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Archived updates for Thursday, December 04, 2008

TGIF for Infringing Foreign Patent Procurement Processes

TGIF for U.S. Patent Application Publication No. 20080221912 by David James Harris, reciting

    1. A method of seeking patent protection for an invention, comprising:

    a) filing a first European Patent Application for the invention at a first date;

    b) filing a second European Patent Application for the invention at a second date not more than one month later;

    characterised in that the second European Patent Application is a divisional European Patent Application claiming the filing date of the first European patent application. 

"David, my boy," writes Greg Aharonian, "a patent issued in the United States is completely USELESS for a method performed completely outside the United States.


Except, of course, for imported products that are produced by that infringing process. . . .  IKinik v. United States International Trade Commission, 362 F.3d 1359 (Fed. Cir. 2004) the court explained that the Tariff Act (Section 337) remedy of exclusion based on practice of a patented process was unchanged, and that the exceptions set forth in 271(g)(1) and (2) did not apply in Section 337 cases.  Under 35 U.S.C. 271(g),

" Whoever without authority imports into the United States or offers to sell, sells, or uses within the United States a product which is made by a process patented in the United States shall be liable as an infringer, if the importation, offer to sell, sale, or use of the product occurs during the term of such process patent. . . . A product which is made by a patented process will, for purposes of this title, not be considered to be so made after--

(1) it is materially changed by subsequent processes; or
(2) it becomes a trivial and nonessential component of another product."
Thank Goodness It's (almost) Friday,
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