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Washington Journal of Law, Technology & Arts

Abstract

Congress enacted 35 U.S.C. § 271(f) to broaden U.S. patent protection and prohibit shipping patented devices in smaller components for assembly overseas. Section 271(f) creates an infringement cause of action for sending comp-onents outside the United States for assembly. Whether § 271(f)—which clearly applies to physical things—also applies to process claims has been hotly debated. In Cardiac Pacemakers, Inc. v. St. Jude Med Inc., the United States Court of Appeals for the Federal Circuit held that § 271(f) does not apply to process claims because a compo-nent of a process claim is an intangible step that cannot be physically supplied. This Article surveys the origins of 35 U.S.C. § 271(f), examines how courts applied the statute before Cardiac Pacemakers, analyzes the Federal Circuit’s reasoning in Cardiac Pacemakers, and discusses impli-cations for those with process claims. Although § 271(f) offers limited protection against acts giving rise to foreign commercial activity, Cardiac Pacemakers suggests patent attorneys should consider possible claims for tangible combinations elements occurring during performance of intangible processes.

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