Guest Column on Extraterritoriality

This is the first in what I hope to be many guest columns. If you or anyone you know would like to post an article on WApatents.com, just send it to me for review. I reserve the right not to publish or to edit any articles you send me. Articles posted do not necessarily reflect my own views on the law; so if you disagree with something in a guest column, post a comment and contact the author.

This article is from Paul Beattie, an experienced Seattle patent litigator. What follows is a brief snippet from Paul's article. The full article is attached.

Extraterritorial Abdication: Extraterritorial Infringement Outpaces Extraterritorial Protection

By Paul Beattie[1]

The past twenty years have seen a progressive shift in economic activity, particularly manufacturing, away from the United States, Japan, and Europe to developing countries.[2] More and more inventions conceived in the “West” are being exploited in developing countries, often with no royalty payments to the inventors or their assignees. We are living through a colossal transfer of knowledge and invention from the developed to the developing world – although this transfer is seldom remarked upon.[3] U.S. patent law has been slow to recognize these realities and to extend U.S. patent protection to “infringing” activities abroad, perhaps out of sympathy for the developing world and out of fear that other countries will follow suit and attempt to enforce their laws here. Politics aside, U.S. patent law has failed to adapt to a world in which more and more infringement takes place overseas.

U.S. patent law has traditionally not been given so-called “extraterritorial” effect. As the Supreme Court stated in the recent case of Microsoft Corp. v. AT&T Corp., “[i]t is the general rule under United States patent law that no infringement occurs when a patented product is made and sold in another country.”[4] This is reflected in the main infringement provision in the U.S. patent statute, which states that “whoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States or imports into the United States any patented invention . . . infringes the patent.”[5] U.S. patent law thus generally targets infringing activities within the United States, with minor exceptions.

Footnotes:

[1] Paul H. Beattie is a shareholder in the Seattle Office of Schwabe, Williamson & Wyatt. He can be reached at pbeattie@schwabe.com or at (206) 407-1566.
[2] Pete Engardio et al., The New Global Job Shift, Business Week Online, http://www.businessweek.com/%20magazine/content/03_05/b3818001.htm (Feb. 3, 2003); Josh Bivens, Economic Policy Institute Briefing Paper, Trade Deficits and Manufacturing Job Loss: Correlation and Causality.
[3] See, e.g., The Sydney Morning Herald, Chinese Accused of Stealing American Technology, http://www.smh.com.articles/2007/11/16/1194766968231.html.; Jacob Goldstein, Brazil Breaks Merck’s Patent on Aids Drug, Wall Street Journal.com, http://blogs.wsj.com/health/2007/05/04/brazil-breaks-mercks-patent-on-aids-drug/ (May 4, 2007); Mary Kopczynski, Robin Hood versus the Bullies: Software Piracy and Developing Countries, Rutgers Comp. & Tech. L. J. (Summer, 2007).
[4] Microsoft Corp. v. AT&T Corp., 127 S. Ct. 1746, 1750 (2007).
[5] 35 U.S.C. § 271(a) (emphasis added).

Extraterritorial%20Abdication1.doc