WIPR survey: SCOTUS Life Technologies v Promega decision correct
The US Supreme Court was correct to hold that supplying a single component of a multi-component invention for manufacture abroad does not constitute patent infringement, according to WIPR readers.
Last week, WIPR asked whether the court made the right decision in Life Technologies v Promega.
Sister site LSIPR reported in February that the Supreme Court had reversed a ruling by the US Court of Appeals for the Federal Circuit which had held that a single component was sufficient.
According to the Supreme Court, the relevant part of the Patent Act—section 271(f)(1)—“consistently” refers to plural components, indicating that multiple components make up the “substantial portion” required for liability.
And the majority of WIPR readers agreed—55% said that the court made the right decision.
“Patents or any other right that allows the owner to exploit a monopoly must be just for very determinate situations. From my point of view, such a privilege should be restricted,” said one reader.
Another added that the staple component in this case was commercial and was not unique to the patented invention.
The patent in question claims a toolkit for genetic testing, and Life Technologies manufactured one of the kit’s five components, an enzyme known as the Taq polymerase.
The enzyme was manufactured in the US before being shipped to the UK, where the four other components were made.
Because the component was not unique, its supply abroad “should not be sufficient to constitute an infringing act”, said the reader.
However, one reader didn’t approve of the decision, adding that it’s the individual pieces that make up the patented whole.
“The aim of patents is to prevent unfair or unlawful copying of inventions, and to allow components to be copied is falling down a slippery slope of letting more and more components to be copied, which means eventually lower incentives on behalf of inventors to invent,” they said.
One added that patent claims define the protection that the patent affords.
They said: “In some circumstances, supplying an unprotected component might be ‘inducing infringement’. But infringement of a foreign patent is not a question for US courts.”
Another reader was also critical: “If a US company wants to stop use of its invention abroad, it should patent its invention abroad, not rely on an absurd stretching of US patent law to prevent the infringement.”
For our latest survey question, we ask: “Last week WIPR reported that Hasbro filed a scent trademark for a Play-Doh. Do you think it should it be granted?”
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