Liability for infringement of US patents may come about in several different ways, including direct infringement, inducement of infringement and contributory infringement. While the IP laws of protection are clear in each case, foreign manufacturers continue to challenge their application to activities outside the US.
Simply stated, direct infringement entails the sale, or offer to sell, of any patented invention within the US, or import into the US of any patented invention during the term of the patent. Someone who influences or persuades another party to infringe a patent is a also liable as an inducer of infringement. Contributory infringement is the sale, or offer to sell, or import into the US of any 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 patented invention, with knowledge that such activity is intended to infringe a patent. Contributory infringement also means that the component is not a staple article or commodity of commerce suitable for substantial non-infringing use. Similarly, any shipment into the US of component parts of a patented machine which are not staple articles or suitable for substantial non-infringing use and which are subsequently shipped outside of the US for assembly into the patented machine constitutes infringement of the US patent.
Infringement of a US process patent can exists even though the process is practiced outside of the US. This occurs when the item produced by the process is imported into the US. However, a product made abroad by a US patented process will not be considered an infringement of the US patent if the product is materially changed by subsequent processes or the product becomes a trivial and/or nonessential component of another product. It should be noted that it is not the use of a process outside the US that is an infringing act. Rather, the infringing act is the importation, sale or offer to sell, or use of a product in the US made abroad by a US patented process.
|Edward M Weisz|
Cohen Pontani Lieberman & Pavane LLP
551 Fifth Avenue
New York, NY 10176
Tel: +1 212 687 2770
Fax: +1 212 972 5487