On Monday, the U.S. Supreme Court issued a ruling in Kimble v. Marvel Enterprises that leaves intact a 50-year-old rule barring royalty agreements that continue after a patent expires. Here, attorneys tell Law360 why the decision is significant.
Bryan Wheelock, Principal and Patent Attorney with Harness Dickey
“Today’s Supreme Court decision in Kimble v. Marvel Entertainment means that a patent owner’s ability to reap the rewards for the invention remain artificially limited. Kimble and Marvel negotiated a 3 percent royalty. Kimble probably wanted a higher royalty, but stretching the payments beyond the patent’s term allowed him to accept a lower rate that Marvel was willing to pay. The majority’s application of Brulotte to upset the parties’ agreement is correct, but the dissent is equally correct that Brulotte makes no sense. Critics of the rule are free to take their objections to Congress which, the majority points out, has spurned multiple opportunities to reverse Brulotte.”