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© 2002, Gallagher & Dawsey Co., LPA
December 2002
When inventors worry about infringement of their patents, most
envision someone knocking off and selling exact copies of their
invention, or perhaps making small changes in their inventions that
are close enough to qualify as infringement. For a device that
constitutes a combination of elements, this would normally be a device
hat includes all the elements. But consider another "infringement"
scenario. A device that has less than the elements of a patented
device is normally noninfringing. Suppose a copier makes a device that
is intentionally less than patented knowing that his device will have
other elements added that will make it into an infringing device? For
example, your patented radio is manufactured with one component
missing, that a user can easily buy and add. Is there liability?
Often yes, thanks to the doctrine of contributory infringement. First
developed in the courts over 130 years ago, this doctrine is now
codified in the patent statute, at 35 U. S. S 271(c). The section
provides:
"Whoever 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 in an infringement of such patent, and not a
staple article or commodity of commerce suitable for substantial
noninfringng use, shall be liable as a contributory infringer."
First consider an inventor's status if this doctrine did not exist. An
inventor would not be able to bring an infringement action against a
manufacturer of less than his or her invention, only against the end
users who added the additional elements necessary to complete the
infringement. These end users might be potentially liable only for a
single infringement, and could be difficult to find, prosecute, and
collect against. An inventor would be left chasing the products of
infringement, and would never be able to go after the real source of
the problem. It would be difficult, if not impossible; to ever enforce
patents for combination devices, and the whole of our system of patent
law would be threatened.
Fortunately, the doctrine of contributory infringement prevents such
loophole exploitation. The law requires three factors to make a case
for contributory infringement; (1) a sale, (2) of a material component
of a patented invention, and (3) knowledge that such component has
been especially made for use in the infringement of a patented
invention.
The first two factors are generally self-evident. Difficult issues of
proof may arise on the question of knowledge, although courts may
infer knowledge of the later illegal use of an item by indirect means,
including patterns of sales. The law also makes an exception for
"staples of commerce" that have substantial non-infringing use. In
other words, if a common component had multiple possible uses besides
use as part of an infringing device, its manufacture or importation
would not be contributory infringement. This also can raise difficult
issues of proof, as infringers will always attempt to characterize
their components under such an exemption.
Contributory infringement under 35 U.S.C. S271(c) only covers activity
by a third person that causes another to directly infringe a patent.
Without a direct infringement, there can be no contributory
infringement, but it is not necessary to bring actions against both
the direct and contributory infringers, only that the direct
infringement must have occurred.
In a related area, 35 U.S.C. 271(b) provides remedies for the
inducement of infringement, which is the act of instructing,
directing, or advising a third party as to how to infringe a patent.
For example, one cannot supply a kit of components, with instructions
and the intent that the end users use it for assembly of an infringing
product. As with contributory infringement, the activity induced must
be a direct infringement. Also, the inducers must have more than
knowledge of planned infringement, they must actively intend that
result.
While the doctrine of contributory infringement has its roots squarely
in the 19th century, and was initially developed to prevent the
infringement of machines, the electronic era has added a number of
aspects to this law, especially in its application to copyrighted
software. In fact, developments in copyright law in this area are
likely to eventually begin to effect patent laws and doctrines. For
example, one can commonly find access codes and software serial
numbers posted on the web, which allow unauthorized users to use or
copy protected software. Posting such material can make one a
contributory infringer. The doctrine of contributory infringement can
reach farther than those posting or using such information. Web hosts,
who support such sites, or even those who provide server space for
such activity, may be named as contributory infringers.
Despite limitations, the doctrine of contributory infringement can be
a powerful tool to help inventors and other IP creators protect their
property. |
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