The Extraterritorial Reach of Patent Law

The international dimension of patent law is one of the cornerstones of the scientific oeuvre of Joseph Straus. A great many of his publications are devoted to the profound analysis of the universal conventions such as the Paris Convention or the TRIPS Agreement, to the ongoing work on international patent law harmoniza-tion and to truly comparative patent law including conflict of law issues. The antagonism between the territorial nature of patent rights and the increasing pace of economic and technological globalization lies at the heart of this field of research and is fuelling legal controversies which are not only intellectually challenging, but of enormous practical importance for the worldwide process of innovation and development.

One of these debates concerns what has been termed the ‘extraterritorial reach’ of patent law. It focuses, in particular, on the question under which circumstances domestic patent law is able to cope with asserted acts of infringement which contain extraterritorial aspects. Albeit not a completely new phenomenon of international patent law and already analyzed in great depth by scholars of Joseph Straus' intellectual home, the Munich Max Planck Institute, in the seventies of the last century, issues of extraterritorial reach have generally not been so much in the limelight of European patent lawyers' attention in the recent past. In fact, they appear to have been overshadowed by important judicial and legislative developments relating to other international patent laws aspects such as the twin decisions GAT v. LuK and Roche Nederland v. Primus of the European Court of Justice on the adjudication of foreign patents, the work on the European Patent Litigation Agreement (EPLA), the judicial system of the Community Patent or conflict of law issues raised by the impact of the Rome I and II Regulations of the EC. On the other side of the Atlantic, however, recent litigation mostly in the area of telecommunications, computing and the internet, which in one case even found its way to the Supreme Court, has clearly brought the international reach of patent law into focus and stimulated considerable discussions in legal literature. One does need not to be a prophet to predict that also in Europe the courts and the patent community in general will have to struggle with this kind of issues more and more in the forthcoming years. The present contribution constitutes an attempt to review the recent judicial developments and to compare the solutions reached or proposed under U.S. as well as European, in particular German, patent law.