The Unique Infringement Type under American Patent Law: Focusing on §271(f) and Coping Strategy of Taiwanese OEM/ODM

• Main Author: 彭譽之
• Other Authors: 李治安
• Format: Others
• Language: zh-TW
• Published: 2013
• Online Access: http://ndltd.ncl.edu.tw/handle/18464575959503570768

碩士 === 國立政治大學 === 法學院碩士在職專班 === 101 === There are some unique law and regulation with strong domestic protectionism under US patent system. For example, the Long Arm Statute may extend a state’s jurisdiction to reach a defendant that lacks both physical and personal presence in the state, and this research’s focus 35U.S.C. §271(f). 35 U.S.C. §271(f) was enacted in 1984 to close a loophole in US patent system, which forbids supplying all or a substantial portion of the components of a patented invention so as to actively induce the combination of such components outside of the United States, besides, supplying a non-staple component especially made for use in the patented invention also constitutes an act of infringement. No matter if there is any obstacle in implement of the Act, since Taiwan, as a main OEM/ODM partner of many US tier-one brand owners, is always aggressive to establish patent portfolio in the States, will be impacted by this law as well, directly or indirectly. According to this research, §271(f)(2) will be more feasible for today’s global collaboration practice. For Taiwanese OEM/ODM, after a patent license for a key component is conducted by an upstream partner, patent exhaustion doctrine or implied license doctrine can be adopted as a non-infringement argument, if there is no unfavorable condition tied with mentioned license agreement. From the aspect of patent prosecution, the minimum unit with the patented feature is suggested to be the claimed subject matter, to give consideration to both enforceability and patentability.