May 13 2020
Patent infringement proceedings can be daunting at the best of times, but what does a patentee do when it believes a third party are infringing its process? In this series of articles, we will explore some of the issues that arise in pursuing infringement proceedings relating to a patented process and the hurdles to overcome.
A process patent is a type of utility patent that covers a method (i.e. a series of steps) for performing a function or changing the functionality or characteristics of a material during a specified use to achieve a desired product or result.
In our third scenario, a patentee has an issued patent for a process with respect to the use of a product. A third party has knowingly induced or procured another to infringe the process patent. What recourse is available as against the third party that has knowingly induced or procured infringement?
A classic example of inducing infringement of a process patent is where a seller sells a product to a buyer (the direct infringer), wherein the buyer uses the product in a manner that infringes the patented process. In order to prove inducement in this scenario, the patentee must prove1
(a) that the act of infringement was completed by the direct infringer;
(b) the completed act of infringement was influenced by the seller, to the point where without said influence, infringement by the buyer would not otherwise take place; and
(c) the influence must knowingly be exercised by the seller, such that the seller knows that his influence will result in the completion of the act of infringement.
With respect to the first branch of the test, proof of direct infringement would require the same evidence as non-induced infringement (i.e., the making, using or selling of the infringing product).
In proving the second branch of the test, evidence of influence can include selling an article which has but a single purpose or providing explicit instructions or directions to complete an act of infringement.2
With respect to the third branch of the test, while the seller must know of their influence, they do not need to be aware of the existence of the infringed patent as intention is irrelevant to the question of infringement.3
A further consideration is when a patented process includes several steps where different third parties perform steps whereby no single third party infringes the patent, but the collective effort of multiple third parties infringes the patent.
As such, patentees should consider not only the actions of direct infringers on process patents, but also those who may induce infringement or the collective efforts of multiple third parties which culminate in infringement, the subject matter of our next article in this series.
This article is for information purposes only and does not constitute legal or professional advice.
Authors: Kenneth Hanna, Abbas Kassam
1 AB Hassle v. Apotex Inc.,  F.C.J. No. 1725 at para. 68.
2 Baker Petrolite Corp. v. Canwell Enviro-Industries Ltd. (2001), 13 C.P.R. (4th) 193 at ¶138 (F.C.T.D.) Weatherford Canada Ltd. et al. v. Corlac Inc. et al. , FC 76 at ¶14-22
3Proctor & Gamble Co. v. Bristol Myers Canada Ltd. (1978), 39 C.P.R. (2d) 145 at 167 (F.C.T.D.), aff’d (1979), 42 C.P.R. (2d) 33 (F.C.A.)
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Tags: Abbas Kassam, Kenneth Hanna, Patent Infringement, Patents