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
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
a. Limiting the Extraterritorial Reach of
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
a. Injunctions Reaching Outside of the
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
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
1. The Patentee Has Patents in All
2. The Patentee Does Not Have Patents in All