UK a good bet for Internet patents?

Where a patent claims a system including two computers (for example, a client computer such as a PC running a web browser program and a server), do both have to be in the country of the patent to infringe? Or is it possible to avoid infringement by locating one (e.g. the server) in another country to which the patent does not extend?

In Menashe v. William Hill (15 March 2002), a UK patent of this kind (EP 0625760B) concerning Internet gambling was enforced against an infringer who located their server in the Netherlands Antilles. The question of jurisdiction was taken as a preliminary point. Mr Justice Jacob held that it would be "monstrous" to allow infringers to avoid a patent by locating their server overseas; the patented invention was "used" in the UK even if the whole of the claimed combination (in this case, including the most important element, the server) was not located there. His logic also appears to extend to other types of patented invention, such as telecommunications systems in general. It may even extend to the situation where one component of the system is located outside the jurisdiction of any country (for example, in space or in international waters).

This is believed to be the first time this question has been considered by the Courts in Europe. The same logic should apply to most other countries of the European Union, since it was decided under the common provisions of the Community Patent Convention, which have been adopted into the national laws of EU States. However, although the finding is helpful to patentees, the decision has been appealed, and in view of the controversy over jurisdiction for the Internet, it is possible that the Court of Appeal might overrule Jacob J (a judgement may be expected by May 2003). The Courts of other EU States may also reach a different conclusion.

Until this is known, we advise patentees to continue to claim each novel component of the system separately if possible, as well as in combination.