It is well known that patent rights are inherently
territorial and cannot provide protection to patent owners in a foreign land if
the patent owner has not applied for patent in the foreign land. 35 USC 271 (a)
is related to Infringement of a patent and states that “whoever without
authority makes, uses, offers to sell, or sells any patented invention, within
the United States, or imports into the United States any patented invention
during the term of the patent therefor, infringes the patent.” Thus, for an
infringement to occur, all the infringing acts have to occur in the territory
in which the patent protection is provided.
So what happens when all the infringing acts are not
performed within the country? For example, the manufacturing of some (or all)
components of a patented machine occurs in the country where patent protection
is present and the manufacturing of other components and assembly of all the
components to make the machine happens in a foreign country? Do the patent laws
address these kinds of situations where rights of patent owners may be wrongly
exploited by third parties? Consider the case of Deepsouth Vs Laitram (sometime
in 19th century) where the Supreme Court ruled that shipping of
unassembled parts outside United States did not constitute patent infringement.
The patent laws have been amended several times to address
such situation and there have been many famous case laws that specifically
address the question of “Extraterritorial Patent Infringement”. Section 271 (f)
(1) and 271 (f) (2) were enacted in 1984 to address the loopholes in the patent
system. These sections imposed liability on exporters of components if they
actively induced in assembling the components outside United States to make the
patented article or when the exported components did not have any other use
except when they infringe the patented article. In 1988, section 271 (g) was
added which imposed liability on people who imported into United States unpatented
components made by process covered by a US patent.
Some of the case laws for building an in depth understanding
of extraterritorial patent infringement are provided below. The “doctrine” of
Extraterritorial Patent infringement becomes even more unique with the advent
of software patents. A lot of software inventions involve processes/methods
that can (and currently are) being performed in more than one country. When
patent protection is not present in all such countries, the situation becomes
even more interesting. Same is the case with import and export of intangible
information. In the era of globalization and increased focus on harmonization
of patent laws across the globe, extraterritorial patent infringement will
continue to receive its fair share of attention.
Famous case laws on Extraterritorial Patent Infringement:
1.
NTP Vs. RIM
2.
AT&T Vs. Microsoft
3.
Eolas Technologies Vs. Microsoft
4.
Bayer Vs. Housey
It is well known information but we are provide protection to patent owners in united states. For more details:- Patent Infringement
ReplyDeleteif the patent owner has not applied for patent in the foreign land So what happens when all the infringing acts are not performed within the country? we can structure a patent infringement for contingent, flat-fee, hourly or mixed fee arrangement.
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