Protection against lawsuits through non-US company

Lawyer

I fully share the response of Bart. I just want to clarify a few points, which can be important in your case.

Indeed, the protection provided by the patent is "territorial" in that it is granted by a state on its sole territory (territoriality principle), even for regional patents that are European and Eurasian patents, under the law of the country concerned (lex rep site, lex loci protectionis). It follows that a patent may be materially infringed only in the territory of the country where it is issued (loci protectionis), and the assessment of infringement and punishment( by the local judge in most case) will be done under the patent law (lex loci protectionis) which will also be the law of the place of the offense (lex loci delicti commissi). In this, the nationality as the place of the infringer is of little importance, only the place of the offense - that is to say of the alleged infringement - has to be considered.

In other words, there is no patent infringement in the United States, under US law, if the patented product is manufactured and sold, or if the patent process is implemented in another country, for example Canada or Europe. And if in Canada or Europe, the invention concerned is not patented, there will be no infringement under the foreign laws involved too.

This principle is universal and has been recalled by the Supreme Court of the United States in particular, in terms that could not be more clear ("... a patent confers exclusive rights in an invention within the United States …". But there is an exception which gives a real extra-territorial scope to US patents: the one provided by section 271 (f) of the (35) US Patent Act (1984) that there is patent infringement if are provided from the United States, for their integration abroad, the components of a patented invention: "(1) Whoever without authority supplies or causes to be supplied in or from the United States all or a substantial portion of the components of a patented invention, where such components are uncombined in whole or in part, in such manner as to actively induce the combination of such components outside of the United States in a manner that would infringe the patent if such combination occurred within the United States, shall be liable as an infringer."

This exception has been invoked in the case Microsoft Corp. V. AT & T Corp. which concerned patents on software but ultimately, it was rejected by the US Supreme Court on April 30, 2007.

In Europe and particularly in France, the concept of extra-territoriality is intended solely for the benefit of the alleged infringer, regarding res in transitu: the mere transit of counterfeit goods in France through a maritime, land or air gear locomotion, constitutes not an infringement of a French (national or European) patent under Article 5b 1. of the Paris Union Convention: "In each of the Union countries will not be considered as affecting the rights of a patentee: i) the use, on board vessels of the other countries of the Union, of means forming the subject of his patent in the body of the ship, in machines , tackle, gear and other accessories, when such vessels temporarily or accidentally enter the waters of the country, provided that such means are used there exclusively for the needs of the vessel; ii) the use of means forming the subject of the patent in the construction or operation of aircrafts land land vehicles of other countries of the Union or of accessories to such machines, when they temporarily or accidentally penetrate this countries.". This is in accordance with the Community principle of free movement of goods. But in practice, this exception is seldom admitted and the French Supreme Court ("Cour de cassation") , by decision of 12 February 2008, has rejected it on the grounds that the own means of the patented process - a vacuum evacuation system of wastewater - had been implemented not only aboard a foreign vessel but before their installation on it that was under construction on the French territory ...

Whether one takes the US or the European (especially French) point of view, the risk of infringement actions on the part of your US-based competitors, on the basis of their US or European patents, should be taken seriously regardless of the location of the alleged infringer, subject, of course, the maintenance in force of the patent rights and the evidence of their infringement on the concerned territories.

We are here to advise you …

Your sincerely,
Simon