Software Patents under 35 U.S.C. Sec. 271(f): Should Congress Amend Sec. 271 to Harmonize Protection between Tangible and Intangible Inventions

Authors

Robert A. McFarlane
Timothy V. Fisher

Abstract

U.S. Patent laws presumptively apply only to acts committed within this country. Congress has, however, imposed liability for domestic patent infringement based on actions taken, or at least completed, outside the United States. For example, Congress added § 271(f) to the patent statues in 1984 to impose liability for the unauthorized exportation of components of patented inventions to be assembled abroad, even where no infringing acts are completed in the United States. Courts' varying application of § 271(f) to patented inventions in various fields led to inconsistent protections across different technologies. The current article explores this asymmetry in patent protection, its origin, and the implications for inventions in the digital and software fields. This article provides a detailed analysis of the two leading cases in this area, Microsoft Corp. v. AT&T Corp. (commonly referred to as AT&T 11) and Cardiac Pacemakers v. St. Jude, and then considers whether, and how, §271 might be revised to address the noted imbalance.

Recommended Citation

Robert A. McFarlane and Timothy V. Fisher, Software Patents under 35 U.S.C. Sec. 271(f): Should Congress Amend Sec. 271 to Harmonize Protection between Tangible and Intangible Inventions, 2 Hastings Sci. & Tech. L.J. 183 (2010).
Available at: https://repository.uclawsf.edu/hastings_science_technology_law_journal/vol2/iss2/2