NO - Torbjørn Kvassheim v. research foundation Stiftelsen SINTEF

Torbjørn Kvassheim v. research foundation Stiftelsen SINTEF, contributory infringement/research exception, Norwegian Supreme Court, Oslo, 22 December 2009, Docket. No. HR-2009-2402-A, with thanks to Amund Brede Svendsen, Grette

The Supreme Court majority emphasized that the experimental exception and the right to strive for new knowledge does not mean that a research institution can exploit such knowledge commercially by selling the product based on the new knowledge without incurring liability for any patent infringements. Delivering means for the use of the inventions may constitute a contributory patent infringement, even if the means include or are based on new knowledge acquired by research activities that do not infringe the patent.

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On 22 December 2009 the Norwegian Supreme Court returned its judgment in the case between Torbjørn Kvassheim (Kvassheim) and the research foundation Stiftelsen SINTEF (SINTEF).  Kvassheim (the patentee) had appealed a Court of Appeal judgment in which it had been found that SINTEF could not be liable for contributory patent infringement  for having supplied a customer (the direct infringer) with software developed by them for installation and use in fish counters which the direct infringer used and distributed to end users. The Court of Appeal had found that developing the software was research and as such not an exploitation of the patented invention, and that delivering the results of R&D work that does not fall under the exclusive rights of the patent owner can not be an infringement.

The Supreme Court majority of three justices emphasized that the experimental exception and the right to strive for new knowledge does not mean that a research institution can exploit such knowledge commercially by selling the product based on the new knowledge without incurring liability for any patent infringements. Delivering means for the use of the inventions may constitute a contributory patent infringement according to the Norwegian Patent Act section 3 second subsection, even if the means include or are based on new knowledge acquired by research activities that do not infringe the patent. The said provision of the Norwegian Patents Act is identical to Art. 27 Community Patent Convention.

One should distinguish between the research or experimental work and the exploitation of the patented invention, or the commercial exploitation of essential means of the patented invention in competition with the patentee. By assigning the computer software for consideration, SINTEF exploited the economical value of the patented invention in competition with Kvassheim.

The Supreme Court minority of two justices found that SINTEF’s development work fell within the experimental exemption and that delivering the results of that work was also covered by the exemption.

Read the judgment (in Norwegian) here.