It is generally known that one who manufactures, uses, sells
or offers to sell a product in the US or that practices a process in the US
that is covered by one or more claims of a US patent is liable for patent
infringement under US law. Less well
known is that certain activities involving activities outside of the US can
give rise to a cause of action for patent infringement.
(1) Importing a product manufactured by a patented
process
Under US law one who imports into the US or offers to sell,
sells or uses within the US, a product made by a process patented in the US is
liable for patent infringement even if the process is practiced outside of the
US. 35 U.S.C. 271 (g). Thus, one cannot avoid claims to a patented process
simply by making a product in accordance with the patented process overseas.
(2) Importing unpatented components of a patented
invention from a foreign supplier for use is an infringement in the US
A recent court case
considered the authority of the US International Trade Commission (USITC) to
issue exclusion orders barring importation of goods where the subject goods did
not infringe as of the time of importation but were used by the importer to
directly infringe a US patent at the inducement of the foreign supplier of the
goods. Section 337 of the Tariff Act of
1930 authorizes the USITC to investigate allegations of unfair trade acts in
the importation of articles that infringe a valid United States patent. 19 U.S.C. § 1337(b)(1). The Court of Appeals for the Federal Circuit
(CAFC) recently held that the USITC has the authority under Section 337 of the
Tariff Act to issue an exclusion order blocking the importation of products
that do not directly infringe at the time of importation into the US where the foreign
seller was inducing a direct infringement by the importer. The Court held that
this position was reasonable because it was consistent with the mandate of the
USITC to “safeguard United States commercial interests at the border” even
absent a direct infringement at the border.
Suprema, Inc. et al. v.
International Trade Commission et al., 2012-1170 at 26-27 (Fed. Cir. August
10, 2015).
(3) Exporting unpatented components of a patented
invention for combination outside the US
Under US law Whoever without authority
supplies or causes to be supplied in or from the United States all or a
substantial portion of the components of a patented invention, where such
components are uncombined in whole or in part, in such manner as to actively
induce the combination of such components outside of the United States in a
manner that would infringe the patent if such combination occurred within the
United States, shall be liable as an infringer. 35 USC 271 (f) (1).
Assume a US manufacturer
within the US exports one or more components of an invention that is the
subject of a US patent. If the US
manufacturer instructs the customer to combine the one or more components so as
to produce a product that would infringe the US patent if the product were made
in the US, the US manufacturer is liable for infringement even though the
patented invention was never made in the US.
(4) Exporting unpatented non-staple articles from
the US constitutes an infringement of a US patent if the articles are intended
to be combined outside of the US in a manner that would infringe a US patent if
the combination occurred in the US
Under US law, Whoever without authority supplies or causes to be supplied in or from
the United States any component of a patented invention that is especially made
or especially adapted for use in the invention and not a staple article or
commodity of commerce suitable for substantial noninfringing use, where such
component is uncombined in whole or in part, knowing that such component is so
made or adapted and intending that such component will be combined outside of
the United States in a manner that would infringe the patent if such
combination occurred within the United States, shall be liable as an infringer.
35 271 (f)
(2).
Under this statute, a party can be
liable for contributory infringement if the party is exporting a non-staple
article of commerce that is intended for use in a product covered by a US
patent even if the component, per se,
is not covered by any claims of a US patent.
The party exporting the unpatented component will be liable if the unpatented component is specifically
adapted for use in a product covered by a US patent. Contributory infringement
may be found even if the combination of
the unpatented component with other components to form the patented invention occurs
outside of the United States.
(5) An offers for sale anywhere in the world may
constitute an act of infringement if the product is ultimately to be used in or
delivered to the US
An offer to sell a product that would
infringe a US patent constitutes an act of patent infringement under US
law. In a recent decision, the Court of
Appeals for the Federal Circuit held that, for purposes of infringement, an
actionable offer to sell occurs when a company makes an offer outside of the US
to sell a product that will ultimately be used in or delivered to the US. The act
of offering the product covered by one or more claims of a US patent which was
planned to be delivered to the United States was held to constitute the
infringing act.
As noted above, there are exceptions to
the general rule that the reach of a US patent ends at the US border. It is therefore important to be aware that certain
acts that occur in foreign countries can be actionable under US patent law. Additionally, certain acts in the US that do
not amount to a direct infringement can still be actionable if coupled with
overseas activity that would constitute an infringement of a US patent if the
activity occurred in the US. When questions arise regarding the applicability
of US patents to foreign activities it is generally advisable to consult a specialist
that deals with such matters.
Blog authored by Vic Lebovici, a member of Preti Flaherty's IP Practice Group.
Blog authored by Vic Lebovici, a member of Preti Flaherty's IP Practice Group.
