Which acts constitute direct patent infringement?
A patentee has the exclusive rights to exploit the invention and authorise others to do so, including:
a. making, hiring, selling or otherwise disposing of a product, offering to do so, using or importing it, or keeping it for the purpose of doing any of those things;
b. using a method or process, or doing any act mentioned in paragraph (a) in respect of a product resulting from such use.
Sec 22 para 1 Austrian Patent Act (PA) prohibits the manufacture, putting into circulation and offering for sale and use of an invention protected by a patent and possessing or importing it for these purposes on a commercial scale in Austria.
Any of these acts is a direct patent infringement.
Furthermore, according to Sec 22 para 2 PA if the patent protects a process, the protection of the patent extends to the products directly obtained by that process. This means that also the putting into circulation, offering for sale, etc of such a product infringes the patent.
According to the art. 42 of the Statute #9,279/96, the patent holder has the right to prevent third parties from manufacturing, using, offering for sale, selling or importing for such purposes without their consent.
Direct infringement includes any act in Canada during the term of the patent and without the patentee’s consent which interferes with ‘the exclusive right, privilege and liberty of making, constructing and using the invention and selling it to others to be used.’ (Patent Act, RSC 1985, c P-4, s. 42). The definition of ‘use’ of an invention has been broadly defined as any interference, in whole or in part, directly or indirectly, in the exclusive rights of a patentee.
According to Article 11 of the China Patent Law, for the patent rights for an invention or a utility model, the direct patent infringement acts comprise, without licensing from the patentee and for manufacturing and business purposes, to manufacture, use, offer to sell, sell or import such patented products, or use the patented method and use, offer to sell, sell or import products obtained directly according to the patented method; for design patent rights, the direct patent infringement acts comprise, without licensing from the patentee and for manufacturing and business purposes, to manufacture, offer to sell, sell or import the design patented products.
Direct infringement is defined as: the manufacture, offering, introduction onto the market, use, and importation, storing or other dealing with a patent protected product for those purposes, in s. 13 of the Act no. 527/1990 Sb., on Inventions and Rationalisation Proposals, as amended. The same applies to a product obtained through a patented process, where identical products are presumed to infringe, if it is highly probable that the product was manufactured through a process which is subject to a patent and the patent owner was, despite reasonable efforts, unable to identify the manufacturing process used, until the opposite is proved.
The presence of the rather vague term “other dealing” means the scope of protection is very wide.
The use of a patented process or its offering is also actionable.
Pursuant to Article L. 613-3 of the Intellectual Property Code (hereinafter the “IPC”), are constitutive of direct patent infringement, the following acts:
- Making, offering, putting on the market or using a product which is the subject matter of the patent, or importing or stocking a product for such purposes;
- Using a process which is the subject matter of the patent or, when the third party knows, or it is obvious in the circumstances, that the use of the process is prohibited without the consent of the owner of the patent, offering the process for use on French territory; and
- Offering, putting on the market or using the product obtained directly by a process which is the subject matter of the patent or importing or stocking for such purposes.
Product claims can be directly infringed by manufacturing, offering, putting on the market or using a product falling within the scope of the patent as well as by importing or possessing said product for the aforementioned purposes. Liability of infringement is independent of actual knowledge of the patent and/or its infringement.
Method claims can be directly infringed by using or offering a method covered by the patent or, if a manufacturing method is concerned, by offering, putting on the market or using a product directly obtained by said patented method as well as by importing or possessing said product for the aforementioned purposes.
Direct patent infringement is the unauthorised manufacture, offering for sale and selling of the product protected by the patent, as well as holding and using it for the same purposes. Further, direct infringement is applying, offering for sale or distributing in the market the method protected by the patent, as well as manufacturing, offering for sale or distributing, holding and using for the same purposes the product the manufacturing of which is the result of the method protected by the patent. Finally as direct infringement is considered the anauthorised productive exploitation of the invention as well as importation of the products protected by the patent.
Infringement of a patent means infringement of the exclusive rights granted by the patent. Under Section 48 of the Patents Act, 1970 the patentee has the exclusive right to prevent any third party, without his consent, from making, using, offering for sale, selling, or importing for those purposes the patented product; or in case of a process patent, the exclusive rights to prevent any third party from using that process and from using, offering for sale, selling, or importing the product obtained directly by the patented process.
Patent infringement in Ireland can be direct or indirect and occurs where certain acts, which the patent proprietor has the exclusive right to control, are carried out without the consent of the proprietor.
Section 40 of the Patents Act sets out the acts which amount to direct infringement. It provides:
“A patent while it is in force shall confer on its proprietor the right to prevent all third parties not having his consent from doing in the State all or any of the things following:
(1) making, offering, putting on the market or using a product which is the subject-matter of the patent, or importing or stocking the product for those purposes;
(2) using a process which is the subject-matter of the patent, or, when the third party knows, or it is obvious to a reasonable person in the circumstances, that the use of the process is prohibited without the consent of the proprietor of the patent, offering the process for use in the State;
(3) offering, putting on the market, using or importing, or stocking for those purposes, the product obtained directly by a process which is the subject-matter of the patent.”
The patentee is entitled to exclude any person from exploiting the patented invention, either in the manner defined in the claims or in a similar manner which, in light of what is defined in the claims, constitutes the essence of the patented invention. ‘Exploitation’ is defined under the Patents Act to include manufacture, use, offer for sale, sale and importation for one of said acts. In addition, courts have held that export of patented goods constitutes infringement. Importation in transit to the areas of the Palestinian Authority was also held to be infringing.
The Patents Act further provides that if the invention is a process, then the patent shall apply to the ‘direct product’ of the process. Importation and marketing of products made by the patented process abroad also constitute infringement. Complex questions can arise as to when a product is to be regarded as a ‘direct product’ of the patented process and whether additional processing of the product may take it outside the ambit of the claims.
Under Article 66 Italian IP Code, every act that involves putting the patented invention into effect and earning a profit or commercial advantage out of it.
A good way of paraphrasing this rather aseptic, catch-all provision is looking at direct infringement as typically consisting of manufacturing, importing, exporting, marketing and selling or offering for sale the allegedly infringing goods or services, as well as of any other activity susceptible of securing market shares to the infringer, including advertising and promotion activities.
An act of working a patented invention in the course of business without a license from the patentee constitutes direct infringement. The Japanese Patent Act stipulates the types of acts which constitute the act of working a patented invention with respect to each type of invention. The stipulated act of working an invention of a product is the act of producing, using, assigning, etc., exporting or importing, or offering to assign, etc. the product. Further, the stipulated act of working an invention of a process is the act of using the process. Furthermore, the stipulated acts of working an invention of a process for producing a product are the act of using the process and the act of using, assigning, etc. exporting or importing, or offering to assign, etc. a product produced by the process.
Pursuant to section 3 of the Patents Act the following acts constitute direct patent infringement:
a) making, offering, bringing into trade or using a product which is protected by the patent, or importing or being in possession of the product with such intent;
b) using or offering to use a process protected by the patent or, if he knows or it is obvious under the circumstances that the process cannot be used without the patentee’s consent, offering it for use in the country;
c) offering, bringing into trade or using a product which is produced by utilization of a patented process, or importing or possessing products with such intent.
According to Article 66 of the Polish Industrial Property Law, the patent holder shall have the right to prevent any third party not having his consent from exploiting his invention for profit or for professional purposes by:
(i) manufacturing, using, offering, putting on the market a product that is the subject matter of the invention, or importing the product for such purposes, or
(ii) employing a process that is the subject matter of the invention, as well as using, offering, putting on the market or importing for such purposes the product directly obtained by that process.
VdA: The Industrial Property Code (“IPC”) provides that “the patent confers upon the holder the exclusive right to exploit the invention anywhere in the Portuguese territory”, so the patent holder is entitled to prevent any unauthorized third parties from carrying out any activity which may be considered as an “exploitation of the invention”, notably the manufacture, offer, store, market or use of the patented product, or the importation or possession thereof, for any of the mentioned purposes, without his content.
Pursuant to Article 1358 of the RUCC, the following unauthorised acts are prohibited:
- importing, manufacturing, use, offer for sale, selling, other introduction into civil turnover, or storing for these purposes of an infringing product;
- providing actions mentioned above with respect to a product obtained directly by means of a patented process;
- doing the same with respect to a device during the functioning (running) of which in accordance with its intended use the patented process is automatically effectuated;
- effectuation of a patented product.
A person is liable for direct or primary infringement of the patented product or process if he does in Singapore any of the prohibited acts stipulated in section 66(1) of the PA without the consent of the patentee, unless the defences in section 66(2) of the PA apply.
Under section 66(1)(a) of the PA, prohibited acts in relation to a patented product are:
(a) making the product;
(b) disposing of the product;
(c) offering to dispose of the product;
(d) using the product;
(e) importing the product; or
(f) having the product whether for disposal or otherwise.
Under section 66(1)(b) and (c) of the PA, prohibited acts in relation to a patented process are:
(a) using the process;
(b) offering the process for use in Singapore when he knows, or it is obvious to a reasonable person in the circumstances that its use without the patentee’s consent would be an infringement of the patent;
(c) disposing of any product obtained directly by means of the process;
(d) offering to dispose of any product obtained directly by means of the process;
(e) using any product obtained directly by means of the process;
(f) importing any product obtained directly by means of the process; or
(g) keeping any product obtained directly by means of the process, whether for disposal or otherwise.
A person who does any of the prohibited acts stated above is not liable for infringement if the defences in section 66(2) of the PA apply. Defences to patent infringement are addressed in greater detail in Question 7 below.
Under the Korean patent law, the act of direct patent infringement includes: (i) in case of a device/product patent claim, manufacture, use, sale, lease, import, and offer (including exhibits) for sale or lease of the patented invention; or (ii) in case of a process patent claim, the use of the patented process and use, sale, lease, import and offer (including exhibits) for sale or lease of a product made by the patented process.
Direct patent infringement occurs when anyone:
- Manufactures, offers, places on the market, or uses a product protected by a patent or a product manufactured by protected process patent, or imports or possesses such a product for any such use,
- uses a process which is protected by the patent or, where he or she knows, or ought to know, that the process may not be used without the consent of the owner, offers the process for use in Sweden.
Assessing whether a patent is infringed essentially involves two steps: Construction of the patent claim and comparison of the construed claim with the allegedly infringing product. If this assessment finds that the product is infringing, any unauthorized commercial use thereof constitutes a direct infringement, including manufacturing, offering and placing on the market.
Taiwan’s Patent Act stipulates that anyone who manufactures, offers to sell, sells, uses, or imports patented goods will be liable for infringement. The provision regulates acts of direct infringement, such that manufacturing, offering to sell, selling, using, and or importing patented goods will be deemed direct patent infringement.
The exclusive rights of a patentee are set out in Section 36 of the Patent Act, B.E. 2522 (1979), as amended (“Patent Act”), which include:
(a) in the case of product patents, the exclusive rights to produce, use, sell, possess for sale, offer for sale, or import into Thailand the patented products;
(b) in the case of process patents, the exclusive rights to use the patented process, produce, use, sell, possess for sale, offer for sale, or import into Thailand products made by the application of the patented process.
The conduct of any of the foregoing actions without the consent of the patentee constitutes direct patent infringement. Both criminal and civil remedies are available for patent infringement and different enforcement tracks may be followed.
The following actions are considered patent infringement under Turkish Law (Article 141, IP Law):
Imitating an invention by producing the product in whole or in part, without the patent holder’s consent.
Where the person knows (or should know) that such products are imitations in whole or in part, but is regardless involved in:
- Selling, distributing, or commercializing products in any other way (as well as importing for such purposes).
- Possessing products for commercial purposes.
- Using by applying products which were manufactured as a result of an infringement.
- Offering to engage in an agreement with respect to the products.
Without the patent holder’s consent:
- Using the patented process.
- Where the person concerned knows (or should know) that the method is being used without consent, but is regardless involved in:
- Selling, distributing, or commercializing the product directly obtained through the patented process in any other way (as well as importing for such purposes).
- Possessing the product directly obtained through the patented process for commercial purposes; or
- Using by applying products the product directly obtained through the patented process
- Offering to engage in an agreement with respect to the products.
Entrenching upon the right of another to file the patent or utility model application.
Extending the scope of the rights granted by the patent holder based on a license agreement or granted by compulsory license or transferring such rights to third persons without permission.
Subject to the defences/exceptions outlined in the Patents Act, a patent is directly infringed under Section 60(1) Patents Act if, while the patent is in force, a person does any of the following acts in the United Kingdom in relation to the invention, without the consent of the patentee:
(a) where the invention is a product, the person makes, disposes of, offers to dispose of, uses or imports the product or keeps it whether for disposal or otherwise;
(b) where the invention is a process, the person uses the process or offers it for use in the United Kingdom when the person knows, or it is obvious to a reasonable person in the circumstances, that its use there without the consent of the proprietor would be an infringement of the patent; or
(c) where the invention is a process, the person disposes of, offers to dispose of, uses or imports any product obtained directly by means of that process or keeps any such product whether for disposal or otherwise.
To decide whether a patent has been directly infringed, it is necessary for the court to construe the claims of the patent and determine whether the alleged infringing act falls within the scope of the claims of the patent as so construed.
Direct infringement occurs when a single actor or party performs all of the actions needed to establish infringement of a particular claim. Those acts can include making, using, offering for sale, or selling the invention protected by the patent in the United States, or importing the invention protected by the patent into the United States.
Direct infringement may also be committed by more than one actor or party, but only when that party directs or controls another’s performance, such as when there is a principal-agent relationship, in a contractual arrangement, or in a joint enterprise.
Under Article 124 and 126 of the IP Law, the following unauthorized acts constitute patent infringement:
- Manufacturing a patented product;
- Applying a patented process;
- Placing orders, assigning or hiring others to manufacture the patented goods;
- Exploiting utilities of a patented product or product manufactured under a patented process;
- Circulating, advertising, offering or stocking for circulation the above-mentioned products;
- Importing the above-mentioned products.