This presents difficulties for establishing whether a patented computer system is infringed when such a system is implemented across multiple jurisdictions.

As discussed in detail in our review of the approach taken by the courts in England & Wales up to 2017, infringement of a UK patent depends on whether the invention is “used” or “put into effect” in the UK. The particular wording of the claim may affect determination of who the user is. For example, for a claim to a method of operating a server, the user was deemed to be the server farm operator so that the method was not considered used in the UK when the server was abroad, while for a claim to a “gaming system”, the user was deemed to be the end user playing the game so that the system could be said to be used in the UK, even if the system involves an offshore server.

Illumina Inc v Premaitha Health plc

In the case of Illumina v Premaitha, Illumina was the exclusive licensee of a patent claiming a non-invasive method of detecting and testing foetal DNA. The claims were relatively generic; requiring “a detection method … detecting the presence of a nucleic acid of foetal origin in the sample”, without specifying the particular steps of the method.

Premaitha conducted similar tests, referred to as the IONA test (detailed in paragraph 500 of the judgment), in which the initial DNA preparation and sequencing is conducted in the UK, but then the raw data is sent to Taiwan for the actual analysis. The results are then returned to the UK. Premaitha contended that the patent was not infringed since some of the steps are conducted in Taiwan.

The court held that the user of the IONA test is a laboratory in the UK. It is immaterial that some of the method steps take place in Taiwan, since the result is sent back to the UK for use in the UK. The court therefore found that the IONA test was used or put into effect in the UK, and hence the patent was infringed.

Practical tips for drafting claims

It is important when drafting a patent application to consider whether any of the steps involved in the invention could be implemented on an offshore server, and if so whether those steps are necessary for distinguishing the invention from the prior art.

It is useful to consider whether single-actor or multi-actor claims would be most appropriate for the invention.

A single-actor claim can be used to protect part of a system (for example, a server or client device only), and generally offer broader protection than a multi-actor claim, as single-actor claims require fewer limitations to be present to prove infringement. By including a single-actor claim for one part of the system, even if the other part of the system is implemented in a different territory, that does not affect the location of use for the claimed part of the system.

It is important to consider where the inventive features actually lie within the system. For example, if the inventive features are only present in the server, a single-actor claim for the server can be provided (for example, “performing X”, “transmitting Y”), but there may be little inventive in the client device that could support an independent claim for the client device alone, so it is not always possible to obtain single-actor claims for each part of the system.

If the bulk of the invention lies in the processing at the server, then to increase the likelihood that infringement is deemed to occur in the UK, even if the server is in another country, it can be useful to also include a multi-actor claim to the system (for example, a system comprising a server and a client device). It could then be argued that the system is used in the UK, even if the server is located outside of the UK.

In short

To increase the likelihood of protection against infringers who offload steps to offshore servers, consider including both single-actor claims and multi-actor claims. For example, a patent could include, if possible, claims to:

1. the server;
2. the client device; and
3. the system comprising both devices.

We strongly recommend that you seek professional advice from a patent attorney to ensure that such claims are drafted correctly.