A November 2017 decision from the UK Patents Court in Illumina v Premaitha provides good news for holders of patents relating to processes performed on the cloud.
The question of whether a UK patent could be directly infringed by a process in which one or more steps are executed outside of the UK was dealt with by Carr J, with a positive outcome. Carr J reasoned "the crucial question is where, in substance, is the process to be used?".
The case relates to patents protecting processes for testing pre-natal blood samples. The potentially infringing process includes taking blood samples in the UK, sequencing the samples by a sequencing machine operated in the UK, and sending the sequenced information to Taiwan for computer processes to be applied thereto, and the results returned to the UK.
Finding agreement with the judgment of the 2008 decision of Aldous J in William Hill v Menashe, Carr J reiterated "it does not matter where the computer is situated...any other result would make it far too easy to avoid infringement of patents of this nature".
Holders of UK patents protecting processes with steps performed on the cloud should be encouraged by this reasoning, which indicates that simply exporting data for processing at an offshore data centre is not sufficient in itself to avoid infringement.
We note that the prevailing case law in Germany indicates a similar position. In particular, the decision "Prepaid-Karten II" ("pre-paid cards II", 2 U 51/08) of the higher regional court in Düsseldorf has stated that, even though, in general, the territoriality principle demands that all process steps of a patented method are performed within Germany, a method claim may still be infringed when the method is performed partly abroad if the method steps performed abroad are attributable to the domestic infringer who performs the remaining method steps.
In the case considered in "Prepaid-Karten II", a Public Automatic Branch exchange (PABX) located abroad and performing steps attributable to the call handling of domestic telephone calls for German customers, was deemed to infringe. Similarly, in the earlier federal court decision "Rohrschweißverfahren" ("pipe welding method", X ZR 113/04), the Federal Court decided that an EP patent for a pipe welding method was infringed in Germany even though control data forming part of the patented method were prepared abroad and delivered to Germany for completion of the remaining portion of the patented method. Consistent with the UK reasoning, the German Federal Court has argued that it would otherwise be all too easy to circumvent patent protection by performing respective portions of a patented method in different countries.
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