Patent Novelty and the Presumption Against Extraterritoriality

In 2010 the Supreme Court decided Morrison v. National Australian Bank, reaffirming the strict application of the presumption against extraterritoriality. Roughly a year later, Congress passed the America Invents Act, making significant changes to the U.S. patent system, including changes to the patent novelty requirements of 35 U.S.C. § 102. This article applies the presumption against extraterritoriality to patent novelty, and discusses a problematic trend developing at the Federal Circuit. The Supreme Court’s failure to predictably enforce the presumption against extraterritoriality has led to confusion over the proper role contextual sources like legislative history and administrative interpretations play when applying the presumption. To combat this confusion, this article analyzes the current presumption against extraterritoriality, how the Federal Circuit applies the presumption since Morrison, and how the presumption affects patent novelty.