Are US software patents enforceable in the UK?

Question

The UK Patent Act 1977 clearly states that

It is hereby declared that the following (among other things) are not inventions for the purposes of this Act, that is to say, anything which consists of ... a program for a computer

Similar wording can be found in the European Patent Convention.

On the other hand, it is known that the USA grants software patents, where many companies claim them as processes or machines.

Given a patent would never be granted in the UK, can US entities enforce their software patents here?

References

1. United Kingdom on swpat.org
2. European Patent Convention on swpat.org
3. Legislation in the USA on swpat.org

Answer 1

Basically patents are territorial grants, that is to say a patent granted in the US is enforceable in the US and cannot be enforced in other countries. To answer your question US entities cannot enforce US software patents or for that matter any US patents in the UK. I am certain about this, but back-up and constructive criticism is welcome.

Answer 2

There are three main provision of the laws that might cause you problem and they all involve exporting to the US or encouraging others to do so. The primary statute on point is 35 U.S.C. 271(a)-(c).

(a) Except as otherwise provided in this title, whoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States or imports into the United States any patented invention during the term of the patent therefor, infringes the patent.

(b) Whoever actively induces infringement of a patent shall be liable as an infringer.

(c) Whoever ... imports into the United States a component of a patented machine ... for use in practicing a patented process, constituting a material part of the invention, knowing the same to be especially made or especially adapted for use in an infringement of such patent, and not a staple article or commodity of commerce suitable for substantial noninfringing use, shall be liable as a contributory infringer.

Thus, if you import an infringing product into the US or induce someone to import the infringing product into the US, then you can be held fully liable as an infringer. Even if you are selling through a third party distributor, you likely be seen as inducing the importation depending upon the facts.

There is nothing illegal about selling to US customers when they are in the UK so long as that sale is not part of an import scheme.

Now, there are some procedural issues that a patentee would need to overcome: (1) can a court get jurisdiction over you as a non-US entity; and (2) can they collect money damages since you are in the UK. These are big questions. If the case is brought in the US International Trade Commission (USITC) rather than in court then the court automatically claims jurisdiction based upon the imported products. The nice thing (for you) about USITC cases is that USITC never awards money damages (only awards exclusion orders to block further imports). If you lost a money judgment in court, the patentee could seize your US assets. There is no particular treaty between the US and UK on enforcing foreign money judgments. However, it is usually relatively simple for a US judgment winner to go to the UK and collect the money.

Answer 3

The short answer is no, a US patent cannot be enforced in the UK.

For a criminal violation, there would be at least some possibility of being extradited to the US and being prosecuted in the US for that criminal violation. Patents, however, fall under civil law, and at least as I understand the situation extradition can't be (or at least isn't) applied for civil cases.

I can imagine that if the infringement in question were valuable enough, and the owner of the patent large enough, it's barely conceivable that they could come up with some sort of criminal case that might be enough to support extradition, then after you were in the US, sue you for patent infringement. They'd still have to show, however, that your infringement fell within the jurisdiction of the court in the US. That would mean, for example, that even though you weren't personally in the US, your allegedly infringing product was sold in the US.

Answer 4

How it can be possible both countries are different and there rules and regulations are also different , so i don't think so that it is possible to enforce US software patents into UK.