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Imagine that a company has obtained a process patent for regenerating bone tissue, the subject matter being the preparation of blood plasma gel rich in growth factors from a patient’s blood, drawn from the patient shortly before surgery and before the anesthesia. Now picture a third party who commercializes various kits and centrifuges to obtain this platelet-rich plasma (PRP). Neither the kits nor the centrifuges are patented.
The Barcelona Provincial Court ruled on these facts in Judgment 2410/2020, of November 13, 2020 (the “Judgment”) discussed below.
Obviously, it would be hard for the patent holder to find and bring a claim against those using the kits and centrifuges, who are ultimately the ones exploiting the patent directly.
Consequently, the applicable legislation enhances the patent holder’s protection in these cases. The patent holder may bring a claim against any party providing the means to put a patented invention into effect, as long as the means relate to an essential element of the invention. In this case, the patent holder may bring a claim against the third party supplying the kits and centrifuges necessary to obtain PRP.
Requirements for an indirect infringement
In order not to overprotect indirect infringements, unreasonably restricting the trade of lawful products and undermining competition, they must meet the following legal requirements: (i) indirect infringers must provide means relating to an essential operational element of the invention; (ii) the party obtaining the means should not be licensed to exploit the patent; (iii) indirect infringers must be aware of (i) and (ii); and (iv) if the means are commonly available in the market, indirect infringers must induce the direct infringement of the patent (article 60 of the Spanish Patent Act).
The Barcelona Provincial Court (“the Court”) helps to define the protection of patent holders against indirect exploitation. In particular, the Court examines whether the above requirements are met.
As for the first requirement, the Judgment examines the claimant’s arguments and claims. The Court concludes that by supplying the kits and centrifuges, the defendant is providing suitable means to replicate the claimant’s patented process to obtain PRP. The Court recalls that an indirect patent infringement only requires that the alleged infringer provide means relating to an essential operational element of the invention.
The second requirement, i.e., that the health care professionals targeted by the defendant’s products not be licensed to exploit the patented process, is met and undisputed in this case.
The third requirement relates to the defendant’s awareness. The evidence submitted by the claimant and the defendant’s website show that the defendant was fully aware that there would be an eventual gelling of the plasma when in contact with calcium chloride (as stated in the claimant’s patent), creating an identical product to the one obtained following the claimant’s patented process, despite the products’ instructions not expressly specifying it. The Judgment concludes that the defendant knew that at least some of its clients would use the products in a gel state, thereby replicating the protected patent.
Inducement of infringement when the means are commonly available in the market
The Judgment focuses on the fourth requirement: inducement of infringement when the means are commonly available in the market. The Judgment (i) indicates the meaning of “products commonly available in the market” and (ii) assesses if the defendant induced the infringement of the claimant’s patent.
There is well-settled case law providing that a product will be “common” if it has at least another application that does not entail a patent infringement (see, e.g., Madrid Provincial Court Judgment 317/2011, of November 7). In the case at hand, the Court considers that the kits and centrifuges sold by the defendant are commonly available in the market and have additional applications other than putting into effect the patented invention. Therefore, it only remains unclear if the defendant induced the infringement.
The information submitted by the defendant along with its products (particularly that PRP activated with calcium chloride turns into plasma gel) shows that anyone buying the products would know that they allow them to replicate the patented process. But this did not lead the Court to find that the defendant induced the infringement, because any expert in the field would have access to this information. If the potential buyers of the products had not been aware of the information provided in the defendant’s advertisements and instructions, it would then be relevant information potentially qualifying as inducement of infringement.
As a result, the Court did not find an indirect patent infringement in this case.
The Judgment shows that one must consider the underlying purpose of indirect infringements. This purpose is to enable patent holders to defend their exclusive rights by bringing claims against any parties substantially contributing to the infringement, if bringing a claim against the direct infringer would be too expensive and too time-consuming, like in the case at hand.
But indirect patent infringements cannot be used to overly extend the scope of patent rights, allowing patent holders to claim against all of the infringer’s suppliers, even if their activity involves providing commonly used products with applications other than the replication of patented inventions.
Author: Marta Zaballos
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