Extraterritoriality and infringement of blockchain claims


Frederick Rein, Andrew Riley and Vi Tran

Extraterritoriality and infringement of blockchain claims

peshkov / iStockphoto.com

When filing US patent infringement claims over blockchain components located anywhere in the world, parties can pursue damages for potentially infringing activities outside of the US. Frederick Rein, Andrew Riley and Vi Tran of Goodwin report.

As new technologies reshape the way business is conducted, the world becomes more interconnected. The advent of decentralised blockchain technology has created new opportunities to take advantage of the borderless nature of this technology. As with many new technologies, there has been a rush to obtain patent protection for innovations in this space.

Contemporaneously, the US Supreme Court’s decision in WesternGeco v ION Geophysical (2018) has spurred interest in the role of extraterritoriality under US patent law. While the scope of US patent law is generally limited to domestic activities, specific situations exist where extraterritorial activities factor into infringement or damages analyses.

In WesternGeco, the question for the court was whether a patentee could recover foreign lost profits for infringement under 35 USC §271(f)(2), which creates domestic liability for making components of a patented invention and combining them outside of the US such that the combination would infringe a claim as if the components had been assembled in the country. The Supreme Court held that lost profits were available for the infringer’s actions outside the US.

blockchain, Frederick Rein, Andrew Riley, Vi Tran, Goodwin, technology, US Supreme Court, patent, patent infringement