An International Guide to
Patent Case Management for Judges

12.5.6 Indirect infringement

Patent protection can extend even beyond the areas discussed above. Patent owners also have the right to prevent third parties from delivering or offering to deliver to persons not authorized to exploit it, without the owner’s consent, means of exploiting a patented invention relating to an essential element thereof, knowing, or under circumstances making it obvious, that those means can effectively serve, and are intended to serve, that purpose. This is what is known as indirect or contributory infringement.⁶⁵

Three requirements must be met for an act to be considered indirect infringement:

1. 1. the alleged infringer must have provided means necessary to put an essential element of the patent into practice;
2. 2. the person acquiring those means must not be legally authorized to exploit the patent; and
3. 3. the infringer must have known, or circumstances must have made it obvious, that the means provided would permit, and were intended to permit, the invention to be put into practice by someone not authorized to do so.

The circumstances prevailing in the case can be assessed by analyzing various factors. Such an analysis might reveal, for example, that the means offered had no other use than for infringement; that a given volume of sales could be generated using the means offered to work the invention; or that information or instructions were provided to the defendant on how to operate the invention and any other data that may prove relevant in practice.

Such means need not be intended for use in the same country from which they are offered for their provision to constitute indirect infringement.

In some cases, the provision of such means may not provide a sufficient basis for a finding that indirect infringement has been committed. One such case is where the means provided consist of products purchasable for purposes other than patent infringement – unless the party providing them induces the receiving party to use them for such infringement.⁶⁶ Where such products are currently available on the market it will be necessary to show that the indirect infringer has induced direct patent infringement for their conduct to be considered unlawful. This line of argument is an example of how a patent can be defended without expanding its scope of protection. It should not, however, have the effect of preventing such products from being supplied for legal uses, unrelated to patent infringement.