Where should we file patent applications?

[Patentstudent]

We have come up with a device that would be very useful for all big container ships.
Assuming that almost each of such ships will eventually moor in a harbor in the US, wouldn't it be sufficient to file a patent applications only in the US?
Why spend all the upfront money to file patent applications and obtain a patent in a multitude of countries around the world if at some point we 'can catch' them in the US?
 
I'd appreciate your views on the geographical patenting considerations for a device to which it is inherent that it will constantly travel around the world and will be on US soil (a US harbor) every so often.   

[PHInventor]

Let's assume:
1. Your product is purchased and then installed permanently on container ships, rather than purchased at port each time a ship docks.
2. You only have a US patent.
3. A foreign manufacturer sells a knockoff overseas, which is then purchased by an end-user, who takes it into the US when at port. 

A. In this scenario, to my understanding, you would not be able to sue the foreign manufacturer. You would, however, be in a position to sue the end-user. In other words, you could sue your intended customers, if you could figure out who they were, when they arrived at a US port. It would be up to you to figure out whether the threat of such suits would be a good business plan as you tried to build acceptance of your new product.

B. From what I can tell, companies tend to limit overseas filing to whatever countries are most likely to manufacture the product.

(NOTE: I'm not an attorney, patent agent, or examiner.)

[Patentstudent]

Thank you PHInventor.

The device is part of the ship's rudder system. We expect that once the word gets out no country will allow a ship without it to enter its harbors.

I hope that a patent attorney can also shed some light on 'my case'.

[bartmans]

Dear PatentStudent,

I do not know the situation with respect to the USA, but if you would have the patent in The Netherlands, then you would not be able to stop infringement on ships that enter the Dutch harbours, because there is an exemptione in our patent law that says that (use of) products on ships or planes that temporarily are on Dutch territory do not infringe.
I assume that a similar provision would also prevail in the USA, but I rather leave it to my US colleagues on this forum to comment on that.

[Patentstudent]

Dear Bartmans,

Thank you for your very helpful comment.
Yes, I am curious to know whether American patent law resembles the Dutch in this respect.
We'll have to wait for input from an American patent attorney.
Thank you again for pointing this out.

Regards,
Patentstudent

[khazzah]

We have come up with a device that would be very useful for all big container ships.
The device is part of the ship's rudder system.
Assuming that almost each of such ships will eventually moor in a harbor in the US, wouldn't it be sufficient to file a patent applications only in the US?

Help us out here, Patentstudent, by showing us that you've started the analysis. I'm sure that before asking the question you read up on infringement, so you know that Infringement of a US patent requires "make, use, or sell" in the US, right?

So what's the real question here ... if using a rudder covered by a US patent to steer a ship into the US is an act of infringement?

We expect that once the word gets out no country will allow a ship without it to enter its harbors.

Because you think the government of Nation X is going to a) figure out that a part on the ship is covered by a patent issued by Nation X and b) figure out that infringement is going on and c) interfere with maritime commerce to stop this infringement?

I don't think so.

[MYK]

It would be interesting to find out if there is caselaw on this, but I'd suggest asking an admiralty-law attorney about where U.S. jurisdiction on foreign-flagged ships starts and ends.

Even assuming the U.S. were willing to enforce against shipowners who were temporarily in harbor, you would be opening up a gigantic mess with international litigation to enforce.  Suing COSCO in a U.S. court is most likely futile, because the mainland Chinese government is not going to be eager to enforce a U.S. judgment against its own state-owned shipping company.

As far as where to file applications, I'd therefore suggest the countries that do most ship-building and maintenance work.  South Korea, China, India, to name a few.  You can skip Switzerland since they don't build many oceangoing cargo ships there.

[Patentstudent]

We expect that once the word gets out no country will allow a ship without it to enter its harbors.

Because you think the government of Nation X is going to a) figure out that a part on the ship is covered by a patent issued by Nation X and b) figure out that infringement is going on and c) interfere with maritime commerce to stop this infringement?

khazzah, it seems that there is a misunderstanding. 
Our expectation that no country is going to allow a ship without the device to enter their harbors is based on the effect that the device will have on safety. It will almost eliminate the chances of maneuvering accidents. So, authorities will probably require ships to be equipped with the device. 

[Patentstudent]

It would be interesting to find out if there is caselaw on this, but I'd suggest asking an admiralty-law attorney about where U.S. jurisdiction on foreign-flagged ships starts and ends.

Even assuming the U.S. were willing to enforce against shipowners who were temporarily in harbor, you would be opening up a gigantic mess with international litigation to enforce.  Suing COSCO in a U.S. court is most likely futile, because the mainland Chinese government is not going to be eager to enforce a U.S. judgment against its own state-owned shipping company.

As far as where to file applications, I'd therefore suggest the countries that do most ship-building and maintenance work.  South Korea, China, India, to name a few.  You can skip Switzerland since they don't build many oceangoing cargo ships there.

MYK, thank you for the clear comment.

[MYK]

We expect that once the word gets out no country will allow a ship without it to enter its harbors.

Because you think the government of Nation X is going to a) figure out that a part on the ship is covered by a patent issued by Nation X and b) figure out that infringement is going on and c) interfere with maritime commerce to stop this infringement?

khazzah, it seems that there is a misunderstanding. 
Our expectation that no country is going to allow a ship without the device to enter their harbors is based on the effect that the device will have on safety. It will almost eliminate the chances of maneuvering accidents. So, authorities will probably require ships to be equipped with the device.

Hmm.

I think you're misunderstanding, and doing so on two different levels.

First, governments tend not to push for this sort of technological requirement unless there is a major need for it.  See for example how the U.S. requirement for double-hulled oil tankers played out after several high-profile tanker oil spills.  They gave a long period for compliance, and (last I heard) there are still lots of single-hull tankers floating around elsewhere in the world.  The ship owners are going to push back against such a rule, and by the time everything settles out, I would be willing to bet a moderate chunk of change that your patent will probably have run through at least half its lifetime (based on 20 from filing).  Maybe all of it.

As another example, take a look at what happened when some patent attorney decided to attempt to get his Saw Stop technology mandated by the CPSC.  Not only was there pushback from the industry -- resulting in his attempt failing -- but he also generated quite a lot of ill-will from potential customers.  In the end, he had to create his own company to actually manufacture table saws incorporating his patented tech, and although some people buy them, it's not the "pay me money or get forced out of business!" that he originally was trying to achieve.

Second, you assume that because a ship enters a harbor in the U.S., that you will be able to seek damages from the ship owner/operator for patent infringement on the basis of "use" within the U.S.  This is what I took Karen's comment to be referencing.  But how are you going to go about this?  The U.S. government is unlikely to seize the ship until your lawsuit is settled.  If the U.S. government mandates that your technology be used, you may be forced to license your patent as a standards-essential patent, which has rules you probably wouldn't like.  There is some jurisdictional question -- is it infringing to bring your technology within the 200-mile limit, the 12-mile limit, the 3-mile limit, only when docked, or is it never infringing because the ship is foreign-flagged?  I don't know the answer to that one, and would be interested in seeing an answer to that -- it would be even more fun to watch it being litigated.

So, patent where they build the ships, or wherever they can install the gadget.  Even there, look at what happens with pharma patents on lifesaving drugs -- the new HepC cures were recently denied patent protection in India because their courts and government are corrupt er I mean no company should be allowed to profit from its research er hmm their pharma companies want to make a buck without having to do anything worthwhile umm something.

[Patentstudent]

Second, you assume that because a ship enters a harbor in the U.S., that you will be able to seek damages from the ship owner/operator for patent infringement on the basis of "use" within the U.S.  This is what I took Karen's comment to be referencing.  But how are you going to go about this?  The U.S. government is unlikely to seize the ship until your lawsuit is settled.  If the U.S. government mandates that your technology be used, you may be forced to license your patent as a standards-essential patent, which has rules you probably wouldn't like.  There is some jurisdictional question -- is it infringing to bring your technology within the 200-mile limit, the 12-mile limit, the 3-mile limit, only when docked, or is it never infringing because the ship is foreign-flagged?  I don't know the answer to that one, and would be interested in seeing an answer to that -- it would be even more fun to watch it being litigated.

So, patent where they build the ships, or wherever they can install the gadget.  Even there, look at what happens with pharma patents on lifesaving drugs -- the new HepC cures were recently denied patent protection in India because their courts and government are corrupt er I mean no company should be allowed to profit from its research er hmm their pharma companies want to make a buck without having to do anything worthwhile umm something.

Yes, you are right about my assumption and because I wasn't sure about it I asked the comments of you experts.
I appreciate your views and recognize the flaws in my thinking.

[JimIvey]

I'll echo the suggestion to talk with someone familiar with maritime law.  In addition to making, using, and selling, importing is a direct act of infringement in the US.  However, I have no idea when a ship is officially in the US and it or its cargo "imported."  Does importation at least require an attempt to clear customs?  Are the things sold in duty free shops in international airports not really imported until you carry them through customs?  Or perhaps the act of importing, for purposes of patent law, happens when the ship enters US waters however many miles off the coast -- or at some point in between: when a local pilot takes control, when anchored in the SF Bay, or when docked at the Oakland port.

It's an interesting question and I don't know the answer.  My best guess is that this is part of maritime law.

Regards.

[MYK]

I'll echo the suggestion to talk with someone familiar with maritime law.  In addition to making, using, and selling, importing is a direct act of infringement in the US.  However, I have no idea when a ship is officially in the US and it or its cargo "imported."  Does importation at least require an attempt to clear customs?  Are the things sold in duty free shops in international airports not really imported until you carry them through customs?  Or perhaps the act of importing, for purposes of patent law, happens when the ship enters US waters however many miles off the coast -- or at some point in between: when a local pilot takes control, when anchored in the SF Bay, or when docked at the Oakland port.

It's an interesting question and I don't know the answer.  My best guess is that this is part of maritime law.

I'd say that importation of goods does require an attempt to clear customs, but the ship isn't a "good" in that sense.

Tulane is supposed to be the best admiralty law program in the country, IIRC.  Try looking up some of their grads for an answer.