Introduction Example
A company holds an Austrian patent relating to a heat cabin with an atomization device (brine nebulizer) that generates a liquid mist. The essential innovation of the invention relates to the specific design of the brine nebulizer with an ultrasonic generator.
A foreign company only manufactures brine nebulizers, offers them in Austria, and also delivers them to Austria. A customer from Austria inquired with this manufacturer whether the brine nebulizer could be delivered to Austria and installed in an existing infrared cabin. The manufacturer confirmed this and also stated that the brine nebulizer could be installed in the customer's heat cabin.
The brine nebulizer was then delivered to Austria together with salt, instructions, and a transformer, and installed in a cabin by the customer. This combination resulted in a functional heat cabin with a nebulizer that was capable of producing the desired liquid mist.
The foreign company now claims that the brine nebulizer is not covered by the patent at all, as the parts manufactured and delivered to Austria do not contain a heat cabin and are therefore not covered by the patent.
In principle, it is also possible to prosecute instigators and accomplices of a patent infringement under general civil or criminal law principles. However, this requires proof of intent. Since this is an internal fact, such proof is difficult to provide in practice.
It is therefore difficult to prosecute a direct patent infringement against the foreign manufacturer: although the latter facilitates the patent infringement, the delivered products themselves realize the patent claim. Although the behavior could be considered incitement to patent infringement by the Austrian customer, this requires proof of corresponding intent. This is particularly difficult to provide in practice, as it concerns an internal fact. In the present case in particular, it will be virtually impossible to prove specific intent to infringe, especially since the manufacturer formally offers its product as a “mere nebulizer” and can argue that this does not fall within the scope of protection on its own.
The problem is particularly evident in the case of preliminary products which, in themselves, do not yet fulfill the patent claim, but which can be used by customers in such a way that a patent infringement occurs. The customers only realize the patent claim in a later step. In addition, these customers are often also customers of the patent holder, so that the latter regularly has no interest in taking direct action against them for economic or strategic reasons. It is impossible to take action against private customers at all, as they do not act on a commercial basis. Instead, the focus is on the manufacturer or supplier of the preliminary products, as their actions provide the decisive impetus for the subsequent patent infringement.
The problem is particularly clear in the example: The brine nebulizer supplied by the foreign company is a typical preliminary product. On its own, it does not fulfill the patent claim—a heat cabin with an integrated atomization device. Only when the Austrian customer installs the nebulizer in an existing infrared cabin is the protected object realized.
This means that the patent infringement does not lie directly with the manufacturer of the nebulizer, but only with the customer, who fully fulfills the patent claim by combining the components. Taking action against the customers is not very promising from a legal and practical point of view: On the one hand, they are often private customers who are not acting “in the course of business” and therefore cannot be prosecuted for legal reasons. On the other hand, there is usually a certain reluctance to take action against people whom one would like to win as customers.
Consequently, the focus is on the supplier of the preliminary product. Their actions—the offer, delivery, and explicit recommendation to install the product in a cabin—provide the decisive impetus for the subsequent patent infringement.
However, the problem remains that the manufacturer does not realize the patent claim itself and therefore direct patent infringement cannot be easily proven.
Indirect patent infringement now represents an extension of the material and personal scope of protection of a patent; unlike in the case of instigators and accomplices of patent infringement, the legislator does not require intent. Indirect patent infringement extends patent protection and enables claims to be enforced if the delivered item is an essential means. An essential means is either a component mentioned in the patent claim or an item that is absolutely necessary to carry out the invention. These means are specifically tailored to the patented invention.
In the present case, the brine nebulizer is to be regarded as an essential means. It does not in itself fulfill the patent claim, as this relates to a complete heat cabin with an integrated atomization device. However, the nebulizer is precisely the component that enables the patented function—the generation of a liquid mist by means of ultrasound.
Without the brine nebulizer, the invention cannot be carried out. It is therefore an essential means for the realization of the patented teaching. In addition, the nebulizer is not interchangeable or intended for a wide range of applications, but is specifically tailored for use in a heat cabin.
Even if no intent is required in the case of indirect patent infringement, the patent holder must prove that the recipient of the means knows that it is intended and suitable for carrying out the invention. However, it is also sufficient if this suitability and intended purpose are clearly recognizable from objective circumstances. It is therefore not necessary for the supplier itself to act intentionally. The decisive factor is whether the recipient is aware of the specific use of the product or whether this is obvious.
In the case of the brine nebulizer, the suitability and purpose for carrying out the invention is already apparent from the objective circumstances: the manufacturer not only supplied the nebulizer, but also expressly recommended it for installation in a heat cabin and shipped it to Austria together with accessories (salt, transformer, instructions).
This makes it clear to the customer that the nebulizer is specifically intended for use in a heat cabin and that it performs the patented function there. Even if it cannot be proven that the foreign manufacturer acted intentionally, it is sufficient that the specific use by the customers is obvious.
The patent holder can therefore rely on indirect patent infringement, as the delivery of the brine nebulizer in this form was necessarily aimed at the use of the patented invention.
Indirect patent infringement is limited to offering and marketing the product. Manufacturing and importing are generally permitted. Manufacturing for the purpose of export is also permitted. It is only prohibited to offer and market the essential product.
Assuming that the foreign company would merely manufacture the brine nebulizer and store it in its warehouse without offering or distributing it in Austria. In this case, there would be no indirect patent infringement. According to the legal concept, mere manufacture or storage in a warehouse is not sufficient to fulfill the elements of the offense.
The decisive factors are exclusively the offering or placing on the market of the essential means in the country of protection. Only when the nebulizer is actively offered on the market or actually delivered to Austria does a relevant act within the meaning of indirect patent infringement arise. In the example, the patent infringement is therefore only realized when the manufacturer offers or delivers the saline nebulizer to the customer in Austria – mere production and storage is not sufficient.
A special aspect of indirect patent infringement is that the purchaser of the essential means may well be a private individual. However, there are no claims against such end customers, as they are not acting “in the course of business.” Rather, indirect patent infringement requires action in the course of business. Even if the private end customer cannot be prosecuted in any case, indirect patent infringement gives the patent holder the opportunity to take action against the supplier or distributor of the essential means. This prevents manufacturers of intermediate products from claiming that their customers are “only” private individuals and therefore cannot be prosecuted.
The Austrian end customer who installs the nebulizer in his heat cabin is not infringing the patent because he is not acting in the course of business. He is therefore exempt from the patent holder's claims. The indirect patent infringement is therefore not linked to the behavior of the end customer, but to the behavior of the foreign manufacturer who offers and supplies the nebulizer. These delivery actions fulfill the elements of the offense, even if the actual user is a private individual. This allows the patent holder to take effective action against the supplier of the essential means without having to prosecute his own customers.
The law contains an apparent “exception” in the event that the means supplied is a product generally available on the market. In this scenario, the dealer or supplier is only liable for indirect patent infringement if they knowingly cause the patent infringement – i.e., if they act as an instigator. However, this in turn requires proof of intent.
Suppose a supplier does not sell the patent-critical salt spray nebulizer, but only wooden boards and screws for building a sauna cabin. Even if these components are essential for the manufacture of a cabin in a broader sense, they are generally commercially available products. As long as the supplier does not indicate that the customer should use the parts in conjunction with a brine nebulizer (which triggers the patent infringement), there is no conscious instigation. In this case, therefore, there would be no indirect patent infringement. Only if the supplier asks the customer to also order a patented brine nebulizer would there be a corresponding deliberate incitement.
This makes it clear that only if the supplier of generally available products specifically initiates or promotes the use of the patented invention can he be held liable as an instigator – otherwise not.
