Patent Update: Infringement: When Can the Actions of One Be Attributed to Another?

March
,
2017

Many inventions have two or more inventors, and many patents exist whose ownership is shared by two or more distinct entities. Neither joint inventorship nor joint ownership prevents a patent from being enforceable. This is not true, however, of joint infringement. Methods that include two or more steps that can be individually performed by separate entities have been patented. Nevertheless, joint infringement, also known as divided infringement, is not a recognized form of infringement, because the patent courts hold that infringement only occurs when all steps of a claimed method are performed by or attributable to a single entity.

There are certainly situations in which the only practical way of performing all of the steps of a multistep method is by separate entities. A good example is when one step is performed by a supplier or service provider who sells directly to consumers and a second step that is needed to complete the method is performed by the consumer. The patent owner in these situations typically seeks redress from the supplier rather than the consumer. To do so, the patent owner must show that the step performed by the consumer is somehow attributed to the supplier.

Several forms of attribution are recognized by the patent courts. One that has arisen most...

Author Bios: 

M. Henry Heines

M. Henry Heines, PhD, JD, (Email: mhheines@comcast.net; Website: http://henryheines.com) is a patent attorney and an author, speaker, and consultant on patent-related topics for lawyers, as well as for scientists, engineers, and managers in technology companies, and has served as an expert witness in patent litigation. He began his career as a research engineer in the chemicals industry and worked in corporate patent practice before entering private practice, including 25 years as a partner in the firm now...Read more

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