On a case of private use of patented technology

Question

Suppose an artist publishes an artwork in a proprietary patented format (a codec to be specific). Here's some specifics in this situation:

• The artwork itself is fully owned by the said artist, and any source asset the artist acquired are done so legally and in royalty-free format.

• The encoder of the publication format is written by the artist based on publicly-available specification, and the specifications themselves are gratis.

• The publication format is designed by a commercial entity who also sells encoders, which incorporates patents designed by the said commercial entity.

Q: Does the publication of the artwork encoded in the patented format using artist's own encoder infringes on the commercial entity's patent?

Some similar situations I've seen elsewhere:

• The copyright of games built using the Unity3D game engine is owned by the one(s) who wrote the code and created the artworks such as object textures, models, etc. Rather than the Unity company.

  However, gratis version of Unity inserts a vanity splash screen, and Unity charges their users based on their financial capability.

• The copyright of compilers built using meta-compilers (lex, yacc, bison to name a few) are owned by the one(s) that wrote the lexing rules and grammar specification.

_{The said format is Dolby Digital Plus with Dolby Atmos technology}

Answer 1

US answer

There is no private non-commercial exception in US. However to the specific question about publishing - publishing itself is not the infringing act.

You are unlikely to have an actual problem but in the US there is no right to personal, non-commercial use. It would be hard to show much in the way of damages so you do not have a high risk.

I do not think the resulting encoded material is tainted. It is just evidence of the single encoding.

Publishing is not the problem, other than providing evidence of making and using the patented technology.

The activities covered by US patents are making, selling, offering for sale, using and importing.

Creating the encoder would infringe and using the encoder would also infringe the patents if they are as you described.

Answer 2

canada

The Patent Act apparently preserves a common law exception for private use on a non-commercial scale or for a non-commercial purpose. See Patent Act, s. 55.2(6):

For greater certainty, subsection (1) does not affect any exception to the exclusive property or privilege granted by a patent that exists at law in respect of acts done privately and on a non-commercial scale or for a non-commercial purpose.

Il est entendu que le paragraphe (1) n’a pas pour effet de porter atteinte au régime légal des exceptions au droit de propriété ou au privilège exclusif que confère un brevet en ce qui touche l’usage privé et sur une échelle ou dans un but non commercial.

See also David Vaver, Intellectual Property, 2nd ed. (2011), p. 403:

Acts “done privately” either “on a non-commercial scale” or “for a non-commercial purpose” may apparently occur without infringing any patent. On one view, these activities are “exceptions” from the patent grant. It is, however, more accurate to say that, since the nineteenth century, the patent grant has been interpreted to stop short of catching uses such as those for private amusement or for making models, just as it was so interpreted in relation to experiments and research. ...

...

Presumably, today, a parent could make a stroller for her child or children without worrying about patent infringement. Presumably, too, any private individual could act similarly to benefit herself, her family, and her immediate friends. But once word of her aptitude in making strollers got around and her private hobby started becoming a cottage industry supplying remoter friends and neighbours, her activities would come under the patent.

As in the U.S., as presented by George White, the publishing of the resulting work would not be the infringement—the use would be the infringement, if not for this exception.