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Consider two inventions: X and X+Y. For the sake of argument, assume that X is not patentable (prior art), but the combination of X+Y is patentable.

The problem: In practice X must be sold by itself. However, the intention would be to use X in combination with Y provided by the end user. For example, X could be a device which performs chemical processing, and Y could be raw material to be processed.

The question: If a company starts selling X with the clear intention of using it in combination with Y, is that sufficient to infringe on a patent claim covering X+Y?

I'm mostly interested in the US but would also be interested in other jurisdictions.

(Comment: In reality I probably can write a more narrow claim covering X', which is similar to X but more specialized towards combination with Y, and consequently narrowed to avoid prior art. I believe that the combination of X in general with Y is patentable, but I don't know if it'll be useful as a claim.)

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  • Does X have a use other than in combination with Y? – Eric S Apr 3 at 20:45
  • @EricS: X has been used with Z for over 100 years, and this is known in the art. – Ignoramus Apr 3 at 22:46
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In this example I will assume that the claim to X+Y is a method/process claim. The end user is the only one who is a direct infringer. If it is an industrial size use then it might be profitable to go after that industrial end user.

If someone sells X for the purpose of using it with Y then it is possible that they can be found to be an indirect infringer. The law is 35 U.S.C. § 271(b) Whoever actively induces infringement of a patent shall be liable as an infringer. Some cases where this worked.

If the claim was to the physical combination of X and Y then the end user is still the direct infringer and the potential indirect infringement would be a seller of X might be accused of is 35 U.S.C. § 271(c) which is much more complicated and would exclude something that was "a staple article or commodity of commerce suitable for substantial non infringing use".

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  • Thanks! This is the sort of information I am looking for. I'm leaning towards writing a method claim right now but think it might work as a product claim too. – Ignoramus Apr 3 at 23:20
  • Addition: it is more or less the same in Germany. – DonQuiKong Apr 4 at 9:21

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