Firstly in the United States the Court of Appeals for the Federal Circuit (CAFC) issued in August 2005 a revised opinion in the case of NTP Inc. v Research In Motion Ltd, a.k.a. the Blackberry case, which sets out unequivocally that for inventions claimed in the form of systems then use of the claimed system can be taken to occur in the United States for the purpose of patent infringement even if an element of the claimed system is located physically outside the borders of the United States. However, for inventions claimed as methods no such considerations apply, and the claimed method steps must all be performed within the United States for there to be patent infringement. The decision is likely to be appealed to the Supreme Court.

In a similar vein, however, in the United Kingdom in 2002 the Court of Appeal in Menashe Business Mercantile Ltd & others v William Hill Organization Ltd allowed that use of an invention occurred in the UK even if the actual elements performing the claimed operations were located outside the UK. In that case the judge stated that all that mattered was where the actual user of the invention was located, and if that was in the UK then the invention was used in the UK. Although the case was decided specifically in respect of a system claim, the reasoning can be equally applied to method claims.

Nicholas J Wallin

For more information, download the full paper:

Patent Infringement by Trans-National Distributed Systems.pdf