Research foundation may be liable for patent infringement

The Supreme Court has held that a research foundation delivering means for the exploitation of a patented invention may be liable for patent infringement, even where such means are developed during commissioned research work.

Patentee Kvassheim appealed a Court of Appeal decision which held that Norwegian research foundation SINTEF could not be liable for indirect patent infringement for having supplied its customer with software tailored for installation and use in fish counters patented by Kvassheim. The appeal court reasoned that the development of the software was research activity, and was therefore exempt. However, in a judgment of 22nd December 2009 the Supreme Court quashed this decision, holding that the appeal court had erred in its application of the research exemption under the Patents Act.

Delivering means directed towards the exploitation of a patented invention may constitute indirect infringement under Section 3(2) of the Patents Act. However, pursuant to Section 3(3)(3), experimental work is exempted from the exclusive rights of the patentee. According to the Supreme Court, the research exemption does not mean that a research institution can freely deliver essential means for the exploitation of a patented invention by stating that such means are a product of its research activities.

By delivering the computer software to its customer, the Supreme Court found that SINTEF had commercially exploited the patented invention in competition with the patentee, which would otherwise enjoy exclusive rights in the patented product to deliver such means for installation. A distinction must be made between the research work itself, which may be freely undertaken, and the subsequent delivery of means enabling the recipient of the commissioned research work to exploit an invention patented by another party - in which case, the research institution may be liable for indirect patent infringement.

The judgment was a split decision, with a minority of two justices finding that delivery of the computer software was no more than delivery of the results of the commissioned research activities, which in their opinion fell within the scope of the research exemption.

Although the decision confirmed that delivery of developed software can be an infringing activity, the factual question of whether the software infringed the patent still remains to be decided.