The impact of outsourcing on patent strategies

Mark Lemley and co-authors describe how offshoring might be used to avoid the reach of U.S. patents.

--> While Eolas suggests a move toward internationalization of U.S.
patent liability, the line between it and Pellegrini can readily be gamed.
Someone who wants to avoid a U.S. patent can design the invention in the U.S. and
send instructions overseas, so long as the actual production and use of the
invention occurs overseas. Further, because Section 271(f) does not apply at all
to process claims, n44 drafting claims in process form will make it even
harder to apply them to international infringement. Even after Eolas, therefore,
it is still possible to avoid infringement under Section 271(f) by
offshoring.


--> It is important to note, however, that as communications technologies support ever increasing bandwidth, virtually any innovation that employs computation or decision-making is susceptible to placement of a particular component or step with an independent vendor or outside the U.S. in a way that may avoid traditional
infringement remedies. In an increasingly outsourced world, applicants (and their counsel)should pay particular attention to these issues.

The writers conclude --> Current law provides little solace for patent
owners faced with distributed [divided] patent claims. ... patent
owners and patent practitioners must be aware of the problem and take
it into account in writing, valuing, enforcing, and defending against patents.


(6 Sedona Conf. J. 117 (2005))