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

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 competitor who performs some of the steps in the method but leaves other steps to be performed by arms-length clients – a scenario known as divided performance. The case raised the possibility that divided performance effectively enables a competitor to use a patented method – yet avoid infringement. This article finds that no Australian patent infringement mechanism clearly creates liability for divided performance; however, it also reveals that the seldom invoked, common law mechanism known as procured infringement plausibly does. As a result, this article argues that procured infringement should be codified in the Patents Act 1990 (Cth) to resolve ambiguity surrounding whether it creates liability, thereby generating certainty for the myriad stakeholders who use the patent system.