Do the concepts of indirect patent infringement or contributory infringement exist? If, so what are the elements of such forms of infringement?
Australian patent law has a statutory form of contributory liability for unauthorised supply of a product. Generally such liability will arise where a product is only reasonably capable of an infringing use, where the product is not a staple commercial product and the supplier had reason to believe that the person would put it to an infringing use; and where the supplier provides instructions or inducement for the use of the product in an infringing way.
Liability for patent infringement may also arise under tortious principles such as joint tortfeasorship.
Indirect patent infringement
Indirect patent infringement is prohibits the offer for sale or supply of means relating to an essential element of the invention to persons not authorised to use the invention, if it is known or if it is obvious from the circumstances that these means are suitable and intended to be used in the use on a commercial scale of the invention (Sec 22 para 3-5 PA).
Although this provision was introduced over 15 years ago, there is no Austrian case law on it. However, since it was based on Art 26 of the European Community Patent Convention (CPC) and especially Sec 10 German Patent Act, German case law may be used for interpretation.
Under Austrian civil law, the general principle applies that assistants and instigators are equally liable as the direct infringer (Sec 1301 Austrian General Civil Code). This also applies in patent law and is independent of the provisions on indirect infringement. Assistant is a person who consciously supports the acts of infringement. Instigator is a person who designates or convinces another person to commit an act of infringement. Contrary to the direct offender both the assistants and instigators must act with intent, which also has to be proven in court.
However, if intent is proven, the other requirements of indirect infringement (e.g. essential elements) need not be met.
Since the assistants and instigators are treated exactly like the direct offender once their liability is established, the same remedies may be invoked against them.
According to the art. 185 of the Statute #9,279/96, parts of products are protected, whenever those parts only suit the patented product or only have the purpose to perform the patented method. Under art. 42, paragraph 1, the patentee is further guaranteed the right to prevent third parties from contributing to the infringing acts.
Indirect infringement (referred to as inducing infringement in Canada) occurs where a person induces or procures another person to infringe a patent. There are three elements required for a defendant to be found liable for indirect infringement:
a) A direct infringer has infringed the patent;
b) The completed act of direct infringement was influenced by the alleged inducer, such that without the influence, the direct infringement would not have otherwise occurred; and
c) The alleged inducer knowingly exercised this influence, in that they knew that the influence would result in the direct infringer engaging in the activity that is ultimately found to be infringing.
There is no recognized cause of action of “contributory infringement” in Canada.
In China, the law does clearly define the concept of contributory infringement but not the concept of indirect patent infringement. In particular, according to Article 21 of Interpretations of the Supreme People’s Court Concerning Certain Issues on Application of Law for Trial of Cases on Disputes over Patent Infringement (II) (hereinafter referred to as “Interpretations (II)”), in the following two situations the infringer’s act would constitute contributory infringement: 1. where a person, who is aware that the relevant products are materials, equipment, parts, intermediate etc. used specifically for implementation of the patent, provides such products to others for implementation of patent infringement for manufacturing and business purpose without approval by the patentee, and; 2. where a person, who is aware that the relevant product or method is patented, actively induces others to implement patent infringement for manufacturing and business purposes without approval of the patentee.
Indirect infringement is defined in s. 13a of the Act on Inventions as follows:
(1) No one may, without the permission of the patent owner, supply or offer to supply to another person, other than a person entitled to utilise a patented invention, the means relating to a substantial element of the invention and serving in that respect for its realisation, if with regards to circumstances it is clear that the means are capable of realisation of the patented invention and are intended for it.
(2) Subsection 1 will not apply if the means are products which are common on the market, unless the third party influenced their recipient to engage in conduct prohibited by s. 13.
(3) Persons carrying out activities under s. 18 letters c) to e) are not regarded as persons entitled to use the invention, within the meaning of subsection 1.
Article L. 613-4 of the IPC defines contributory infringement .
Save consent by the patentee, it is prohibited to supply, or offer to supply, on the French territory, to a person other than a person entitled to work the patented invention, the means of implementing the invention in France with respect to an essential element thereof where the third party knows, or it is obvious from the circumstances, that such means are suited and intended for putting the invention into effect.
However, this prohibition shall not apply where the means of implementation are staple commercial articles, except where the third party induces the person supplied to commit infringement acts.
The concept of indirect patent infringement is provided for under German law. Indirect infringement is given when means which are essential for the implementation of the invention are offered or supplied to a third party and the supplier is aware or it was obvious from the circumstances that such means are suitable and intended for implementing the invention.
The Greek law has no provisions concerning contributory infringement. Depending on the circumstances, general legal provisions may be applicable.
The Patents Act, 1970 does not specifically provide for contributory/indirect infringement and/or Divided Infringement.
Yes. Indirect infringement arises where a third party, without the consent of the patent proprietor, supplies or offers to supply a person (other than someone entitled to exploit the invention) in the State with means, relating to an essential element of that invention, for putting the invention into effect in the State, when the third party knows or it is obvious in the circumstances to a reasonable person, that the said means are suitable and intended for putting the invention into effect (section 41, Patents Act).
Where the means supplied are staple commercial products, the patent proprietor must show that the supplier induced the person supplied to infringe the patent.
The Patents Act does not have any provisions relating to indirect infringement. Nevertheless, the Supreme Court incorporated both doctrines of induced patent infringement and contributory patent infringement into Israeli jurisprudence.
Under the doctrine of induced patent infringement, the defendant will be found liable if it joined in a common design with the direct infringer or induced it to infringe the patent.
Under the doctrine of contributory patent infringement, the defendant will be found liable if the following three conditions are met: (a) the defendant supplied a component of a patented product, or material or apparatus for use in practising a patented process, constituting a material part of the invention; (b) the defendant knew or should have known that the article supplied was especially made or adapted for use in an infringement of the patent; and (c) the article supplied is not a staple commercial product suitable for substantial noninfringing use.
The exact scope of the contributory patent infringement doctrine is yet to be determined. Among others, it is debatable whether constructive knowledge by the defendant is indeed sufficient, whether actual direct infringement must be established and when proof of actual substantial non-infringing of the component of the patented product would be sufficient to avoid infringement.
Italian case law has since long developed the concept of indirect or “contributory” infringement. A finding of contributory infringement is subject to two conditions. One, the supply of means that are essential to put the patented invention into effect. Two, the contributory infringer is aware, or should be aware using normal diligence, that those means are intended to be used for purposes of putting the invention into effect.
The contributory infringement doctrine was made the object of statutory provisions in 2016, as part of the alignment of the Italian law system with the laws that ratified the Unified Patent Court Agreement.
The newly introduced provisions (Art. 66 Italian IP Code, paragraphs 2 bis, ter and quater) provide further guidance for the application of the contributory infringement doctrine. In particular:
- the supply of necessary means amounts to contributory infringement if intended for putting the invention into effect “in a country where the invention enjoys patent protection”. While this provision is still awaiting guidance from the case law, its literal meaning is that contributory infringement applies irrespective of whether the downstream direct infringement takes place or is intended to take place in Italy or in another country, as long as it is a country where the invention enjoys patent protection
- the supply of means necessary to put the invention into effect does not amount to contributory infringement if the supplied means are staple commercial products, unless the supplying party has actively induced the supplied person or entity to carry out infringing conducts
- the supply of means necessary for putting the invention into effect amounts to contributory infringement even when directed to persons or entities shielded by a patent exemption (such as the experimental exemption or Bolar exemption).
Yes, provisions concerning indirect infringement exist. The Japanese Patent Act stipulates the following types of acts as acts which constitute indirect infringement: (i) as for an invention of a product or process, the act of producing, assigning, etc., importing, or offering to assign, etc., in the course of business, a product that is used only for the production of the above product or for the use of the above process; (ii) as for an invention of a product or process, the act of producing, assigning, etc. importing, or offering to assign, etc., in the course of business, any article (excluding those widely distributed in Japan) that is used for the production of the above product or for the use of the above process and that is indispensable for the resolution of the problem by the above invention while being aware that such invention is a patented invention and that the above article is used in the working of the invention; and (iii) as for an invention of a product or process for producing a product, the act of possessing the product or a product produced by the process for the purpose of assigning, etc. or exporting it in the course of business.
The concepts of indirect patent infringement and contributory infringement exist under Norwegian Law.
Section 3, second paragraph, of the Patents Act governs indirect infringement. The provision forbids to ‘offer or deliver’ means for exercising the invention.
’Means’ are typically materials or parts which give the recipient the possibility of producing a patented product or exercising a patented method.
The means must regard something ‘essential in the invention’.
Section 3 makes an exception for staple articles. Offer for sales of such articles will only qualify as infringement if the offerer seeks to induce the recipient to commit patent infringement.
Polish law does not contain any provisions which would expressly address the issue of indirect (contributory) infringement. A relevant amendment to the IPL introducing the concept of the indirect infringement was discussed at the beginning of 2018 but has been relinquished recently without any explanation. Therefore, presently this remains a doctrinal concept inferred from general principles of civil law, i.e. torts (delicts). Relevant provision of the civil law gives ground to the liability of three categories of perpetrators: accessories, instigators and persons who knowingly took advantage of the damage caused to the injured entity.
Being a doctrinal concept it is obviously controversial and specific prerequisites for a contributory infringement remain grey area. However, it is usually assumed that a wilful act is required for this type of liability to occur. It may consist in encouraging the direct infringer to engage in an unlawful use of the invention or assisting him in implementing the invention with the knowledge that the product or device supplied may serve to make use of the patent. The fault may also be attributed to the indirect infringer when there were reasonable reasons to believe that the product or device could be acquired to implement the patented invention.
Furthermore, both the possibility of employing general principles of tort law as a legal basis of the contributory infringement of intellectual property rights but also the scope of claims available against the contributory infringer is a subject of differing views. Sometimes it is accepted that all claims typical for intellectual property protection may be pursued (in particular injunctive reliefs) but recently the Supreme Court ruling in a copyright case diverted towards a narrow scope of claims – i.e. only for damages as regulated in the general civil law provisions.
Yes. The patent holder has the right to prevent any third parties that supplies or offers to supply a person who is not entitled to exploit the patented invention with any of the means, relating to an essential element of the invention, for putting the invention into effect, when he or she knows or should know that those means are suitable for putting and intended to put the invention into effect (with the same exception of Article 26(2) of the Agreement on a Unified Patent Court).
There is no general concept of contributory patent infringement in Russia. Some forms of indirect patent infringement are: protection of product obtained by patented process, protection on device which automatically performs patent process or protection of product intended to be used by patented indication.
The concepts of indirect or secondary patent infringement exist in Singapore, and a party’s indirect or secondary liability is governed by the common law position on joint tortfeasorship. Unlike the English position in which contributory infringement is statutorily enshrined under section 60(2) of the UK Patents Act 1977, indirect or secondary patent infringement is not legislatively provided for in Singapore.
A person may be liable as a joint tortfeasor in two ways.
The first is where the party conspires with the primary party or induces the commission of the infringement. The party must be shown to have actually induced the infringement, or there is evidence of an agreement or understanding to carry out the infringing acts. The mere assistance of infringement by selling or offering to sell or dispose an article with knowledge that it is going to be used to infringe is insufficient to constitute a conspiracy to infringe.
The second is where two or more parties join in a common design pursuant to which the infringing acts were carried out. In establishing the existence of a common design, it is unnecessary for the parties to have mapped out a plan. Rather, tacit agreement suffices.
Liability for indirect infringement arises when a person makes, sells, leases, imports, offers (including exhibits) for sale or leases an article that is used solely for making a patented invention. The Korean Patent Act (“KPA”) does not provide for a cause of action based on induced infringement. Rather, inducement may be interpreted under a tort-based theory in civil laws.
Yes, a patentee can prevent third parties from exploiting the invention by offering or supplying means to use the invention, if the patent is exploited in Sweden; these relate to an essential element of the invention; the person offering or supplying the means knows, or it is obvious, that these means are suited and intended for use in carrying out the inventions. If the means are staple goods, the supplier must also have sought to influence the recipient to undertake the infringing act.
Any person, who abets, aids, facilitates or otherwise participates in patent infringement commits a contributory infringement. In general, contributory patent infringement requires that the there was a direct infringement by a third party, a contributory action by the contributory infringer, a causal link between the contributory action and the direct infringement, and that the contributory infringement was unlawful.
Taiwan’s Patent Act does not have explicit provisions over indirect/contributory infringement. Theories of indirect/contributory infringement could be found in Taiwan’s Civil Code. In practice, patent owners take action against indirect infringers by resorting to the joint tort theory of the Civil Code, alleging that the indirect infringers are joint tortfeasors with the direct infringers under the Civil Code. The elements of indirect infringement under the Civil Code include: (a) the accused person has induced others to commit direct infringement or facilitated or provided assistance to those who conduct direct infringement, (b) the accused person has a subjective intention to conduct the abovementioned acts, and (c) the direct infringer is found to be liable for patent infringement.
The Patent Act and precedent cases in Thailand are silent on indirect or contributory infringement.
However, in the case of criminal proceedings of patent infringement wherein patent infringement is a criminal offence, the Penal Code, B.E. 2499 (1956) (“Penal Code”) is expected to assist.
Specifically, Section 84 of the Penal Code defines an instigator as “whoever, whether by instigation, compulsion, threat, employment, encouragement or otherwise, causes another person to commit any offence.” A patentee (plaintiff) in a criminal proceeding must prove that the alleged infringer possessed the requisite intent to commit the criminal offence of patent infringement.
The indirect patent infringement is not explicitly set forth under the infringement rules in the IP Law. Instead, according to Article 86 of IP Law, The patentee has a right to prevent the factors or equipment regarding a part which makes the practice of the invention subject to a patent possible and constitutes the basis of the invention from being released third parties to parties who do not have an authority to use the invention subject to a patent.
To apply this article, the third party must know:
- such elements and means are sufficient to apply the invention.
- such elements and means shall be used for infringement purposes.
- these issues should be reasonably clear.
The concept of indirect patent infringement exists under UK law.
Subsection 60(2) Patents Act relevantly provides:
Subject to the following provisions of this section, a person (other than the proprietor of the patent) also infringes a patent for an invention if, while the patent is in force and without the consent of the proprietor, he supplies or offers to supply in the United Kingdom a person other than a licensee or other person entitled to work the invention with any of the means, relating to an essential element of the invention, for putting the invention into effect when he knows, or it is obvious to a reasonable person in the circumstances, that those means are suitable for putting, and are intended to put, the invention into effect in the United Kingdom.
This infringement is ‘indirect’ in the sense that said act of supplying or offering to supply the relevant means relating to an essential element of the invention would not fall within the scope of the claims of patent so as to constitute ‘direct’ infringement, but is nevertheless deemed to ‘indirectly’ infringe the patent.
This subsection is qualified by subsection 60(3), which provides:
Subsection (2) above shall not apply to the supply or offer of a staple commercial product unless the supply or the offer is made for the purpose of inducing the person supplied or, as the case may be, the person to whom the offer is made to do an act which constitutes an infringement of the patent by virtue of subsection (1) above.
A ‘staple commercial product’ is one which is supplied commercially for a variety of uses.
A party may also be liable as a joint tortfeasor for acts of patent infringement committed by another party (the primary tortfeasor), if that party assisted in the commission of the act by the primary tortfeasor, and acted pursuant to a common design. Such cases will generally turn heavily on the particular facts and circumstances of the case, in particular whether (and the extent to which) the first party can be said to have assisted with, procured or encouraged the infringing act.
Yes, indirect infringement may take the form of either inducement to infringe or contributory infringement. A party may be liable for inducing infringement if they knowingly induce another to directly infringe a patent. For example, providing instructions on how to use a product which, when performed, will infringe the patent can be an element of inducement.
A party may be liable for contributory infringement if they provide a component or material especially made or adapted to be used in an infringing manner. For example, if a party provides a part that is not infringing by itself but is especially made to be combined with a different part to form an infringing device, that can be an element of contributory infringement.
It is important to note that, for both inducement and contributory infringement, an underlying instance of direct infringement by someone is a prerequisite.
Vietnam’s current laws do not provide for contributory infringement and/or inducement infringement. Thus, inducement or contribution would not amount to patent infringement.