Jacqueline Lui, Eagle IP
Hong Kong’s patent law largely reflects the content and style of the UK CPDA, 1978 except for the substantive examination system.
In Hong Kong, indirect infringement is governed by Section 74 of the Patent Ordinance 1997. Section 74 (1) reads:
A patent while it is in force shall also confer on its proprietor the right to prevent all third parties not having his consent from supplying or offering to supply in Hong Kong a person, other than a party entitled to work the patented invention, with means, relating to an essential element of that invention, for putting it into effect, 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 that invention into effect in Hong Kong.
The wording of this Section is similar to Section 60 (2) of the UK Patents Act 1977. From these wordings, three elements are required to constitute indirect infringement:
infringing products should contain essential elements of the disputed invention; direct infringement should have occurred and; the infringer should know or it should be obvious that the essential means are suitable and intended for putting the invention into effect.
A recent case Grimme Maschinenfabrik GmbH & Co.KG and Derek Scott (t/a Scotts Potato Machinery) in UK takes a new approach to the indirect infringement. The key issues in this case are that when there is neither evidence that direct infringement happens by end user nor knowledge that the essential means will be put into effect, the alleged infringer is still liable for indirect infringement.
The Lord Justice Jacob concluded that:
“In short, the knowledge and intention requirements of Art. 26 and Section 60(2)
are satisfied if, at the time of supply or offer of supply, the supplier knows, or it is obvious in the circumstances, that ultimate users will intend to put the invention into effect. That is to be proved on the usual standard of balance of probabilities. It is not enough merely that means are suitable for putting the invention into effect (for that is a separate requirement), but it is likely to be the case where the supplier proposes or recommends or even indicates the possibility of such use in his promotional material”.
This judgment can be read that to establish an indirect infringement, it is not necessary to prove direct infringement by end user actually happen so long as there exist inherent likelihood on the balance of probabilities that such an infringement might be likely to take place now or in the future. The intent to use the devices for patent-infringing uses is obvious to a third party based on certain circumstances in particular when the vendor or supplier had itself proposed such a use. Such changes certainly broaden the scope of protection and make it easier for a patentee to enforce its legitimate rights.
For historical reasons, the UK case precedent also has certain influence on Hong Kong judgments. We will be monitoring the development of indirect infringement in Hong Kong closely.