Question Q204P National Group: AIPPI PANAMA GROUP Title: Liability for contributory infringement of IPRs certain aspects of patent infringement Contributors: Julie Martinelli Representative within Working Committee: Julie Martinelli Date: March 31, 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? The Panamanian Patent Law does not include the contributory patent infringement. According to our law, the protection granted by a patent is determined by the claims and would be interpreted in accordance with the description and drawings. In view of the above, it is our opinion that the contributory patent infringement will only apply in our country if the means supplied or offered are included in the claims of the infringed 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? As previously informed, the contributory patent infringement is not included, nor considered in the Panamanian Patent Law. b) If yes to a), is the element of intention a separate condition to any condition of suitability for an infringing use? 1
Definitely, the intention may be a separate condition to any condition of suitable 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? Even if the contributory patent infringement is not regulated in Panama, the previous knowledge of the infringer is not a requirement in our law. 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? According to our law, the protection of a patent is limited by the claims that would be interpreted in accordance with the description and drawings. Therefore, the test for determining whether an element is essential, valuable or central would be if it is included in the protection granted by the patent in Panama. 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? As previously informed our law does not include the contributory patent infringement, therefore there is no basis to qualify or determine such condition in our country. 5. a) Is injunctive relief available against acts of contributory infringement? The contributory infringement is not provided in our law, therefore the relief that may be use in the case is that is not considered as an infringement according to our law. 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? 2
The contributory infringement is not provided in our law, therefore the relief that may be use in the case is that is not considered as an infringement according to our law. 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? The contributory infringement is not provided in our law, therefore the relief that may be use in the case is that is not considered as an infringement according to our law. 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? The contributory infringement is not provided in our law, therefore the relief that may be use in the case is that is not considered as an infringement according to our law. 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? Even if the contributory patent infringement is not included in our law, it is important to take into account that our law provides that the infringement of a protected patent in our country must occurred in the domestic market of the Republic of Panama in order to be in the position to initiate any kind of infringement actions before the competent courts. 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? 3
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? Since our law does not contemplate or regulated the contributory patent infringement, the infringer in this case would be the one that uses the patented product within the territory of the Republic of Panama. 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? As previously informed our law does not include the contributory patent infringement, therefore there are question or basis the determined the means. b) What is the applicable law if the means are offered in country A but supplied in country B? As previously informed our law does not include the contributory patent infringement, therefore there are question or basis the determined the applicable law. c) Are there any other relevant principles to determine the applicable law? No. 4
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? Summary The Panamanian Patent Law does not include or refer to the contributory patent infringement. Accordingly, such an action is not considered an infringement in our country. The protection granted to a patent is limited by the claims, which must be interpreted in accordance with the description and drawings. Being this the case, the infringement of a patent would only occur in our country by the direct use of a patented product or a patented process. Third parties that may use, offer or supply a separate component of a product that may be used by a third person in a final product that may result similar are not considered as infringers in accordance with the regulations of the Panamanian Patent law. Résumé La Loi Panaméenne des Brevets ne comprend pas ou se réfère à la complicité de contrefaçon de brevet. En conséquence, une telle action n est pas considérée comme une infraction dans notre pays. La protection accordée à un brevet est limitée par les revendications, qui doivent être interprétées conformément à la description et aus cessins. 5
Dans ce cas, la violation d un brevet pourrait se produire dans notre pays seulement par l utilisation directe d un produit breveté ou d un prcédé breveté. Des tiers qui utilisent, offrent ou fournissent une composante distincte d un produit qui puisse être utilisé par une tierce personne dans un produit ifnal qui résulte être similaire ne sont pas considérés comme des contrefactuers en conformité avec les régulations de la Loi Panaméenne des Brevets. Zusammenfassung Im Panama Patentgesetz ist eine beteiligte Patentverletzung nicht vorgesehen. Demzufolge wird eine solche Handlung in unserm Land nicht als Gesetzverletzung angesehen. Der Patentschutz beschränkt sich auf Ansprüche, die interpretiert werden, basiert auf Beschreibungen und Zeichnungen. Auf Grund dessen würde eine Patentverletzung in unserem Land nur bei einem direkten Gebrauch von einem patentierten Erzeugnis oder einem patentierten Prozess bestehen. Dritte Parteien, die möglicherweise ein getrenntes Bestandteil benutzen, anbieten oder leifern, von einem Produkt, das vielleicht von einer dritten Person in einem Endprodukt verwendet wird, welches eventuell ähnlich ausfällt, werden unter dem Patentgesetz von Panama nicht als Patentverletzer angesehen. 6