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An offer of sale can infringe a U.S. patent even if the offer is presented outside of the U.S.(08/23/10)
An “offer of sale” of a device may infringe a U.S. patent under 35 U.S.C. § 271(a) even if the sale is not consummated. The purpose of the statute is to prevent generating interest in a potentially infringing product to the commercial detriment of the patent owner. A new Federal Circuit case holds that infringement under this statute may not be avoided by making an offer of sale outside the United States if the device is to be delivered and used in the United States.
In Transocean Offshore Deepwater Drilling, Inc. v. Maersk Contractors USA (Federal Circuit August 18, 2010) two U.S. companies executed a contract in Norway for the sale of a drilling rig that was built in Singapore and delivered for use in the U.S. Gulf of Mexico. The rig included a patented configuration and was altered before delivery so as not to infringe Transocean’s U.S. patent. Nevertheless, the Federal Circuit reversed the district court’s summary judgment of non-infringement, which held that the offer of sale and sale made in Norway were not infringing. The Federal Circuit held that the case “presents the question whether an offer which is made in Norway by a U.S. company to a U.S. company to sell a product within the U.S., for delivery and use within the U.S. constitutes an offer to sell within the U.S. under § 271(a). We conclude that it does.” The court explained that “[t]he focus should not be on the location of the offer, but rather the location of the future sale that would occur pursuant to the offer.”
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