11.What is Patent Rights Infringement? (Direct infringement and Indirect Infringement): We will explain about Direct infringement and Indirect Infringement in an easy-to-understand manner with illustrations. (IPdash Tokyo intellectual property firm/ Patent Attorney Hisamitsu TOMEBA)

This is the 11th part of our seminar “Intellectual Property in Japan (Patent right)”.
“Direct and Indirect Infringement” will be explained in an easy-to-understand manner with slides.

Patent rights infringement (for unauthorized person) is to work the patented invention as a business.

“Working” of an invention of a product mean the acts in the slide (1 to 6). (Article 2.3.1)
And then, for unauthorized person, “to work the patented invention as a business” is infringement of a patent right (Direct Infringement). (Article 68)

(For details about Japan Patent Act, please refer the articles below. (end of this part))

For example, there are products include patented invention (patent infringing products).
If somebody sells the products or distributes catalogs of the products, the acts would constitute infringement of the patent right.

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Pay attention to Indirect Infringement! Acts of possessing a patented product for the purpose of assigning, etc. or exporting it as a business. (Japan Patent Act Article 101.3)

There would be a case that “possessing a patented product” is deemed to infringe a patent right.

For example, as shown in the slide above, somebody store patented products in a warehouse for the purpose of assigning (selling or leasing) it as a business.

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If unauthorized person sold a patented product, it would be infringement of the patent right (Direct infringement).

Not only that, the act which induce infringement of a patent right, is deemed to infringe a patent right (Indirect infringement).

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Summary: 1.(For unauthorized person,) To work the patented invention as a business constitute infringement of a patent right (Direct Infringement). 2.Some act which is likely to induce infringement of a patent right is deemed to constitute infringement of that (Indirect Infringement).

I’d like to wrap up with a summary of this part.
1. (For unauthorized person,) To work the patented invention as a business constitute infringement of a patent right (Direct Infringement).
2. Some act which is likely to induce infringement of a patent right is deemed to constitute infringement of a patent right (Indirect Infringement).

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Indirect infringement (Acts Deemed to constitute infringement) is prescribed in the Japan Patent Act Article 101.
Only the case of Article 101(iii) is exemplified here.

By the way, indirect infringement is imposed a lesser penalty, compared to direct infringement.

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Reference (Japan Patent Act)

Article 2
“Working” of an invention in this Act means the following acts:
(i) in the case of an invention of a product (including a computer program, etc., the same shall apply hereinafter), producing, using, assigning, etc. (assigning and leasing and, in the case where the product is a computer program, etc., including providing through an electric telecommunication line, the same shall apply hereinafter), exporting or importing, or offering for assignment, etc. (including displaying for the purpose of assignment, etc., the same shall apply hereinafter) thereof;
(ii) in the case of an invention of a process, the use thereof; and
(iii) in the case of an invention of a process for producing a product, in addition to the action as provided in the preceding item, acts of using, assigning, etc., exporting or importing, or offering for assignment, etc. the product produced by the process.

Article 68
A patentee shall have the exclusive right to work the patented invention as a business; provided, however, that where an exclusive license regarding the patent right is granted to a licensee, this shall not apply to the extent that the exclusive licensee is licensed to exclusively work the patented invention.

Article 101
The following acts shall be deemed to constitute infringement of a patent right or an exclusive license:
(i) where a patent has been granted for an invention of a product, acts of producing, assigning, etc., importing or offering for assignment, etc. any product to be used exclusively for the producing of the said product as a business;
(ii) where a patent has been granted for an invention of a product, acts of producing, assigning, etc., importing or offering for assignment, etc. any product (excluding those widely distributed within Japan) to be used for the producing of the said product and indispensable for the resolution of the problem by the said invention as a business, knowing that the said invention is a patented invention and the said product is used for the working of the invention;
(iii) where a patent has been granted for an invention of a product, acts of possessing the said product for the purpose of assigning, etc. or exporting it as a business;
(iv) where a patent has been granted for an invention of a process, acts of producing, assigning, etc., importing or offering for assignment, etc. any product to be used exclusively for the use of the said process as a business; and
(v) where a patent has been granted for an invention of a process, acts of producing, assigning, etc., importing or offering for assignment, etc. any product (excluding those widely distributed within Japan) to be used for the use of the said process and indispensable for the resolution of the problem by the said invention, knowing that the said invention is a patented invention and the said product is used for the working of the invention as a business;
(vi) where a patent has been granted for an invention of a process of producing a product, acts of possessing the product produced by the said process for the purpose of assigning, etc. or exporting it as a business.

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That’s all for Part 11 (Direct Infringement and Indirect Infringement).

IPdash Tokyo Intellectual Property Firm (Japan)

(To Part 10) (To Part 12)

(To List)

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