Patent Law and Theory
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Patent Law and Theory

A Handbook of Contemporary Research

Edited by Toshiko Takenka

This major Handbook provides a comprehensive research source for patent protection in three major jurisdictions: the United States, Europe and Japan. Leading patent scholars and practitioners join together to give an innovative comparative analysis both of fundamental issues such as patentability, examination procedure and the scope of patent protection, and current issues such as patent protection for industry standards, computer software and business methods. Keeping in mind the important goal of world harmonization, the contributing authors challenge current systems and propose necessary changes for promoting innovation.
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Chapter 16: Direct and Indirect Patent Infringement

Alison Firth


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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