Does U.S. Patent Law Extend Overseas?

by Julian Ku

The Supreme Court granted certiarori today in Microsoft v. AT&T, an important and complex case involving the extraterritorial scope of U.S. patent law protections (SCOTUSBlog has the summary here).

The case will revolve around the interpretation of 35 U.S.C. 271(f), which prohibits the “suppl[y] * * * from the United States * * * [of] all or a substantial portion of the components of a patented invention * * * in such manner as to actively induce the combination of such components outside of the United States,” as well as the “suppl[y] * * * from the United States [of] any component of a patented invention that is especially made or especially adapted for use in the invention.”

The Court will consider whether Microsoft can be liable for the sale of Windows overseas which includes certain technology patented by AT&T if those sales occurred overseas. The interesting extraterritorial question is “[w]hether copies of software object code are “supplie[d]” from the United States when those copies are created overseas by replicating a separate master version supplied from the United States.

In other words, has Microsoft infringed AT&T’s patent rights under U.S. law by selling copies of its software overseas? The U.S. Solicitor General has taken a position in favor of Microsoft, in part, because it argues that U.S. patent laws are presumed NOT to apply extraterritorially and the lower court’s intepretation would have that effect.

This is really a patent case, a subject about which I am woefully ignorant. But it is also another opportunity for the Supreme Court to develop its interpretive doctrines concerning the extraterritorial effect of federal statutes, a complex and tricky area that it last dealt with in the context of anti-discrimination laws on cruise lines. How and why they resolve this case might be important for interpretations of many different U.S. statutes. So a case to keep an eye on.

2 Responses

  1. Hi Julian –

    Well the presumption against extraterritoriality is not universally recognized (consider U.S. antitrust law) and can always be overcome by sufficiently clear Congressional expression. 271(f) is an example – Congress clearly wishes to provide a remedy to some extraterritorial conduct – the question remaining is whether particular extraterritorial conduct (the supply of patented software from the United States for incorporation into an otherwise foreign-built computer) falls within that statute’s reach. I suppose it will also raise whether the patented software is by itself “a patented invention” as opposed to a “component” of a patented invention. Thanks for the head’s-up on this case.

  2. Transnational Scope of U.S. Patent Law?

    On October 27, the Supreme Court for the United States (SCotUS) agreed to review a patent infringement suit, filed by ATT against Microsoft. The undisputed facts are illustrated in the picture above (respectfully copied from Patently-O.) Microsoft generated a software code in the US for its infamous Windows operating system, which included a code for synthetic speech technology patented by ATT. Microsoft then produced software from that code in the US and abroad. That software produced and sold in the US, Microsoft has admitted, infringed ATT’s patent no. 32,580 (the ‘580 patent.) But that software produced and sold abroad presents

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