Extraterritoriality in U.S. Patent Law

Article excerpt

ABSTRACT

Globalization has eroded traditional territorial limits on intellectual property laws. Although this pressure was first seen in trademark and copyright law, recent court decisions have demonstrated that the territorial lines of U.S. patents are also under assault. Indeed, the Supreme Court recently considered extraterritoriality in U.S. patent law in its 2007 decision in Microsoft Corp. v. AT&T Corp., discussed thoroughly in this Article. Courts and commentators have offered two primary approaches to deal with the issue of the extraterritorial reach of U.S. patents. First, many courts, including the Supreme Court, continue to adhere to a strict view of a patent's territorial limits, affording protection only within the United States. This approach is overly broad in that it precludes effective protection for patent holders even when the usual concerns surrounding extraterritoriality are not present. Second, other courts and commentators would adopt far-sweeping, effects-based tests, in which any effect on the U.S. market is a basis to permit the patent to cover acts occurring outside the United States. Such approaches, however, fail to explicitly consider foreign law and risk creating conflicts with foreign jurisdictions.

This Article rejects both approaches and articulates a novel approach that would require courts to explicitly consider foreign law in assessing whether to enforce a patent extraterritorially. In essence, to infringe the U.S. patent, the patentholder would have to prove that the infringer would also infringe under the laws of the foreign country. If there would be some sort of conflict with foreign law, then the patent cannot be enforced. This balanced approach requires courts to address potential conflicts of law and comity concerns transparently, which fosters greater understanding or foreign patent law and hopefully facilitates international patent law norms that may help harmonize national patent laws through this informal mechanism.

TABLE OF CONTENTS

INTRODUCTION

I.   VARYING APPROACHES TO QUESTIONS OF TERRITORIALITY
     A. A Strict Territorial Approach to Patent Infringement
        1. The Supreme Court's Strict Adherence to
           Territorial Limits for Patents
        2. The Federal Circuit's Occasional Strict
           Territorial Approach
           a. Limiting the Extraterritorial Reach of
              Injunctive Relief
           b. Section 271(g) Liability for Importing
              Products of Patented Processes
        3. The Advantages and Disadvantages of Drawing
           Strict Territorial Lines for Patent Infringement
     B. Affording Extraterritorial Reach to U.S. Patents
        1. Federal Circuit Case Law Evincing Broader
           Extraterritorial Protection
           a. Injunctions Reaching Outside of the
              United States
           b. Federal Circuit's Expansive
              Interpretation of [section] 271(f)
           c. Expanding [section] 271(g)'s Liability for Importing the
              Product of a Patented Process
           d. Section 271(a)--Finding Infringement
              "Within the United States" Even If Some Acts
              Occur Outside of the United States
        2. Effects-based Approaches--Does the Conduct
           Affect the United States?
        3. The Advantages and Disadvantages of Effects-based
           Approaches
     C. Neither Strict Territoriality Nor Effects-based
        Tests Are Satisfactory

II.  A NEW APPROACH--EXPRESSLY CONSIDERING
     FOREIGN PATENT LAW
     A. Is There Some Nexus to the United States?
     B. Ignoring Territorial Lines, Would the U.S.
        Patent Be Infringed?
     C. Does the U.S. Patentee Have a Patent in the
        Relevant Country?
          1. The Patentee Has Patents in All
             Relevant Countries
          2. The Patentee Does Not Have Patents in All
             Relevant Countries
             a. …