Question Q204P

National Group:		[please insert name of Group]

Title: 				Liability for contributory infringement of IPRs – certain 				aspects of patent infringement

Contributors:			[please insert names of contributors]

Representative within
Working Committee:	[please insert name]

Date:				[please insert date]]

Questions

The Groups are invited to answer the following questions under their national laws

I) Analysis of current legislation and case law

1.	a) Is it a separate condition for the supply or offering of means to qualify as contributory patent infringement that the means supplied or offered were suitable to be put to a use that would infringe the patent? 

b) If yes to a), is it relevant that the means are also suitable to be put to other uses not related to the invention?

2.	a) Is it a condition for the supply or offering of means to qualify as contributory patent infringement that the person supplied intended, at the time of supply or offering, to put the means to an infringing use?

b) If yes to a), is the element of intention a separate condition to any condition of suitability for an infringing use?

c) If yes to a) is it a condition for the supply or offering of means to qualify as contributory patent infringement that the supplier was aware, at the time of supply or offering, that the person supplied intended to put the means to an actually infringing use?

3.	If it is a condition for the supply or offering of means to qualify as contributory patent infringement that the means relate to an essential, valuable or central element in the invention or that the means relate to an essential, valuable or central element in the product or service that constitutes direct infringement, what is the test for determining whether an element is essential, valuable or central?

4.	To the extent the means supplied or offered are staple commercial products, is it an additional condition for the supply or offering of means to qualify as contributory patent infringement that the supplier provides any instruction, recommendation or other inducement to the person supplied to put the goods supplied or offered to an infringing use?

5.	a) Is injunctive relief available against acts of contributory infringement? 

b) If yes to a), may injunctive relief be directed against the manufacture of the means per se or the supply of the means per se?

c) If no to b), must the injunction be limited to manufacture or supply of the means in circumstances which would amount to contributory infringement?

d) If yes to c), how in practice should this limitation be included in injunction orders, for example:

i) may claims for injunctive relief be directed for example against the abstract or hypothetical situation that the means are supplied in circumstances where the supplier is aware that the person supplied intends to put the means to an infringing use, and/or

ii) must claims for injunctive relief be directed against particular shipments of means for which the supplied person’s intent and the supplier's knowledge has been proven?

6.	Is it a condition for the supply or offering of means to qualify as contributory patent infringement that the intended use of means for actual infringement is intended to take place in the country where the means are supplied or offered? 

7.	How is it to be determined where means are supplied or offered? For example:

•	Supplier X conducts business in country A,  X agrees to supply person Y  with means for an infringing use in country B Are the means supplied in country A or B or in both?
•	Supplier X undertakes to deliver means “free on board” in a harbour in country A in the same circumstances Are the means supplied in country A or B or in both?
•	Supplier X undertakes to deliver means “free on board” in a harbour in country B in the same circumstances  Are the means supplied in country A or B or in both?
•	If the offer was made in country A but accepted in country B, are the means supplied in country A or B or in both?

8.	If means suitable for being incorporated into a patented product P are supplied by supplier X in country A to person Y, in circumstances where it was known to X (or it was obvious in the circumstances): 

i) that Y intended to export the means to country B and complete product P in country B; and
ii) that Y intended to export the completed product P into country A,

would Y then be regarded as having intended to put the means to an infringing use in country A by importing and selling product P in country A, with the consequence that X could be held liable for contributory infringement in country A by supplying the means to Y? 

9.	a) Is the question of contributory infringement determined in accordance with the law of the country in which the means are:

i)	offered; or
ii)	supplied?

b) What is the applicable law if the means are offered in country A but supplied in country B?

c) Are there any other relevant principles to determine the applicable law?

II) Proposals for substantive harmonisation

The Groups are invited to put forward their proposals for adoption of uniform rules, and in particular consider the following questions:

1.	In a harmonised system of patent law, what should be the conditions for an act of supply or offering of means to qualify as a contributory patent infringement?

2.	In a harmonised system of patent law, to what extent should injunctive relief be available to prevent contributory patent infringement?

3.	In a harmonised system of patent law, how should it be determined where means are supplied or offered?

4.	Should special rules apply to offers transmitted via electronic devices or placed on the internet?

5.	In a harmonised system of patent law, how should it be determined which country's law should apply to acts of offering or supplying means where persons or actions in more than one country are involved?

6.	Does your Group have any other views or proposals for harmonisation in this area?

Note: It will be helpful and appreciated if the Groups follow the order of the questions in their Reports and use the questions and numbers for each answer.

December 2009