Contributory infringement under s 117 of the Patents Act 1990 (Cth): What suppliers need to know

摘要

"Use" means different things in the Patents Act 1990 (Cth), depending on whether the alleged use is in the context of secret use, or contributory infringement. Secret use requires the patentee to reap some commercial benefit amounting to a de facto extension of the patent term. The meaning of a use that would infringe in s 117(1) has been amplified by referring to the various uses of the product described in s 117(2): only use; intended use; and instructed use. Arguably, "reason to believe" in s 117(2)(b) implies actual knowledge, and s 117(2)(c) requires that an instructed use must knowingly induce infringement. This interpretation gives effect to IPAC's recommendation that the supply of a staple commercial product must be accompanied by an inducement to infringe in order to attract liability, it acknowledges the distinction IPAC drew between knowing goods will infringe and knowing they may possibly infringe, and it is consistent with the level of knowledge required for accessorial liability at common law. This has significant consequences for suppliers of goods who plead innocent infringement, because lack of knowledge of an infringing use is arguably a complete defence to contributory infringement.