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

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Question Q204P National Group : AIPPI Indonesia Title : Liability for contributory infringement of IPRs certain aspects of patent infringement Contributors : Migni Myriasandra Representative within

1 Question Q204P National Group : AIPPI Indonesia Title : Liability for contributory infringement of IPRs certain aspects of patent infringement Contributors : Migni Myriasandra Representative within Working Committee : Biro Oktroi Roosseno Date : March 29, 2010 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? There is no provision available regulating concerning a separate condition for the supply of means to qualify as contributory patent infringement in Indonesia Patent Law no. 14/2001. Based on the Resolution of Q204 in Boston, it is stated that one of the basic principles for contributory infringement should include that the means supplied or offered by the contributory infringer are for an infringing use. According to Article 16 (Rights and Obligations of a Patent Holder) jo Article 130 (Criminal provisions has the right to take action against any infringement), stipulates the infringement of patent holder s right by committing any acts without his/her consent in case of productpatent: makes, uses, sells, imports, rents out, delivers, or supplies for sale or rental or delivery of the patented product. Further, the person could be subjected to Article 56 of Indonesian Criminal Law (KUHP) concerning crime contributor. The court procedure will follow Indonesian Criminal Procedure Law (KUHAP). 1

2 Indonesia ratifies TRIPs Agreement, and under this agreement, in general regarding the infringement of patent, it is regulated in the Article 28 which states A patent shall confer on its owner the following exclusive rights: (a) where the subject matter of a patent is a product, to prevent third parties not having the owner s consent from the acts of: making, using, offering for sale, selling, or importing 1 for these purposes that product. Further, in Article 45 of TRIPs (concerning Damages), it is stipulated that for the judicial authorities which have the authority to order the infringer to pay the right holder damages adequate to compensate for the injury the right holder has suffered because of an infringement of that person s intellectual property right by an infringer who knowingly, or with reasonable grounds to know, engaged in infringing activity. There is a regulation available concerning Provisional decision By Court (interim injunction/relief injunction) in Article 125 of the Indonesian Patent Law which states Upon a request from the party who might have suffered due to the implementation of a patent, the Commercial Court may immediately issue a provisional decision that is effective: a. to prevent the continuation of infringement on the patent and the rights pertaining to the patent, particularly to prevent the entry of products allegedly infringing the patent and the rights pertaining to the patent into the trade channel, including importation; b. to keep the evidence relating the infringement of patent and the rights pertaining to the patent in order to prevent the elimination of evidence; c. to request the party who might have suffered to provide evidence that the party is truly entitled to the patent and the rights pertaining to the patent and that such rights are being infringed. 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? There is no provision available regulating concerning a condition cited in point 2 in Indonesia Patent Law no. 14/2001. Based on the Resolution of Q204 in Boston, it is stated that one of the basic principles for contributory infringement should include that at the time of offering or supply, the suitability and intended use were known to the supplier or obvious under the circumstances. When a person without the consent of the patentee supplies someone with means relating to an essential element of the invention for putting the invention into effect when he knows, or it is obvious to a reasonable person in the circumstances, those means are suitable for putting and intended to put the 1 This right, like all other rights conferred under this Agreement in respect of the use, sale, importation or other distribution of goods, is subject to the provisions of Article 6. 2

3 invention into effect for certain market in a country where the means are sold, then such supply is an infringement. It is valid as well for the person supplied intended. 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? There is no provision available regulating concerning a condition cited in point 3 in Indonesia Patent Law no. 14/2001. Based on the Resolution of Q204 in Boston, it is stated that one of the basic principles for contributory infringement should include the means supplied or offered by he contributory infringers related to a substantial element of the subject matter of the protected patent. The test for determining whether an element is essential, valuable or central is by looking at the claim as granted, and the patent attorney must rely upon contributory infringement provisions in the laws of their country. In some countries such provisions exist but they are limited to contributory infringement relating to product put on the market in the country thereof. 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? There is no provision available regulating concerning a condition cited in point 4 in Indonesia Patent Law no. 14/2001. If the means are the essential, valuable or central element of invention which in the use it should be assembled with other supplemental part that could be easily obtain in the market, there might be a label indicating any instruction to the person supplied to put the goods supplied or offered to an infringing use. Therefore, the 3

4 sale of the means would be the sale of the means relating to an essential element of the invention and would infringe the patent. However, please be noted that the answers of this question could be vary, since it will depend on the case (case by case). 5. a) Is injunctive relief available against acts of contributory infringement? There is no provision available regulating concerning the injunction relief against acts of contributory infringement in Indonesia Patent Law no. 14/2001. However, in general there is a regulation available concerning Provisional decision By Court (interim injunction/relief injunction) in Article 125 of the Indonesian Patent Law which states Upon a request from the party who might have suffered due to the implementation of a patent, the Commercial Court may immediately issue a provisional decision that is effective: a. to prevent the continuation of infringement on the patent and the rights pertaining to the patent, particularly to prevent the entry of products allegedly infringing the patent and the rights pertaining to the patent into the trade channel, including importation; b. to keep the evidence relating the infringement of patent and the rights pertaining to the patent in order to prevent the elimination of evidence; c. to request the party who might have suffered to provide evidence that the party is truly entitled to the patent and the rights pertaining to the patent and that such rights are being infringed. This regulation is also stipulated under TRIP s Agreement in Article 50 concerning Provisional measures. 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? _ 4

5 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? There is no specific provision available regulating concerning a condition cited in point 6 in Indonesia Patent Law no. 14/2001. However, in practice if there is any patent infringement involving parties such as manufacturer, supplier, distributors, retailer etc having chain to the infringement is considered as contributory patent infringement, thus, we could apply the related provision as stipulated under Indonesian Patent Law and, Indonesian Criminal Law. Additionally, there is provision under Indonesian Customary Law No. 17 of 2006 on Article 56 stipulates concerning the prohibition and limitation of Import and export, the postponement of Importation and exportation of IPR infringing goods. This is the Ex officio of the custom authorities, once they have sufficient proof that the import or export goods are IPR infringing goods. To qualify as contributory patent infringement, the intended use of means for actual infringement is when the infringing use of the means intended to take place in the country where the means would be considered to be an essential part of invention of Patent. (Please be noted that the answers of this question could be vary, since it will depend on the case (case by case). 7. How is it to be determined where means are supplied or offered? For example: Please be noted that the answers of the below questions will be vary, since it will depend on the case (case by case), depend on the regulations in both countries, and depend on the fact whether the means are protected as a patent in only both countries or only one country. Please be noted that the importation or exportation of goods in Indonesia should be completed with legal documents (such as trademark certificate, harbour stamp). If the related necessary documents are not completed, such goods will be suspicious by the custom authority. 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? In countries A and B If supplier X supplies person Y with means for infringing use in country B, we could assume that both X and Y are likely to be infringers. 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? 5

6 In countries A and B 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? In countries A and B 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? In countries A and B However, there is no provision available regulating concerning a condition cited in point 7 in Indonesia Patent Law no. 14/ 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? Yes. Y would 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 in country A by supplying the means to Y. However, there is no provision available regulating concerning a condition cited in point 8 in Indonesia Patent Law no. 14/ 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? For the means are supplied b) What is the applicable law if the means are offered in country A but supplied in country B? Law concerning Patent contains no specific provisions concerning contributory infringement 6

7 c) Are there any other relevant principles to determine the applicable law? Criminal Law, Custom Law, Civil Law, Consumer Protection 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? The conditions for an act of supply or offering of means relates to product put on the market in one country where the patent is protected. 2. In a harmonised system of patent law, to what extent should injunctive relief be available to prevent contributory patent infringement? It is still in discussed. 3. In a harmonised system of patent law, how should it be determined where means are supplied or offered? It prefers to be determined where means are supplied. 4. Should special rules apply to offers transmitted via electronic devices or placed on the internet? It should not be necessary to apply special rules for such offering, since the contributory infringement will be obvious only after the means are sold whenever it should be assembled/ incorporated or not, to a goods for an infringing use. 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? It should be determined from which country where the means are supplied. 6. Does your Group have any other views or proposals for harmonisation in this area? As the existing Patent Law is going to be amended, therefore, the proposal for harmonisation will be sent to AIPPI after the draft of the Patent Law has been finalized. 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. 7

8 Summary Of Q204P Liability for contributory infringement of IPRs certain aspects of patent infringement Presently our National Law of Intellectual Property Rights, particularly regarding Patent, does not have any specific provision relating to liability for contributory infringement of IPRsin certain aspects of patent infringement. The Patent Law in general provides the Criminal provisions concerning the action against any infringement of the Rights and Obligations of a Patent Holder. Such infringer could be subjected to one of Article of Indonesian Criminal Law (KUHP) concerning crime contributor. The court procedure will follow Indonesian Criminal Procedure Law (KUHAP). Additionally, Indonesia ratifies TRIPS s Agreement, thus, under this agreement, in general regarding the infringement of patent, it is regulated as well regarding the compensation for the injury the right holder which has suffered because of an infringement of that person s intellectual property right by an infringer who knowingly, or with reasonable grounds to know, engaged in infringing activity. There is a regulation concerning Provisional decision By Court (interim injunction/relief injunction) under Indonesian Patent Law, upon request from the party who might have suffered due to the implementation of a patent. Further, Indonesian Customary Law No. 17 of 2006 stipulates concerning the prohibition and limitation of Import and export, the suspension of Importation and exportation of IPR infringing goods (the Ex officio of the custom authorities, once they have sufficient proof that the import or export goods are IPR infringing goods). In our country, the relevant principles to Liability for contributory infringement of IPRs, in addition of Patent Law, are stipulated as well under Criminal Law, Custom Law, Civil Law, and Consumer Protection Law. 8

Liability for contributory infringement of IPRs certain aspects of patent infringement

Question Q204P National Group: Japan Group Title: Liability for contributory infringement of IPRs certain aspects of patent infringement Contributors: Takeshi Aoki, Koji Akutsu, Katsumi Isogai, Yusuke