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Why file abroad

March 9, 2016
goprimeconsult

Can shipping “from yourself to yourself” possibly amount to “inducing infringement”?

I always thought that it “took two to tango”. However, a recent US Federal Circuit decision disagrees: in Promega v. LifeTech the Court held that you could induce yourself to infringe by shipping from yourself in Texas to yourself in the UK.

Obviously, I think that decision is bizarre and probably not something that you want to hang your hat on.

However, where or not it is possible to induce yourself, what Promega v. LifeTech really illustrates is the importance of filing patents in major markets – as your competitors likely will have operations outside the US and can evade your US patent unless you file where they are. A patent governs the right to ‘make, use or sell’ the invention in a jurisdiction, and if any of those can happen at scale somewhere outside the US, then you need to think seriously about filing there.

Neil