Litigation beyond the Technological Frontier: Comparative Approaches to Multinational Patent Enforcement
Thomas, John R., Law and Policy in International Business
The force of the contemporary patent instrument cannot be confined to the territorial setting of its origin. Although issued exclusively by individual national or regional patent offices, the information these documents disclose crosses state lines as readily as the contents of other media, contributing knowledge to the technological community worldwide(1) and serving as part of the pool of prior knowledge that potentially bears on the patentability of every invention fashioned abroad.(2) Patent systems themselves often exhibit a remarkable jealousy toward the acquisition of patent rights in other countries, maintaining a measure of control over the filing of foreign patent applications(3) and, in particular circumstances, denying an inventor the right to obtain a patent where parallel rights have been acquired elsewhere.(4) And as intellectual property protection becomes increasingly important to the world order,(5) even the enforcement of a single patent can escalate into a source of dramatic international trade tensions.(6)
Indeed, only under strictly provincial notions of territoriality do patents remain discrete, national instruments, which individually are increasingly of limited value in the contemporary, globally oriented economy. Inventors thus must seek intellectual property protection in all of the countries in which a product embodying a technology will be marketed by filing a patent application in each applicable jurisdiction.(7) Although potentially a cumbersome process, a network of international agreements has both facilitated this effort procedurally and provided significant substantive harmonization of world patent laws.(8)
Despite the growing ease with which patents may be acquired in many countries, the international enforcement of patents remains fractionalized and onerous. Although patents held in different nations increasingly resemble one another, their legal independence and territorial limitations compel patent holders to bring suit on each one individually. Thus, even where a single multinational entity infringes parallel patents by marketing the identical technology in several jurisdictions, piecemeal remedies from individual national courts provide the only traditional possibility for relief.(9) Recognition of this absurd "quiddity" of the law has led at least one court to call for reforms acknowledging that "ours is a worldwide technological and economic community."(10) Confronted with a multinational infringer, patent owners have resorted to various legal techniques in an attempt to consolidate their enforcement efforts. One is to request an extraterritorial injunction based on a finding of infringement of a single national intellectual property right. A recent example of this approach occurred in the well-publicized dispute between Stac Electronics and Microsoft Corporation in the District Court for the Central District of California.ll Although only U.S. patents were disputed in that forum, the court nonetheless ordered a worldwide injunction and recall of Microsoft's patent-infringing computer programs.(12) A settlement between the parties(13) extinguished what could have been an interesting issue of private international law, as the prospect of a foreign court respecting a judgment lending such broad extraterritorial effect to U.S. patents appears doubtful.(14) Although the district court might have retained jurisdiction and employed its power to enjoin foreign patent infringement suits and issue contempt citations, thereby obviating concerns over foreign enforcement of the judgment,(15) the propriety of this approach is also questionable.
In keeping with their strong tradition in private international law,(16) the courts of the Netherlands have provided a more legitimate solution: the adjudication of patent rights obtained in several different countries in a single national forum.(17) Within the past six years, Dutch courts have rendered an impressive number of decisions addressing foreign intellectual property disputes. …