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

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.