Law360 Guest Article: Infringement Liability May Exist For Foreign Manufacturers


Many foreign manufacturers ignore U.S. patents because they wrongly assume they have no real economic risk and are not liable for infringing a patent in another country. But when products are being shipped to the U.S from another country, infringement liability may exist. Thus it is important for foreign manufacturers of active pharmaceutical ingredients (“APIs”) exporting to the U.S. to be sure that their manufacturing process does not infringe a claim of any valid and enforceable U.S. process patent, because the foreign manufacturer can be liable for such infringement.

This discussion explores U.S. process patents from the perspective of foreign manufacturers of APIs exporting to the U.S., but is equally applicable to all foreign manufacturers.

Specifically, the owner of a U.S. patent claiming a process for manufacturing a product, such as an API or an intermediate used to manufacture the API, can, under 35 U.S.C. § 271(g), bring suit in U.S. federal court against a party who manufactures the product using the patented process even in a foreign country and then imports the product into the United States. If the importer is found liable for infringement, the court can award damages to the patent owner and/or enjoin importation of the product manufactured using the patented process.

Excerpted from Law360, June 6, 2013. To view full article, click here (subscription required).

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