48:1 Extraterritorial Software Protection Under § 271(f): A Call to Congress to Fix a Statute That Was Not Broken

Comment

Abstract

Patents protecting computers and other related technologies significantly contributed to the United States’ innovation and technological growth throughout the last several decades. Notable, patents issued within the high-tech areas of invention have significantly affected the United States economy over the past several decades. Among the high-tech areas of invention, software patents arguably generated the most dynamic changes in the United States patent system over the past ten to fifteen years. Because software is such a volatile area for potential infringement suits, owners and assignees naturally prefer strong protection and enforcement of their patents.

Although the U.S. Supreme Court recently solidified software’s protection under current U.S. law, uncertainty remains as to how far that protection extends extraterritorially. Under 35 U.S.C. § 271(f), an alleged infringer is liable if he “supplies or causes to be supplied in or from the United States all or a substantial portion of the components of a patented invention.” Despite § 271(f)’s applicability to enforcement overseas, the U.S. Supreme Court recently restricted the statute’s application for software patents. Whether the Supreme Court properly construed the statute or not, its decision clearly diminished an inventor’s capacity to enforce her software patents outside of the United States. This Comment explores the reasons why that recent dispute was decided improperly and the problems it created as a result. The Comment concludes by proposing amendments to 35 U.S.C. § 271(f) in order to provide the additional protection against extraterritorial patent infringement that Congress originally intended.