You are counsel for Company A whose product is on the market in the United States and abroad. Sales are exceeding all expectations when you receive a very upsetting call from a salesperson in Europe—“I am calling to let you know ….” It turns out that your company’s European competitor is selling an exact copy of your device based on component(s) being supplied by U.S. Company B. The device is covered by a U.S. patent, but its component(s) are not. Moreover, Company A does not have patent protection in Europe. Patent protection is not extraterritorial—in other words, a U.S. patent confers no rights in Europe. So, what do you do?  As discussed below, a recent decision by the U.S. Supreme Court, WesternGeco v. Ion Geophysical Corp., provides that damages may be available for sales outside of the United States. (See WesternGeco v. Ion Geophysical Corp., 585 U.S. __ (2018).)

Although a U.S. patent does not serve to prevent infringement occurring outside of the United States, in 1984, Congress added Section 271(f) to Title 35 of the United States Code to impose liability for exporting components of a U.S. patented invention for assembly abroad. Title 35, or the Patent Act, governs all aspects of patent law including infringement liability and damages. Section 271(f) was instituted by Congress to strengthen patent protection for emerging technologies around the world, such as biotechnology and pharmaceutical products.

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