Table of Contents

PrefaceIntroductionChapter 1: Global Protection for Inventions1.1 The Territorial Limitations of Patent Protection1.2 A World Patent1.3 Parallel Patents1.3.1 Obtaining a Patent Abroad1.3.2 Obtaining Patents in Multiple Countries1.4 Obstacles to Global ProtectionChapter 2: Enforcing Parallel Patents2.1 Private International Law Solutions to the Problem of Enforcement of Parallel Patents2.1.1 The Brussels Regime2.1.2 Mitigating the Problems Created By the Brussels Regime2.1.3 The Hague Convention2.1.4 The ALI Principles2.1.5 The CLIP Principles2.1.6 Obstacles to Implementation of Private International Law Solutions2.1.6.1 Foreign Patents in U.S. Courts2.1.6.2 Foreign Patents in German Courts2.2 Institutional Solutions to the Problem of Enforcement of Parallel Patents2.3 Obstacles to the Enforcement of Parallel PatentsChapter 3: Protecting an Invention outside the Protecting Country3.1 Inventions in the Means of Transportation3.2 Inventions in Transit and Border Measures3.3 Offers to Sell3.4 Inventions Assembled Abroad from Components from a Protecting Country3.5 Acts Abroad Contributing to Infringements in the Protecting Country3.6 Acts in Multiple Locations3.7 Limits on the Protection of an Invention outside the Protecting CountryChapter 4: Limits of Protection under the Law of the Protecting Country4.1 Foreign Parties before U.S. Courts ? A Quantitative View of the Enforcement Problem4.1.1 Patent Cases Filed in 2004 and 20094.1.2 Cases Involving Foreign Parties4.1.3 Cases Involving at Least One Foreign Defendant and Cases with Only Foreign Defendants4.1.4 Some Observations about the Data on the Involvement of Foreign Defendants in Patent Litigation in 2004 and 20094.2 Injunctions4.2.1 Cross-Border Injunctions in U.S. Courts4.2.2 Cross-Border Injunctions in Europe4.2.3 Challenges to Enforcement of Injunctions Abroad4.2.3.1 Enforcement of an Injunction4.2.3.2 Enforcement of a Contempt Order4.3 Monetary Relief4.3.1 Punitive Damages4.3.2 Ongoing Royalties4.4 Additional Requirements of Recognition and Enforcement4.5 Obstacles to Enforcement AbroadConclusionsBibliographyTable of CasesIndex

About the Author

Marketa Trimble is an associate professor at the William S. Boyd School of Law at the University of Nevada Las Vegas. Previously, she studied at Stanford Law School, where she received her second doctoral degree. In her research, she focuses on intellectual property and issues at the intersection of intellectual property and private international law/conflict of laws. Professor Trimble has conducted comparative and empirical work in her areas of
interest using her extensive research experience from law schools in the U.S. and Europe, her expertise from the European Union and European governments, and her foreign language abilities.

Reviews

"Patent infringement is global, but patent law is national. Global Patents explores the problems this causes for cross-border patent enforcement. A must-read for anyone who hopes to enforce a patent overseas, or to enforce a judgment once they win."
--Mark A. Lemley, William H. Neukom Professor, Stanford Law School
"In Global Patents, Marketa Trimble tells the story of how the territorial split of inventions into national patents encumbers the exercise and enforcement of rights, spanning such diverse issues as private international law, notions of infringement (including secondary liability), and empirical research, all based on a rich and thorough comparative analysis of US and German legal history and case law. In short, it is a scholarly work that is also highly
relevant for practice."
--Prof. Annette Kur, Max-Planck-Institute for Intellectual Property and Competition Law, Munich
"Marketa Trimble's very readable contribution to ongoing debates about the protection of patents on a global basis puts the proposition that patent law is territorial in historical, theoretical, and comparative context. Global Patents offers a comprehensive treatment of the topic, canvassing developments in public and private international law, tackling both acquisition and enforcement, and paying critical attention to both theoretical and practical
questions. It is a valuable resource for scholars and practitioners alike."
--Graeme B. Dinwoodie, Professor of Intellectual Property and Information Technology Law,
University of Oxford