Extraterritoriality and Digital Patent Infringement
Research Handbook on Intellectual Property and Digital Technologies, (T. Aplin, ed.) (Edward Elgar Publishing Ltd.) (2018, Forthcoming)
29 Pages Posted: 15 Dec 2017
Date Written: December 14, 2017
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.
Keywords: patent, additive manufacturing, 3D printing, extraterritoriality, westerngeco, damages, transocean, carnegie mellon, power integrations, territoriality, lost profits, reasonable royalty, proximate cause, compensatory
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