A New Pitfall in Patenting Nanomaterial Manufacturing: The Need for Reform
Volume 3, Issue 4
J. Steven Rutt, Foley & Lardner, L.L.P.
Leon Radomsky, Foley & Lardner, L.L.P.
Stephen B. Maebius, Foley & Lardner, L.L.P.
A recent Federal Circuit holding in Zoltek v. United States exposes an important gap in the U.S.
legislative scheme for patent infringement related to international outsourcing and federal contracting.
The gap, arising because of highly formalistic reasoning from the Federal Circuit, will impact U.S.
nanomaterials companies among others. The gap arises when the patent owner has a method of making
patent, and the method of making is done outside the U.S. as part of federal contracting. Congress
previously had amended the patent statute to provide 35 U.S.C. § 271(g) to help patent holders, but in
doing so had failed to clearly articulate whether 271(g) should apply to infringement under federal
contracts. In a divided opinion, the Federal Circuit rejected attempts to close the gap by a constitutional
takings analysis. Hence, reform of the legislative scheme is urgently needed.
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