Practical Tips For Prosecuting Trans-Border Inventions

A new paper in the AIPLA Quarterly Journal provides a number of practical tips for dealing with inventions or infringing acts that naturally cross international borders.  The authors (Mark Lemley, David O’Brien, Ryan Kent, Ashok Ramani & Robert Van Nest) call these “divided infringement claims” and focus on the recent Federal Circuit decisions in Research-In-Motion v. NTP, Eolas v. Microsoft, AT&T v. Microsoft, and Pellegrini v. Analog Devices.

Prosecution Strategies:

  1. Attempt to draft unitary claims — i.e., claims that are not susceptible to international distribution.
  2. Claim devices and systems, not just methods — in RIM, the CAFC taught that system claims are much stronger on an international level.
  3. Draft claims that would infringed under the importation or domestic sale provisions of 271(g).
  4. Keep continuations alive.
  5. File foreign.

The paper also delves into a number of ex post litigation strategies such as filing suit at the ITC and advocating for a claim construction that avoids international division. 

Great work!