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