What intent, whose intent and to what extent? The Knowledge requirement in indirect patent infringement

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In Germany, the UK, the US and the Scandinavian countries there is a distinct difference between direct and indirect (also referred to as contributory) statutory patent infringement. The patent laws that regulate incursions on the exclusive rights of patent holders in these jurisdictions generally distinguish between direct patent infringement on the one hand, which is based on wholly objective criteria, and indirect patent infringement on the other, which in addition to objective criteria also requires the establishment of subjective conditions i.e. some form of intent on the part of the infringer. The latter is commonly referred to as the knowledge requirement.

The basic idea behind indirect infringement is that the patentee can already start legal action before his patent is actually infringed. It is thus potentially a powerful tool for patentees. In respect of the UK, it has been said that the indirect infringement rules extend the patent proprietor’s monopoly to cover the supply of means, relating to an essential element, for putting the invention into effect. Similarly, in Germany the instrument of indirect patent infringement has been described as containing the expansion of the protection of process, use and combination patents such that even offering or supplying means that enable the person thus supplied to make unlawful use of the patented invention is prohibited. Moreover, in i.a. Germany and the UK someone can commit indirect patent infringement without there even being a direct infringement. Indirect patent infringement claims can also result in substantial damages awards. In a case against Microsoft, for instance, the software firm i4i Ltd managed to obtain a damages award of approximately USD 290 million with respect to an indirect patent infringement. It thus seems that indirect patent infringement is a potent tool at the disposal of patentees, which can be used to to stop a problem before it becomes a problem.

At the same time, there are many reasons why an indirect infringement claim may fail. A prominent commentator in the field of patent law in Germany submits that indirect patent infringement under German law is not easy to understand and its application causes problems in practice. One of the reasons why an indirect patent infringement could fail is because the knowledge requirement in an indirect patent infringement claim is not fulfilled. Why this is so, and also under which circumstances the requirement is fulfilled, shall be the focus of this article. In short, we will look at how the knowledge requirement in indirect patent
infringement is construed in the US, the UK, Germany and the Scandinavian countries.

The impetus for the article came from two fairly recent judgments rendered by the US Supreme Court and the England and Wales Court of Appeals addressing indirect patent infringement and the knowledge requirement in particular. We will use these cases as a backdrop to analyse the knowledge requirement in these jurisdictions. We will then briefly look at the decisional practice of the German Federal Supreme Court, by virtue of the pioneering role of this Court in respect of adjudicating indirect patent infringement cases in the EU. The choice of focusing on the Scandinavian countries is mainly due to the authors being domiciled in Sweden and Denmark. Also, we shall establish that the state of case law in Scandinavia on the topic of indirect patent infringement is fairly nascent, and argue that this provides for an ample opportunity for cross-fertilization in
European cross-border jurisprudence. Each jurisdictional section will be concluded by a comment. In the end, we shall attempt at concluding the article with some comparative remarks.
TidsskriftJournal of Intellectual Property Law & Practice
Udgave nummer6
Sider (fra-til)437-448
Antal sider27
StatusUdgivet - 2012

ID: 37368745