Michael Van Loy, a Member in the Intellectual Property Section of the law firm of Mintz Levin, discusses whether US Patents are good outside of the USA. Mike has his bachelors in chemistry and his PhD in environmental engineering from the University of California, Berkley. He also has his law degree from Santa Clara University.
Mike was named a San Diego Super Lawyers Rising Star for Intellectual Property in 2016.
Let’s listen to his take!
What Qualifies a U.S. Patent to be Effective Outside of the U.S.A.?
According to Mike Van Loy:
“It’s any of those four activities: it can be making, using, selling or importing, a U.S. patent actually does reach outside the U.S. (However), if someone makes a competing product in China, then they could certainly make it and sell it in China. You’d have no recourse. If they make it in China and try to import it into the U.S., then you can potentially have the customs service intercept it at the border. It’s called the International Trade Commission; it’s an ITC matter. You can basically sue. It’s a very rapid trial. It takes about a year. If you win, then the customs service basically will interdict infringing goods at the border and destroy them. It could be quite powerful. If you make it in the U.S. and ship it elsewhere, then you have that if you just use it here. There are patents that rely on sort of a network situation or the Internet. Even if the server is offshore somewhere, if they have customers in the U.S., then they’re infringing. This is true as long as your claims are written the right way.”
See the full interview with Mike here.
For more information in this topic, also see Protecting Intellectual Property Rights (IPR) Overseas.
This is Patrick Henry, CEO of QuestFusion, with The Real Deal…What Matters.