization that is owned by or has a written affiliationagreement with a state institution of higher learning or an agencyof the State of Mississippi, or is formed pursuant to Section 37-147-1 et seq.;
    5. Any person thathas licensed patent rights from a state institution of higher learning,an agency of the State of Mississippi, or a technology transfer organizationthat is owned by or has a written affiliation agreement, a state institutionof higher learning or an agency of the State of Mississippi, or isformed pursuant to Section 37-147-1 et seq.,provided that the ownership of the patent rights remains with thestate institution of higher learning, the agency of the State of Mississippi,or the technology transfer organization that is owned by or has awritten affiliation agreement with a state institution of higher learningor an agency of the State of Mississippi, or is formed pursuant to Section 37-147-1 et seq.;or
    6. Any person seekinga claim for relief arising under 35 USC Section 271(e)(2) or 42 USC Section 262s.


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