We are delighted to see Phillip Johnson's article being called for by the judge. The abstract of Phillip's article reads as follows:
- Section 60(2) [of the UK's Patents Act 1977] is closely based on Article 30 of the Community Patent Convention (now Article 30 of the 1989 Luxembourg Agreement). In Grimme at paragraph 79, Jacob LJ said:"Advocates should recognise that where a point of patent law of general importance, such as the construction of a provision which by Treaty (either the EPC or the Community Patent Convention) is to be implemented by states parties to those conventions, has been decided by a court, particularly a higher court, of another member state, the decision matters here. For, despite the fact that there is no common ultimate patent court for Europe, it is of obvious importance to all the countries of the European Patent Union or the parties to the Community Patent Convention ("the CPC") that as far as possible the same legal rules apply across all the countries where the provisions of the conventions have been implemented. An important decision in one member state may well be of strong persuasive value in all the others, particularly where the judgment contains clear reasoning on the point."
- Counsel were unable to find any decision of another contracting state which deals with this point. At my request, I was referred to an article by Professor Phillip Johnson "Contributing to the wrong: the indirect infringement of patents" (Journal of Intellectual Property Law and Practice, 2010 Volume 5 Number 7) which states at page 516:"It is not necessary, however, for a person to know he is infringing a patent, only that the means may be used for putting the invention into effect. Accordingly, even if the supplier believed the supply was lawful and non-infringing this is no defence."
- This essentially reflects the Claimant's case in relation to Section 60(2). So, in the present case, there is no doubt that the Defendants intended the Pramet inserts should be fitted into the cutter bodies. At that point, assuming that the Pramet inserts satisfied the relevant features of the claim, the combination of cutter body and insert would infringe. That, submitted the Claimant, is enough for the purposes of Section 60(2): if a Defendant intends a particular use to be made of his product it should not matter whether he knows that the resulting combination actually infringes. That must be a matter for the court alone to be decided objectively. Otherwise, a Defendant could escape liability under Section 60(2) by saying that he misunderstood or was ill-advised as to the meaning of the patent.
Legal context The law of indirect patent infringement is evolving quickly across the various jurisdictions in Europe. The member states of the European Union have similar provisions in their law relating to thing matter by reason of the Community Patent Convention despite the fact it never came into effect.Phillip Johnson is Associate Professor of Intellectual Property Law, University College Dublin, and a founder member of the The Journal of Intellectual Property Law & Practice editorial board.
Key points This article provides a review of the jurisprudence relating to indirect infringement in Europe, with particular emphasis on the law of the United Kingdom. It seeks to provide guidance on the law will develop by comparing the approaches of the Courts in the various Member States.
Practical significance The law in this area is little explored and there have been a number of recent decisions which are little discussed elsewhere.