Recent developments in two patent infringement lawsuits address the ability of companies to claim infringement of their U.S. patents by products made in other countries using the patented material or process and then imported into the U.S. The results will be especially important for companies involved in drug discovery, whose products are information rather than compounds.

A recent decision in the U.S. District Court for the District of Delaware suggests that companies with patents that cover processes used in drug discovery - such as lead compound screening - may not be able to claim infringement by products developed offshore using those processes.

The second case, ongoing in the U.S. District Court for the District of New Jersey, asks whether the data that result from using drug discovery technologies patented in the U.S. can be considered a product under U.S. law and thereby infringe the patents when imported into the U.S.

The latter question may prove crucial to an increasingly data-driven industry.

At issue is an addition that Congress made in 1988 to the coverage of process patents over products made using the patented process. The law, 35 U.S.C., section 271(g), says that anyone who imports into the U.S. "a product which is made by a process patented in the United States shall be liable as an infringer." Thus, an imported product made by - or manufactured using - a process patented in the U.S. can infringe the process patent, even if there is no patent in the country where the process was used.

Kathleen Williams, a partner with Palmer & Dodge LLP in Boston, noted that 271(g) goes on to say that such a product does not infringe the process if it is "materially changed by subsequent processes" or "becomes a trivial and nonessential component of another product."