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Wealth of Ideas, April 2006
Your patent is infringed - but by whom? Patent litigation
can only be successful if you know whom to sue. There
are different types of infringement, and the direct
infringer isn't always the one to sue.
Direct infringement is, of course, making, using, offering
to sell, selling or importing into the US an infringing
product during the life of the patent without a license
from the patent holder.
Indirect patent infringement takes two forms: contributory
infringement or inducement to infringe a patent. Patent law states
that "whoever actively induces infringement of
a patent shall be liable as an infringer" (35 U.S.C.
§ 271(b)). In other words, a company does not have
to infringe a patent directly in order to be sued for
patent infringement.
Induced infringement is that which enables the direct
infringer to practice the patented intention. This type
of infringement can take the form of helping the direct
infringer to assemble the patented product; providing
instructions that detail how to produce the patented
invention; preparing instructions for consumer use;
or licensing plans or a process which enable the licensee
to produce the patented product or process. The test
for induced infringement is whether the inducer has
demonstrated active aiding and abetting of the direct
infringer's infringing activities.
A contributory infringer is one who "offers to
sell or sells within the United States or imports into
the United States a component of a patented machine,
manufacture, combination or composition, or a material
or apparatus for use in practicing a patented process,
constituting a material part of the invention, knowing
the same to be especially made or especially adapted
for use in an infringement of such patent, and not a
staple article of commerce suitable for substantial
noninfringing use" (35 U.S.C. § 271(c)).
Bringing a successful case against a contributory infringer
requires that the plaintiff prove that the defendant
sold, offered to sell, or imported a component of a
patent apparatus, or a material or apparatus for use
in practicing a patented process; that the defendant
had knowledge of the patent; and that the component
in question has no substantial noninfringing use and
constitutes a significant part of the patented invention.
It may seem easier to sue the direct infringer than
to attempt to prove indirect infringement, but often,
the direct infringers are the numerous end users or
consumers who use a product or kit to produce the infringing
product themselves, blissfully unaware of the patent(s)
they infringe in the process. Suing end-users may be
impossible and financially unfeasible, so it may make
more sense to bring a lawsuit against those who knowingly
induce or contribute to the infringement.
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