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OK to Use 'Research Tool' Patents Offshore?

By Harold Wegner and Stephen Maebius
December 01, 2003

The U.S. Court of Appeals for the Federal Circuit has confirmed that there is no patent infringement liability under 35 U.S.C. 271(g)(1) for the offshore use of a “research tool” patent when only the information gained from such offshore use is introduced into the United States. Bayer A.G. v. Housey Pharm. Inc., 340 F.3d 1367 (Fed. Cir. 2003), aff'g, 169 F. Supp. 2d. 328, 329 (D. Del. 2001).

Dicta in the Bayer case also suggest that the exportation of intangible information on a computer disk may not be a “component” of an offshore assembly of a patented combination — an issue of interest in the $521 million damages award in Eolas Technologies Inc. v. Microsoft Corp., No. 99 C626, 2003 WL 21781893 (N.D. Ill. 8/11/03).

The Offshore Research Tool of 'Bayer v. Housey'

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