Patent Enforcement in Cyberterritories

48 Pages Posted: 23 Apr 2018 Last revised: 7 Aug 2019

Date Written: April 12, 2018

Abstract

3D-printing technology has exposed a gap in patent protection. Thanks to 3D printers, physical products can be created and sold digitally in the form of CAD files, and consumers printing the products are effectively manufacturers. But current law would treat a product patent as being directly infringed only when the physical product is made, used, offered for sale, or sold, making it difficult to target the digital source of the infringement. While past scholarship has fashioned new legal constructs to close this gap (e.g., expanding patent eligibility or extending infringement case law) this article considers whether a proper, analogous framework already exists — the law of extraterritorial patent enforcement.

National borders have long been thinning as a result of globalization, with manufacturing, sales, and operations increasingly being conducted, at least in part, abroad. When certain entities operated beyond the border to avoid infringement liability, Congress and the courts occasionally responded to expand the reach of U.S. law to deem such conduct infringing, provided that there was a sufficient nexus to the United States and harm to the patent owner.

Now 3D printing has thinned the border between the digital and the physical such that the difference can be little more than the click of a button. As with national borders, businesses now have more choices as to which side of the digital-physical border to conduct their business activities. Just as the law bridged certain gaps in the national borders context, a similar reach into digital spaces may be appropriate.

Beyond this analogy are similar analytical challenges. Both situations require some balancing of recognized jurisdiction with the reality that conduct outside the border often has substantial effects on the interests of U.S. patent owners. And in both situations imposing liability for some conduct can over-protect patent owners’ legitimate interests. There is even a statutory textual link, in that infringement is defined as certain acts “within the United States,” but that geographic scope has never been interpreted to encompass three-dimensional spaces that exist only as non-physical, conceptual constructs within digital storage devices.

Applying patent extraterritoriality principles to such digital spaces, or cyberterritories, as if they were in fact outside “the United States,” closes the gap in patent protection in certain desirable respects but leaves the gap open in other desirable respects. Further, although cyberterritories are not sovereign, and thus no traditional conflict-of-law analysis can be done, future evidence of norms concerning the development and use of CAD files may suggest that the results of this analytical approach are consistent with comity-like considerations.

Keywords: patent, infringement, borders, 3D, 3D printing, additive, additive manufacturing, CAD, digital, cyber, territoriality, extraterritoriality

JEL Classification: K39

Suggested Citation

Brean, Daniel Harris, Patent Enforcement in Cyberterritories (April 12, 2018). Cardozo Law Review, Vol. 40, p. 2549 (2019), Available at SSRN: https://ssrn.com/abstract=3161823

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