Territoriality Waning? Patent Infringement for Offering in the United States to Sell an Invention Abroad
60 Pages Posted: 4 May 2010
Date Written: 2004
Undeniably, intellectual property law is increasingly an issue of international law. With respect to patents, recent developments have resulted in the incorporation of international patent standards into U.S. domestic law. In 1994, Congress added a new form of infringement - for offering to sell an invention in the United States - to the Patent Act. Congress failed to provide guidance as to how that provision was to be interpreted, leaving open the following question: is there infringement if the offer is made in the United States but the contemplated sale occurs outside of the United States? This Article addresses this question in the larger context of the increased internationalization of patent law. It posits three possibilities: (1) there is infringement only if the contemplated sale occurs within the United States; (2) there is infringement regardless of where the sale is to occur; or (3) there is infringement only after consideration is given to the patent law of the country of the sale. Courts and commentators have confronted these issues more directly in the copyright context. Comparisons to copyright law and theory are considered, as are analogous provisions of patent law. The third option has never been addressed in the patent context. Adopting this approach would help to protect the interests of the relevant country and also serve to promote dialogue and cross-fertilization of patent concepts in the hopes of achieving greater international understanding, if not norms, of patent law.
Keywords: Intellectual Property, Patent Infringement, International Intellectual Property
Suggested Citation: Suggested Citation