The following isn't an Intellectual Property question per se, rather a commercial law question about how UK law views foreign judgements.
I have researched the following as thoroughly as I can, and I'm looking for a legal professional to validate my findings.
I own a software company registered as a Limited company in England / Wales. I have no assets or ties in the USA. I have a new web based software product under development. When launched, it will be hosted outside the US, and the point of sale will be the UK. I have a potential competitor based in the USA (I will refer to them as X). They have several US software patents that are broadly worded enough such that I believe that they could argue that my product infringes them.
X has also applied for several European patents. Three have been rejected as 'obvious'. Several are abandoned, and the ones active ones have received communication from the examination board stating that 'refusal is to be expected'. I am therefore confident that X will not be successful in obtaining any European patents.
Clearly X could not directly take an action regarding a US patent in a British court. Let's suppose that they file a patent infringement lawsuit in the US.
I need to confirm the following:
- If X could prove that I have a client in the US, a US court could consider that my software is 'put into action' in the US, and infringes a US patent. (Let's assume this is fact)
- X could pursue a lawsuit in the US court against my Ltd, but would need to serve me with papers in the UK
- It would, in theory, be possible for them to win a judgement and damages against my Ltd in a US court - I should not respond in any way to a US lawsuit as this could be seen as submitting to the US courts jurisdiction
- The judgement would not be directly enforceable in a UK court, only an action on the judgement by a UK court
- For a UK court to enforce a judgement it would have to be satisfied that the US court has jurisdiction
- For a US court to have jurisdiction my Ltd must have had a presence in the US, as defined by Cape vs Adams 1990
the company had its own fixed place of business (a branch office) in the jurisdiction from which it has carried on its own business for more than a minimal time; and
-the company's business is transacted from that fixed place of business.
- Even if a UK court did establish that the US court had jurisdiction, the "England and Wales court will not enforce judgements for taxes or penalties, such as fines". Therefore a penalty, fine or damages for patent infringement would not be recoverable by X.