Location of the Contemplated Sale: The Ultimate Guide in 'Offer to Sell' Transnational U.S. Patent Infringement

Abstract

With U.S. patent law taking on an ever more international perspective, and with the difficulties faced by businesses that would like to seek protection of their intellectual property internationally, it is increasingly important that the proper territorial scope and reach of patent law is well defined. The question of the exact territorial reach of U.S. patent law is particularly pertinent to transnational “offer to sell” infringement liability — liability for patent infringement based only on an offer to sell a U.S.-patented product. The Federal Circuit has only very recently directly addressed this issue. This court has acknowledged that when two U.S. companies make an offer to sell in a foreign country, contemplating a sale in the United States, there is potential liability for infringement under U.S. patent laws. The court did not directly address, however, other potential scenarios, such as when two companies make an offer in the United States which contemplates a sale in a foreign country. Thus, although the territorial scope of “offer to sell” infringement is clearer now than it has been in the past, questions still remain. In an effort to provide some clarity to the scope of “offer to sell” infringement, this Note proposes the adoption and application of a clear rule to all “offer to sell” transnational patent infringement cases. This rule, the “Location of the Contemplated Sale” rule, clearly defines the bounds of “offer to sell” infringement under U.S. patent law and specifies that the location of the contemplated sale should control when deciding whether there is “offer to sell” infringement. This rule extends the Federal Circuit’s reasoning, providing a clear guide for all potential situations while also respecting the policies underlying “offer to sell” infringement.