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In reference to the patent: WO2017054090A1

I just wanted to know if someone can barely do the same thing as claimed but with a cloud located where the patent is not filed/granted/valid.

For exemple, I give this cloud authentication to a user located in US but with a cloud located in Taiwan? Is this considered infringement or not?

  • Welcome to Ask Patents! I changed a few terms to meet the patent terminology, hope you don't mind. – DonQuiKong Sep 25 '17 at 12:15
  • Great question! I think it might also be worth asking are there implications if the cloud solution is physically operating in a region where the patent is no enforceable, but doing business (providing the solution to users) in regions where the patent is enforceable. – DukeZhou Sep 25 '17 at 18:09
  • Just to be clear, the cited document is not yet a patent. There also may be equivalent applications in multiple countries. – Eric Shain Sep 25 '17 at 18:17
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This is a well understood problem. Method claims that require actions taking place in two or more locations are a problem in enforcement for two reasons - one is extraterritorially - the topic of the question. All actions need to be performed in the juristiction of a specific patent. The other is that all actions must be performed by a single infringing entity or at least controlled and commanded by a single entity. If actions are split they might be done by two different entities - then nobody infringes even if all action performed in the U.S.

Lets look at Claim 1 of the application. As a method or process claim, its required elements are not things, the elements are actions. The question is who performs the actions and where they are performed. To infringe, one entity needs to perform all positively recited actions.

in order to infringe that patent. The several actions claim 1 requires are "encoding; printing; capturing; storing; capturing; authenticating; selling; capturing; purchasing. Other than "storing said unique product identifier . . . in a cloud based data store", the actions all occur in the place the benefit is provided. The storing action kills the claim's attempt to have all actions take place in one local locality. A better wording would have been "sending said unique product identifier to be stored on a cloud-based data store". Then the required action is "sending" and the storing brought in inferentially - not a positivity recited required step. It can be a little difficult to see the distinction.

Imagine a system with a transmitter and a receiver. Some claims should be all about the transmitting and others all about the receiving.

  • "In the future, other factual scenarios may arise which warrant attributing others’ performance of method steps to a single actor." (Federal Circuit) after ipintelligencereport.com/2017/01/17/… – DonQuiKong Apr 27 '18 at 8:59
  • Inducement of infringement and liability for others actions are a real danger. I don't know the exact US rulings for extraterrestrial infringement, but in Germany a few recent cases affirmatively ruled for infringement by chinese manufacturers even though no complete infringement nor infringing product was sold in Germany (but the benefits of the infringement were). – DonQuiKong Apr 27 '18 at 8:59
  • So even if in the US this can be correct (I dont know), I think it should be emphasized that it's not universally so. – DonQuiKong Apr 27 '18 at 9:00
  • @DonQuiKing - yes - patent infringement extending to actions outside the jurisdiction a patent is issued in, and done by more than one actor is changing. I think there was a SCOTUS ruling in the last two weeks. The point of my answer was that it was best practice in claim writing to not be exposed to those uncertainties. – George White Apr 28 '18 at 1:23
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Just to be clear, the cited document is a WO application, not yet a patent. It is entirely possible that it is also applied for in the US. Indeed if you look at the bottom of the document you will see a reference to US201562235742 which is a US application. There may even be applications filed in Taiwan. I am not a lawyer, but my guess is if you conduct business in the US, then a US patent would apply. However, it is an interesting question.

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