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ARTICLE · 10 JULY 2018

Flashback: Domestic Infringement Can Be Compensated Based On Lost Foreign Profits

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Fourteen years ago, while discussing 35 USC 271(f) and related court precedents, I wrote that "a patentee can rely on its U.S. patent to seek damages for sales outside the U.S."

United StatesIntellectual Property
Philippe J.C. Signore, Ph.D.
Philippe J.C. Signore, Ph.D.
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Fourteen years ago, while discussing 35 USC 271(f) and related court precedents, I wrote that "a patentee can rely on its U.S. patent to seek damages for sales outside the U.S." See The Impact of U.S. Patents on International Business (Managing intellectual Property, Issue 144, Nov. 2004).  The ability to recover damages to compensate for harm suffered by the patentee from foreign sales has been around for over 130 years.  See S. Yelderman, Proximate vs. Geographic Limits on Patent Damages, IP Theory, Vol. 7, Issue 2, 2018, citing Ketchum Harvester Co. v. Johnson Harvester Co. (C.C.N.D.N.Y. 1881).

The Supreme Court recently held that the patent statutes (35 USC 284 and 271(f)(2)) "allow the patent owner to recover for lost foreign profits." WesternGeco LLC v. Ion Geophysical Corp. Sup. Ct (2018).  The blogosphere is going wild.  Why all the fuss over something we already knew?  Because in 2013 and 2015, the Court of Appeals for the Federal Circuit (CAFC) held

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