Jurisdiction Over Foreign Patents: A Costly Dilemma for Patent Owners?

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Should U.S. courts decide claims for infringement of foreign patents? After 13 years of silence on this issue,[fn1] the Federal Circuit recently held in Voda v. Cordis Corp. that a district court abused its discretion by allowing the patentee to add infringement claims based on foreign patents. [fn2]

A basic principle of U.S. patent law is that it does not have extraterritorial effect; that is, patents granted in the U.S. may not be enforced abroad. Similarly, with limited exceptions, U.S. patent law does not restrict activities performed outside U.S. borders. An inventor seeking protection for an invention both in the U.S. and abroad will need to procure patents both in the U.S. and in every country in which he seeks protection. While it is possible to file international applications forming the

basis of such patents (for example, PCT and EPC applications[fn3]), there are no provisions for“international” patents.

Thus, a patent owner confronted with infringing activity in the U.S. and abroad is faced with a costly dilemma. It could focus on enforcing just its U.S. patents, in an attempt to halt infringement only in the U.S. (and forego damages incurred because of infringement in other countries). Alternatively, it could bring parallel actions for patent infringement in the U.S. and in every other country in which infringement is occurring and in which it holds a patent, a rather expensive proposition. In Voda, the

patentee tried to exercise a third option by filing a lawsuit in U.S. district court alleging infringement

of both U.S. and foreign patents. [fn4]

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