UK: Infringement By Overseas Servers Revisited

Last Updated: 9 March 2018
Article by John Leeming

Since the UK Court of Appeal judgment in Menashe v William Hill, it has not been safe to assume that infringement of a patent claim including a processor or a processing step can be avoided by performing the processing on a server outside the UK. A third judgement on this topic has recently been issued – making the score two for infringement and one for non-infringement – so it is instructive to consider what factors affect a finding of infringement. We review the relevant points of the three cases and draw some practical conclusions.

Menashe v William Hill

In Menashe v William Hill the claimed invention was an on-line gaming system that included a host computer and a terminal computer. The defendants operated a host computer in Antigua and supplied software to customers in the UK which allowed the customers to place bets via the host computer in Antigua. The claimant asserted that the supply of the software to UK customers was an indirect (or contributory) infringement under Section 60(2) of the Patents Act 1977 which says it is an infringement to "supply ... means, relating to an essential element of the invention ... for putting the invention into effect in the UK". The defendants asserted that there could be no infringement because the invention was not put into effect in the UK.

The question of whether the location of the server in Antigua was sufficient in itself to avoid infringement was tried in a preliminary hearing on an agreed set of facts. Both at first instance and on appeal, it was held that infringement was not avoided merely by the location of the server, albeit for different reasons. The reasons of the Court of Appeal looked at use of the invention and asked "who uses the claimed ... system?" and "where does he use it?".

On the agreed facts, the Court of Appeal decided that the user of the claimed system was the customer (punter) in the UK and stated:

it is not a misuse of language to say that he uses the host computer in the United Kingdom. It is the input to and output of the host computer that is important to the punter and in a real sense the punter uses the host computer in the United Kingdom even though it is situated in Antigua and operates in Antigua. In those circumstances it is not straining the word "use" to conclude that the United Kingdom punter will use the claimed gaming system in the United Kingdom, even if the host computer is situated in, say, Antigua. Thus the supply of the CD in the United Kingdom to the United Kingdom punter will be intended to put the invention into effect in the United Kingdom.

It was recognised that this conclusion could be extended to say that the punters in the UK committed a direct infringement by using the claimed system, although no end users had been sued. (In the UK it is not essential to a finding of indirect infringement that there has been a direct infringement.)

Premiatha v Illumina

In the recent case of Premiatha v Illumina it was held that performing some data processing outside the jurisdiction did not prevent a finding of infringement. This case concerned several patents with a variety of claims to methods of, or useful in, diagnosis by analysing DNA in a blood sample. The Judgment is lengthy and mostly concerns issues relating to biotechnology which we will not address here. However, the alleged infringers sought a declaration of non-infringement in respect of a proposed alternative method. In the alternative method, a blood sample is to be taken from a patient in the UK, DNA sequencing carried out in the UK, "raw" sequence data sent to Taiwan for computer analysis and a report sent back to the UK where it is communicated to the patient. Although the analysis is automatic, at least some of the steps in communicating the data could or would be manual.

The Judge, following Menashe v William Hill, looked at where the invention would be "used" (skating over the question of who is the user) and concluded that it would be used in the UK "in substance".

RIM v Motorola

In this case, RIM (now Blackberry) were accused of infringement of four patents owned by Motorola. The relevant patent for present purposes included claims to a "method of operating a messaging gateway system" which acted as an intermediary between an email server and the end user's handheld device. For certain users, the relevant gateway system was located in Canada. The judge held that this system was used by RIM and they used it in Canada – hence no infringement.

Lessons to be learnt

It has often been asserted that the patent proprietor should avoid the problem by careful drafting: including claims requiring only integers and/or steps that will be carried out in the jurisdiction. Of course patent applicants lack a crystal ball to allow them to reliably anticipate how an infringer will arrange matters to try to avoid infringement. In addition, it is often not possible to draft novel and inventive claims that cover only one side of a method involving two parties.

A potentially more reliable approach to maximising coverage is to draft claims aimed at different users. In particular, it is advisable to include claims that cover the activities of users who cannot easily move out of the jurisdiction, often end users, i.e. the consumers. This is consistent with a strategy that seeks protection in the largest and/or most valuable markets, rather than the locations of competitors.

In the RIM v Motorola case, claims to a method of sending or receiving messages might have served the patent proprietor better. In Europe, even where the invention lies in operation of a server, such claims could be presented as dependent claims adding extra integers at the user's end or steps carried out by the user, even if such integers or steps were known.

The issue of who is the user can often depend on who has control, who provides inputs and who receives outputs. In seeking to draft a claim that covers the actions of only one party, it is common to draft features in terms like "receiving a user input". However, the user of such a claim might be seen to be the person running the server and so a feature in terms like "providing a user input" might better indicate that the user of the claim is the end user. For example, some apps using machine learning algorithms for recognition of objects off-load the main processing to a server, often seamlessly to the user. This would seem a clear case where an invention claimed primarily referring to user actions would be seen as being used in the jurisdiction where the user is even if the server is elsewhere.

The approaches of claiming actions performed by only one actor and claiming from the perspective of the user often present somewhat contradictory requirements. This requires careful management within the EPO's constraints on the number of independent claims and the total number of claims, necessitating judicious use of dependent claims. To get around the one independent claim limit, it is sometimes possible to present the invention as alternative solutions to a common problem (server-side and client-side) or as inter-related products. It is likely that claims that are optimal for UK and European considerations will diverge from those best for the US, where NTP, Inc. v Research in Motion, Ltd reached different conclusions for method and system clams based on a similar fact pattern to the UK case of RIM v Motorola.

Originally published 14 December 2017

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

In association with
Related Topics
Related Articles
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Mondaq Free Registration
Gain access to Mondaq global archive of over 375,000 articles covering 200 countries with a personalised News Alert and automatic login on this device.
Mondaq News Alert (some suggested topics and region)
Select Topics
Registration (please scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of

To Use you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions