What Is Indirect Patent Infringement?

Indirect patent infringement is the violation of a patent with or without the knowledge of the infringer. A person or company obtains a patent to prevent other people from using an idea or invention. In some cases, however, another person may not be aware of the patent. Article 26 of the CPC describes the "prohibition of indirect use of the invention" or indirect patent infringement.

There are two types of indirect patent infringement: Infringement by inducement and contributory infringement. According to 35 U.S.C. § 271(b), infringing inducement means that an entity causes a third party to infringe on the patent. The patentee must show that another person actually infringed, that the alleged inducer knew of the patent, then knowingly induced the infringing acts.

Contributory infringement can only occur within the United States. It requires that there is direct infringement and that the accused infringer knew that the invention was patented and that they were infringing on that patent. Further, the invention must have no non-infringing uses. Thus, a higher level of guilt is present in contributory infringement. 

The Patent Act allows patent holders to sue for indirect patent infringement.

Why Is Indirect Patent Infringement Important?

Indirect patent infringement can result in lawsuits and the loss of reputation for companies using patents without authorization. It can also cause damage to the company that spent money and time registering and protecting the patent. In some cases, the reason for this infringement is "willful blindness."  

When infringement is proven by the court, the patent holder is usually entitled to compensation, based on loss of profits and reasonable royalty payment shortfalls. An indirect patent infringement court case can last for years and result in the loss business, reputation, and money.

A company should check whether an invention is already patented and who has the right to use, distribute, sell, and promote it. This is essential to avoid infringement claims and to prevent long-lasting legal debates. 

Reasons to Check for Indirect Patent Infringement

Even if direct infringement cannot be proven, the patent holder can build a case based on the indirect patent infringement theory. The most common method of indirect infringement is when two or more parties support one another in the infringement activity. 

The patent owner must prove that one or another party has directly infringed on the patent, or that two or more companies cooperated to breach the patent protection. The latter is known as divided infringement, and both parties can be held liable and made to pay compensation to the patent owner. 

It is also important to note that the rules related to patent infringement change over time. The Multiparty Patent Infringement laws in the U.S. have undergone several changes in recent years. The Patent Act was first introduced to the legal system in 1952 and has undergone multiple reviews. These include the definition of the cause of action, injunctive relief, and damages or other monetary relief in the case of indirect patent infringement.

Even if the plaintiff in an indirect patent infringement case files a motion to dismiss, the patent owner can modify and resubmit their case again. This can result in a long-lasting suit. 

Reasons Not to Check for Indirect Patent Infringement

If a company or person has obtained a patent with the United States Patent and Trademark Office prior to using an invention, and they can prove that the invention is original and does not use any other person's or company's intellectual property, there may not be a need to check for indirect patent infringement. 

In some industries, however, inventions can be very similar, and the technologies needed might already be patented. In these cases, it is very easy to commit indirect infringement. Consulting with a patent attorney can clarify the issue.

Common Mistakes

Even if an invention is not patented, a company might need a type of technology that is protected in order to use it. In some industries, patent law can be complicated. Not understanding what constitutes indirect patent infringement can cause legal problems and cost companies a lot of money. 

Another common mistake is assuming that a patent has expired automatically after 20 years. It is important to check the status of a patent for extensions or renewal, or whether additional patents have been granted. 

Determining the appropriate level of modification when using, distributing, or selling an invention or technology can be difficult, and is often left to the court's discretion. This is the main reason that companies should consult with experts and learn all they can about the different types and conditions ofpatent infringement.

Frequently Asked Questions

  • How can I avoid indirect patent infringement?

Always check the patent status of the technology or invention. Conduct a search with the United States Patent and Trademark Office. You should also consider obtaining legal advice before using a certain product or distributing technologies. 

  • Who has to prove indirect patent infringement?

The patentee is responsible for providing evidence for the infringement.  

  • Which laws define the conditions of indirect infringement?

The criteria for each type of indirect infringement are detailed in 35 U.S.C. § 271(b). The European Community Patent Convention ("CPC") also recognizes indirect infringement. In both the United States and Europe, indirect infringement always requires knowledge of the infringement.

  • How long can the patentee claim for indirect patent infringement?

Usually, the time period is six years prior to the date the infringement claim was filed. 

  • What is the common outcome of a successful patent infringement claim?

The patentee may be able to obtain monetary relief, attorney fees and court costs, and injunctions. Monetary relief can consist of compensatory damages for lost profits. In the case of willful or deliberate infringement, up to three times the compensatory damages may be rewarded. Injunctions against using or making a patented product may be preliminary during a dispute, then become permanent once a judgement is made.

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