Divided Performance of Patented Methods in Australia: A Call to Codify Procured Infringement

38 Pages Posted: 3 Oct 2017 Last revised: 20 Feb 2018

See all articles by John Liddicoat

John Liddicoat

University of Cambridge - Faculty of Law; University of Tasmania

Date Written: August 15, 2017

Abstract

The US case Akamai Technologies Inc v Limelight Networks Inc brought the patent world’s attention to the issue of if and how a patentee may enforce a method claim against a party who performs some of the steps in a patented method but leaves other steps to be performed by a third party. The case raised the possibility that an internet-orientated service provider could effectively utilise a patented method by dividing performance of the method between itself and a client at arm’s-length – a problematic outcome for any method claims that can be performed by two or more parties. This paper analyses this ‘divided performance’ issue in the Australian context, finding that, contrary to an earlier article, no patent infringement mechanism clearly creates liability for it. This analysis, however, also reveals that the seldom invoked, common law mechanism commonly known as procured infringement plausibly creates liability. This paper recommends that procured infringement be codified in the Patents Act 1990 (Cth) to resolve ambiguity surrounding whether procured infringement creates liability and, thereby, generate certainty for the myriad stakeholders who use the patent system.

Keywords: patents, patent law, infringement, divided infringement, divided performance, procured infringement, induced infringement, patented methods

JEL Classification: O3, O34, O33, O32, O31, O39, O38, K11, K10, K2, K40, K41, K49, K42

Suggested Citation

Liddicoat, Johnathon, Divided Performance of Patented Methods in Australia: A Call to Codify Procured Infringement (August 15, 2017). University of New South Wales Law Journal, Forthcoming, Available at SSRN: https://ssrn.com/abstract=3043270 or http://dx.doi.org/10.2139/ssrn.3043270

Johnathon Liddicoat (Contact Author)

University of Cambridge - Faculty of Law ( email )

10 West Road
Cambridge, CB3 9DZ
United Kingdom

University of Tasmania ( email )

French Street
Sandy Bay
Hobart, Tasmania 7001
Australia

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