Limits to the International Reach of U.S. Patent Laws

Justin Farooq

Recently, the U.S. Supreme Court held for a California company in a patent infringement case that confines the international scope of U.S. patent laws.[1] The justices held, unanimously, that the company’s delivery of a single part of a patented invention for assemblage in a different country did not infringe patent laws.[2]  The California life science company delivered an enzyme used in DNA analysis tests to a company in London and merged it with numerous other components to make kits sold all over the world.[3]  Promega Corp., a company based in Wisconsin, sued claiming that the DNA analysis kits violated a U.S. patent.

At first the federal judge said the law did not cover export of a single component, giving $52 million to Promega, but then the federal appeals court specializing in patent cases reversed the judgement.[4]  They determined that a violation occurs when “all or a substantial portion of the components of a patent invention” are supplied from the United States to a foreign location, and writing for the high court, Justice Sonia Sotomayor said the law “does not cover the supply of a single component of a multicomponent invention.”[5]