A good portion of the practice of most IP law firms is in litigating against parties that infringe on US patents. But it is important to understand that infringement may occur in three different forms: direct infringement, inducement of infringement and contributory infringement.
Direct infringement is easily recognised when a party, without authority, makes, uses, offers to sell, or sells any patented invention within the US or if that party imports into the US any patented invention during the legal term of the patent.
A party can also be liable as an inducer of infringement. In essence, whoever actively induces, through persuasion, infringement of a patent is liable as an infringer. Section 271 (b) makes one liable for inducement of infringement regardless of location, so long as the ultimate infringement takes place in the US.
Contributory infringement, on the other hand, applies to a party who sells, or offers to sell, within the US, a component of a patented machine, manufacture, combination or composition, or a material or apparatus for use in practising a patented process, with the knowledge that it has been especially made or adapted for use in infringing a patent. If the component or composition is not a staple article or commodity of commerce suitable for substantial non-infringing use, the party selling or offering to sell the product is liable as a contributory infringer.
It should be further noted that one who makes a special device constituting the heart of a patented machine and supplies it to others with specific or implied directions for completion of its function is de facto appropriating the benefit of the patented invention and may be held liable for contributory infringement. However, a product which is made by a patented process will not be considered to infringe a patent if the product is materially changed by subsequent processes or becomes a trivial or nonessential component of another product.
Another contributory infringement issue arises when a foreign component manufacturer ships parts into the US for later export into an eventual assembly of a product that infringes a US patent.
In any action for infringement of a process patent, no remedy may be granted for infringement on account of the noncommercial use or retail sale of a product unless there is no adequate remedy for infringement on account of the importation or other use, offer to sell, or sale of that product.
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| Edward M Weisz and Mher Hartoonian |
Katten Muchin Rosenman LLP
575 Madison Avenue
New York, NY 10022-2585
United States
Tel: +1 212 940 8554
Fax: +1 212 940 8671
eweisz@cplplaw.com
mhartoonian@cplplaw.com
www.kattenlaw.com