It is a patent owner’s responsibility to enforce their patent rights. This includes detecting any infringement of their patent and taking appropriate action against infringers.
Most patent owners are aware of direct infringement in which another party makes, sells, uses, or otherwise exploits a patented product or process. In many cases, this type of infringement is easily detected by the patent owner. However many patent owners are not as aware of contributory infringement – otherwise known as ‘indirect infringement’ or ‘infringement by supply’.
Contributory infringement includes actions that contribute (or potentially contribute) to someone else infringing a patent, even if those actions do not directly infringe the patent.
Some examples of contributory infringement include:
• The supply of Component A with instructions to connect it to a generically available Component B, where A+B is a patented product.
• The supply of Component X which has no other reasonable use except for in the Process Y, where Y is a patented process.
• The supply of a kit-of-parts which the end user assembles to produce a patented product.
Why pursue the suppliers?
In cases where the end users of a patented product or process are consumers, it is just not practical for the patent owner to pursue each consumer for individual acts of patent infringement; to do so would be cumbersome, unlikely to recoup damages and very likely to alienate the customer base.
More importantly however, taking action against the end users won’t stop the infringement at the source. Fortunately, section 117 of the Patents Act provides an avenue for the patentee to pursue the supplier of the means of infringement.
Types of Contributory Infringement
The Patent Act seeks to distinguish cases in which the supplier is responsible for the end user’s infringing actions, from those in which the supplier is not. Accordingly, it defines three categories of contributory infringement.
The supply of a product is an infringement if:
• the product’s only reasonable use is an infringing use;
• the product is not a ‘staple commercial product’ and the supplier had reason to believe the person to whom they supplied it would put it to an infringing use; or
• the supply is accompanied by any instruction, inducement or advertisement that suggests an infringing use.
Defensive Measures – Robust Claim Sets
The construction style of the claims can influence how easily such claims can be defended against contributory infringement. A robust claim set will not allow wriggle room for creative suppliers to avoid accusations of contributory infringement.
Therefore, when describing your invention to your Patent Attorney, make sure to also consider the various ways in which your product (or process) may be put together, sold and distributed, used in part or whole and what changes you can foresee for the future.
This information can assist your Patent Attorney in drafting an appropriate set of claims that include:
• independent claims for every product that can be sold, made or distributed;
• claims that are directed to the individual components of a process (especially if a process can be performed by components that are distributed across multiple locations), and
• claims that are directed to only the vital components of the invention (i.e. excluding unnecessary peripherals that may be omitted by a contributory infringer).