Under current U.S. patent laws, an entity that makes, uses, offers for sale or imports into the United States any patented invention during the term of the patent therefor, infringes the patent. (35 USC 271(a)). The following case relates to places where the offers for sale are made which might lead to patent infringement. More particular, it discusses when foreign transactions become an offer for sale within the United States so as to constitute patent infringement. Transocean v. Maersk Contractors, 2009-1556 (Fed. Cir. August 18, 2010).
Transocean holds patents for various offshore drilling rigs. Maersk utilizes various drilling rigs within its business. During the 2005 time frame, Maersk entered into a contract with Statoil for use of one of Maersk’s rigs that infringed Transocean’s patents. The contract was entered into in Norway (i.e., outside of the United States) but had an “Operating Area” of the U.S. Gulf of Mexico (i.e., within the United States). Typically, when a product that would infringe a U.S. patent is manufactured, sold and use outside of the United States, a United States patent is not infringed because patents are territorial and does not reach beyond the borders of the United States.
In the present case, the Court held that contracts made outside of the United States for products to be delivered and used within the United States is an offer for sale constituting patent infringement. To hold otherwise would exalt form over substance. Maersk would be able to generate interest in its product in the U.S. to the detriment of the U.S. patent owner, the type of harm that the “offer to sell” language in 35 U.S.C. 271(a) was meant to remedy.
Infringement may still be maintained even though the offending actions are outside of the United States. Accordingly, even though the infringer appears to be out of reach and well within his/her right to sell a particular product, you may still have recourse against alleged infringer. This case broadens the reach of US patentees through interpretation of the offers for sale phrase in 35 USC 271(a).
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