Global Patents Limits of Transnational Enforcement

by Trimble, Marketa

• ISBN13: 9780199840687
• ISBN10: 0199840687
• Format: Hardcover
• Copyright: 2012-02-16
• Publisher: Oxford University Press

Summary

In today's globalized economy, many inventors, investors and businesses want their inventions to be protected in many, if not most, countries. However, there currently exists no single patent that will protect an invention globally, and despite the attempts in international treaties to simplify patenting, the process remains complicated, lengthy, and expensive. Furthermore, the necessity of enforcing patents in multiple countries exists without any possibility of concentrating in one location any parallel proceedings that concern the same invention and the same parties, thus making the maintenance of parallel patents infeasible. Global Patents: Limits of Transnational Enforcement, by Marketa Trimble, explains why the absence of a "global patent" persists, and discusses the events in the 140-year history of patent law internationalization that have shaped the solutions. The author analyzes the ways in which patent holders attempt to mitigate the problems that arise from the lack of global patent protection. One way is to concentrate enforcement in one court of patents granted in multiple countries, which makes the enforcement of the patents less costly and more consistent. Another way is to attempt to use the litigation of a single country patent to reach acts that occur outside the country, which can mitigate the lack of patent protection outside the country. However, both the concentration of proceedings and extraterritorial enforcement suffer from significant limitations.Global Patentsexplains these limitations and presents the solutions that have been proposed to address them. The book includes a thorough comparative analysis of the extraterritorial features of U.S. and German patent laws, and original statistics on U.S. patent litigation. Based on a comprehensive treatment of the various facets of transnational enforcement challenges, the author proposes the next stage of patent law internationalization.

Author Biography

Marketa Trimble is an associate professor at the William S. Boyd School of Law at the University of Nevada Las Vegas. Previously, she studied at Stanford Law School, where she received her second doctoral degree. In her research, she focuses on intellectual property and issues at the intersection of intellectual property and private international law/conflict of laws. Professor Trimble has conducted comparative and empirical work in her areas of interest using her extensive research experience from law schools in the U.S. and Europe, her expertise from the European Union and European governments, and her foreign language abilities.

Table of Contents

Preface	p. vii
Introduction	p. 1
Global Protection for Inventions	p. 9
The Territorial Limitations of Patent Protection	p. 11
A World Patent	p. 15
Parallel Patents	p. 18
Obtaining a Patent Abroad	p. 19
Obtaining Patents in Multiple Countries	p. 25
Obstacles to Global Protection	p. 35
Enforcing Parallel Patents	p. 39
Private International Law Solutions to the Problem of Enforcement of Parallel Patents	p. 43
The Brussels Regime	p. 44
Mitigating the Problems Created by the Brussels Regime	p. 49
The Hague Convention	p. 58
The ALI Principles	p. 59
The CLIP Principles	p. 62
Obstacles to Implementation of Private International Law Solutions	p. 64
Foreign Patents in U.S. Courts	p. 65
Foreign Patents in German Courts	p. 69
Institutional Solutions to the Problem of Enforcement of Parallel Patents	p. 72
Obstacles to the Enforcement of Parallel Patents	p. 76
Protecting an Invention outside the Protecting Country	p. 81
Inventions in the Means of Transportation	p. 84
Inventions in Transit and Border Measures	p. 88
Offers to Sell	p. 98
Inventions Assembled Abroad from Components from a Protecting Country	p. 105
Acts Abroad Contributing to Infringements in the Protecting Country	p. 110
Acts in Multiple Locations	p. 116
Limits on the Protection of an Invention outside the Protecting Country	p. 121
Limits of Protection under the Law of the Protecting Country	p. 127
Foreign Parties before U.S. Courts-A Quantitative View of the Enforcement Problem	p. 129
Patent Cases Filed in 2004 and 2009	p. 133
Cases Involving Foreign Parties	p. 135
Cases Involving at Least One Foreign Defendant and Cases with Only Foreign Defendants	p. 139
Some Observations about the Data on the Involvement of Foreign Defendants in Patent Litigation in 2004 and 2009	p. 146
Injunctions	p. 154
Cross-Border Injunctions in U.S. Courts	p. 156
Cross-Border Injunctions in Europe	p. 161
Challenges to Enforcement of Injunctions Abroad	p. 165
Enforcement of an Injunction	p. 166
Enforcement of a Contempt Order	p. 172
Monetary Relief	p. 173
Punitive Damages	p. 174
Ongoing Royalties	p. 176
Additional Requirements of Recognition and Enforcement	p. 178
Obstacles to Enforcement Abroad	p. 181
Conclusions	p. 185
Bibliography	p. 193
Table of cases	p. 215
Index	p. 225
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