Can we get sued for selling software in US when we are located in Europe?

弁理士

Infringement is not based upon where your company is located - infringement is based upon where you are allegedly infringing, so if you are selling particular software here in the US, and some company has a US patent covering the software, yes, you can be sued here in the US for patent infringement even though you are not a US-based company.

弁護士

Dear friend of Europe, I confirm!

In the US in particular, more than in Europe, it is possible to patent software and many patents directly relate to computer programs. But patent protection is territorial everywhere, meaning that every patent in force is protected in the country where it it granted and only in this country, according to the protection of law of that country "lex loci protectionis."

If you export a software product in the US and that makes your product clearly implement the teachings and, in particular, the claims of a US patent issued or being issued, you incur the risk of being sued for infringement patent by the (US or not) patent owner, before American judges as well as your local distributor if you have one, under US law, law of the place of the offense "lex loci delicti commissi".

This risk is real but it assumes that the US patent is legally solid (many are not and can be challenge before the judges for lack of novelty or inventive step for example), and thus difficult to contest and that infringment is not materially objectionable either. You will need for this the assistance of one of my American colleagues lawyer or patent attorney of IP Nexus.

In addition, a sentence rendered in the United States must be enforced (exequatur) and executed in the Netherlands unless you have assets that can be seized on the States and if you are a small, solvent company, the patent owner would prefer definitely put you on notice to immediately cease distribution of your product in the USA before attacking you before the US courts.

However, I would like to draw special attention to the fact that many major computer firms in the US do not just patent their inventions in the US and extend their protection - through PCT patent applications - in the rest of the world and particularly in Europe through (almost systematically) the European patent which includes Holland. Many European patents cover in fact processes and devices using computer programs (even if the EPC is more restrictive than the American law regarding software patentability).

So it would be very advisable that you do not limit your investigation only to US patents and also check whether the invention in cause covered by a US patent is also protected by a European patent issued or being issued. If applicable, you also could risk infringement suits and patent litigation in Europe, either in the Netherlands before your judges (The Hague Court), Germany (where the injonctions procedure is very effective), France (Paris Court) etc ... for infringement of a European patent covering the same technology that the one object of the US patent. In which case it would also check if said European patent is actually enforceable under EU legal conditions…

At your disposal to confer directly with you and do a few investigations concerning European patents (legal status, actual range, effective commercial operation in Europe, pairwise comparison between the claims of the EU patent and the main features of your software product, ...).

Sincerely yours,

Simon