A Handbook of Contemporary Research
Edited by Toshiko Takenka
Chapter 16: Direct and Indirect Patent Infringement
Alison Firth Introduction Patent infringement Proving patent infringement involves two distinct aspects. First, it must be shown that a defendant is using the patented invention, whether a product or a process. This will involve comparison of the defendant’s product or process with the patent claims. Very often, the claimed invention will involve a combination of features. For infringement to occur, all these features need to be present,1 exactly as claimed (‘literal infringement’), in the form of functional equivalents under a doctrine of equivalents,2 or at least in spirit under a theory of purposive construction (‘non-literal infringement’). These tests give a narrow scope of protection compared with, say, copyright infringement3 and its concepts of ‘substantial taking’. Secondly, it must be shown that the defendant is using the invention in a way reserved exclusively to the patentee. Classically,4 the patentee is given the right to ‘make’ (product), ‘use’ (product or process) or ‘vend’ (product or process) the invention in the territory for which the patent is in force. The World Trade Organisation’s agreement on Trade Related aspects of Intellectual Property Rights (WTO TRIPs) now provides an international minimum standard: See, eg, MacLennan v Gilbert Technology Inc. (2004) 41 CPR (4th) 131 (Beaudry J) (Federal Court of Canada). Here the patent claimed a combination of saw teeth and holder. Supply of replacement teeth did not infringe, though some were sold with adaptors to achieve fit with the holder. Section 1358(3) of Russia’s new intellectual law, codified as Part IV...
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