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Author: Timothy R. Holbrook
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Languages : en
Pages : 0
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Book Description
Globalization has created increasing pressure on, and erosion of, traditional territorial limits on intellectual property laws. This trend was first seen in trademark and copyright law, but recent decisions have shown the change in patent law as well. Indeed, the Supreme Court is set to review the extraterritorial scope of U.S. law in the case AT&T v. Microsoft. The Federal Circuit's approach to these issues, however, has been inconsistent and lacks a consistent theoretical underpinning. In this paper, I reject both a strict territorial and a broad, effects-based approach to the extraterritorial application of U.S. patent law. Instead, I articulate a balanced approach that would consider not only whether the patent would be infringed under U.S. law but also whether the acts would constitute infringement in the relevant foreign countries. This balanced approach would require courts to transparently address potential conflicts of law and comity concerns, which is currently absent in the Federal Circuit's approach to these issues. The method presented in the Article is a step-by-step process that provides courts with a structured methodology to address and weigh these difficult questions.
Author: Timothy R. Holbrook
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Languages : en
Pages : 0
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Book Description
Globalization has created increasing pressure on, and erosion of, traditional territorial limits on intellectual property laws. This trend was first seen in trademark and copyright law, but recent decisions have shown the change in patent law as well. Indeed, the Supreme Court is set to review the extraterritorial scope of U.S. law in the case AT&T v. Microsoft. The Federal Circuit's approach to these issues, however, has been inconsistent and lacks a consistent theoretical underpinning. In this paper, I reject both a strict territorial and a broad, effects-based approach to the extraterritorial application of U.S. patent law. Instead, I articulate a balanced approach that would consider not only whether the patent would be infringed under U.S. law but also whether the acts would constitute infringement in the relevant foreign countries. This balanced approach would require courts to transparently address potential conflicts of law and comity concerns, which is currently absent in the Federal Circuit's approach to these issues. The method presented in the Article is a step-by-step process that provides courts with a structured methodology to address and weigh these difficult questions.
Author: Timothy R. Holbrook
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Languages : en
Pages : 0
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Patents are generally considered to be the most territorial of all the various forms of intellectual property. Even patent law, however, has confronted issues involving the application of a U.S. patent to extraterritorial activity. The Supreme Court has expressed an interest in both issues - the extraterritorial application of U.S. law and patent law. At times, these interests have intersected. Notwithstanding the Court's recent elaborations on extraterritoriality, the approach by the U.S. Court of Appeals for the Federal Circuit has been, at best, inconsistent. At times the court has afforded extraterritorial protection, even in the face of strong territorial language in the patent statute itself. At other times, however, it has approached the issue of extraterritoriality more restrictively, even when the statute itself expressly contemplates the regulation of activities outside of the United States. This dynamic has been addressed by myself and other scholars. More recently, however, the Federal Circuit has addressed the issue of patent damages for extraterritorial activities. These scenarios have arisen because there necessarily has been an act of domestic patent infringement. The damages theory advocated by the patent holder, however, has attempted to ensnare overseas sales, either under a lost profits or reasonable royalty theory. Additionally, the Federal Circuit has begun to address the appropriate scope of damages for infringement under § 271(f) of the Patent Act, a provision that defines infringement as the exportation of all the components of an invention, or a single component with no substantial non-infringing use, where it is to be assembled abroad. Necessarily, this provision contemplates the regulation of foreign markets through the domestic hook of acts of exportation. The Federal Circuit, nevertheless, rejected the patentee's requested remedy in this case. This Article turns to the issue of the extraterritorial reach of patent damages. It analyzes the Federal Circuit's recent pronouncements using the two-step method articulated by the Supreme Court in RJR Nabisco, Inc. v. European Community. This analysis suggests that damages for infringement under various aspects of the Patent Act can be treated differently with respect to extraterritoriality. This Article goes on to suggest that the Federal Circuit's approach lacks nuance to account for the particular economic and legal circumstances that differentiates the different infringement provisions at stake. It draws on earlier work where I advocated for a conflicts-based approach to extraterritorial application of U.S. patents and extends that work to these scenarios, offering a more balanced approach to assessing whether damages are appropriate in these circumstances. Finally, this Article explores whether the various damages theories involved in these cases, regardless of the territorial limits, suggest it is time to revisit the foreseeability/proximate cause aspect of Rite-Hite. The theories of damages seem quite far removed from the actual acts of infringement, even if they occurred within the United States. Some scholars have begun work on this enterprise, and these cases suggest such consideration is ripe.
Author: Timothy R. Holbrook
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Languages : en
Pages : 0
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Patents are creatures of national law and are generally viewed as the most territorial of all intellectual property rights. Nevertheless, patent law has long deviated from a rule of strict territoriality. On many dimensions, U.S. patent law takes into account activities occurring outside of the United States.This Article looks at various foreign activities that impact U.S. patents and places them into two categories. The first is foreign activities that can render a U.S. patent invalid or unenforceable. Within this category, the Article explores foreign acts that qualify as prior art, particularly after the America Invents Act removed the territorial limits on invalidating public uses and on sale activity. In particular, the Article notes that these forms of prior art create problems in terms of notice. In particular, for on-sale prior art, there could be an interesting choice of law issue: should U.S. law or the law in which the offer is made control whether the activity qualifies as prior art under U.S. law? The Article posits that U.S. law likely will apply, creating a potential conflict. Also in this category are overseas sales of the patented invention that will exhaust the patent rights, now that the Supreme Court's embraced international patent exhaustion in Impression Products, Inc. v. Lexmark International, Inc.The second category are foreign or transnational acts that trigger patent infringement liability and the remedies. The issue of extraterritoriality and damages is particularly salient after the Supreme Court's decision in WesternGeco LLC v. ION Geophysical Corp. Other examples include extraterritorial protection in cases like Decca v. United States and NTP v. Research in Motion, and Transocean Offshore Deepwater Drilling, Inc. v. Maersk Contractors USA, Inc.Interestingly, only the second category has been treated as truly extraterritorial by the courts and implicating the presumption against extraterritoriality. The territorial principle is treated asymmetrically, with foreign publications and acts impacting the validity and enforceability not being deemed extraterritorial, whereas foreign acts in assessing infringement and liability are. Courts silently have embraced this dichotomy, however, without pausing to consider whether it is appropriate.This Article calls the question of what should count as being extraterritorial in patent law. In particular, it argues that the first category - acts impacting validity and enforceability - perhaps should be viewed as extraterritorial. By allowing these foreign acts to invalidate or render unenforceable U.S. patent, it is likely that patent applicants and owners will alter their behaviors in foreign jurisdictions, potentially to the detriment of those markets. For example, in the exhaustion context, it is possible that patent owners in foreign markets will raise prices, could change the product, or withdraw from the market altogether. These represent more indirect forms of regulation of foreign activity that could be deemed as implicating the presumption against extraterritoriality. The Article explores descriptively whether the first category should be deemed as implicating the presumption against extraterritoriality and then offers some prescriptions of the impact utilization of the presumption could have on these doctrines.
Author: Sapna Kumar
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Languages : en
Pages : 0
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The presumption against extraterritoriality is a deceptively straightforward principle: that U.S. law applies only inside the United States. But there is confusion regarding whether the presumption applies when a court calculates patent damages. In WesternGeco L.L.C. v. Ion Geophysical Corp., the Federal Circuit held that patent holders who show infringement under § 271(f) of the Patent Act cannot recover foreign lost profits. The court maintained that allowing recovery of such damages would result in the Patent Act applying extraterritorially, which cannot be done without Congress's clear intent. This interpretation severely limits the ability of district courts to make patent infringement victims whole. This Article maintains that the Federal Circuit's reliance on the presumption is misplaced. The presumption was established to prevent U.S. law from applying to extraterritorial conduct; it was not intended to cover situations where foreign harm flows directly from an act of domestic patent infringement. The presumption has been rebutted under the Supreme Court's two-step extraterritoriality test. By creating this bright-line rule, the Federal Circuit has unduly restricted the ability of patent holders to recover damages, including in cases where there is no other applicable law. This Article proposes that the Federal Circuit adopt a flexible test that balances prescriptive comity concerns with the United State's interest in making victims of domestic patent infringement whole.
Author: Melissa F. Wasserman
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Languages : en
Pages : 0
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Generally, in order to infringe a U.S. patent, the entire patented invention must be practiced within the United States. However, as technology evolves it is becoming harder to contain inventions within national borders. Specifically, the advancement of networking and communications technologies allows for the rapid, cost-efficient dissemination of information across countries' borders. As a result, the number of inventions that are being practiced in multiple jurisdictions, or the practicing of divided infringement, is on the rise. Potential infringers that commit divided infringement are practicing patented inventions, escaping liability in all jurisdictions, but still reaping the rewards of the American market. Consequently, potential infringers who commit divided infringement are undercutting the incentive to innovate, the primary purpose of the patent system. To solve the problem of divided infringement, this Note proposes expanding the extraterritorial scope of U.S. patent law by adopting a substantial effects test, limited by comity concerns.
Author: Timothy A. Cook
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Languages : en
Pages : 0
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Although patent rights confer substantial market control within their territorial scope, globalization is increasingly threatening the value of patent protection. Under the current regime, innovators who enter the global marketplace must obtain patent protection in each jurisdiction where they hope to market their product, and they must litigate infringement claims separately in each of those states. The prohibitive cost of this regime has led many scholars and intellectual property law officials to call for a global patent enforcement treaty, but, despite years of negotiations, all efforts to draft such an agreement have failed. This Note examines the role that U.S. courts may play in promoting a global patent enforcement treaty. Drawing on an emerging line of statutory interpretation scholarship that encourages courts to rely on default rules that will promote desirable political action, it examines the two primary sources of judicial power in international patent law: extraterritorial application of the Patent Act and supplemental jurisdiction over foreign patent infringement claims. After concluding that a treaty-eliciting interpretive rule is appropriate in the context of a global patent enforcement treaty, the Note contends that a presumption in favor of extraterritoriality for the Patent Act is the more efficient way to provoke discord among the major economic powers and prod the international community to address the needs of innovators in the global economy.
Author: Timothy R. Holbrook
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Languages : en
Pages : 0
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Additive manufacturing techniques, colloquially referred to as 3D printing, increasingly will place pressure on the world's patent systems in a manner akin to the challenges the copyright systems faced due to digital files. Unlike copyright, however, the digital files themselves do not, under present law, constitute the patented invention itself. A co-author and I have advocated that, under current US law, there should be infringement based on the digital files themselves, if someone sells or offers to sell the file that will “print” the patented invention. We dubbed this “digital infringement.” Additionally, others have called for mechanisms to protect patent holders from losing control of their invention by, for example, drafting claims that are specific to such digital files. While such digital infringement would afford patent owners greater protections against 3D printing, it also creates issues of its potential the extraterritorial reach. The same case that opened the door to digital infringement in the US - Transocean - also has the potential to dramatically expand the extraterritorial reach of a US patent. In theory, anyone in the world offering to sell or selling the digital file to someone in the US could not be liable for patent infringement in the US. Also, if the sale results in massive copies of the invention outside of the US, it could be possible for a party to responsible for the damages arising from those copies, so long as there was a domestic act of infringement. US case law currently prevents such a damages award, but it is not clear the courts answered the questions correctly. The chapter explores this dynamic and offers possible mechanisms for addressing this concern, such as a consideration of conflict of laws prior to any assessment of liability.
Author: Rish Handa
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Languages : en
Pages : 0
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Book Description
This thesis analyses the extraterritorial dimension of patent systems in light of recent judicial trends, ending with the United States Supreme Court's landmark 2007 ruling in AT&T v. Microsoft. The discussion examines (i) the economic interest of nations in issuing and maintaining patent rights; (ii) the legal arguments against a unilateral extraterritorial extension of domestic patents, leading to the legal presumption against extraterritorial extension; (iii) the evolution of this doctrine in United States legislation and jurisprudence and forays against it, especially in recent decades; and (iv) the impact of globalization and of the nature of patentable information in the digital age on the issue of the extraterritorial extension of patent rights. The general conclusions are that, in the modern age, patent rights need to be extended beyond the domestic jurisdiction, and that the appropriate manner for nations to achieve this extension is not unilaterally but through bilateral and multilateral treaties.
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Category : Computer software
Languages : en
Pages : 6
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Author: Tonya L. Putnam
Publisher: Cambridge University Press
ISBN: 1107137098
Category : Law
Languages : en
Pages : 331
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Book Description
This book is about the US politics and law of judicial extraterritoriality and how it influences international rule making and enforcement.
