Divided Infringement in the Limelight of the Patent Battle Field

The challenges of joint performance to method patents

INTRODUCTION

Biotech patents are facing increasingly stern challenges. The patent statue holds that a multi-step method patent is not directly infringed unless all steps are carried out and attributed to a single entity. When separate steps are performed jointly by two or more parties, those parties are liable for divided infringement if there exists a direct infringement. Possibilities thus exist for unauthorized but non-infringing joint performance, i.e. enforcing a method patent will be difficult if joint performance stands as a valid defense against direct infringement. Areas covered: This analysis covers issues on patent infringement, specifically on divided infringement of diagnostic and method patents. Expert opinion: A retrospective analysis indicates that a large number of cancer diagnostic patents issued during 2005-2014 are potentially vulnerable to read on unauthorized use in the manner of joint performance. Inventors should draft patent claims appropriately to reduce the risk to assert their patents in this regard.