8) Infringement Flashcards
Complete s60(1): A person infringes a patent if, while it is [1…], they do any of the following in the [2…] without the proprietor’s [3…]
- In force
- United Kingdom
- Consent
What are the infringing acts for a product according s60(1)(a)? MODUIK
- Make
- Offer to dispose of
- Dispose of
- Use
- Import
- Keep
What are the infringing acts for a process according s60(1)(b)? UO
- Use it
- Offer is for use
–> Where?
in the UK
—> Condition?
When it is know or would be obvious that it would infringe to do so
What are the infringing acts for a process according s60(1)(c)? ODUIK
- Offer to dispose of
- Dispose of
- Use
- Import
- Keep
Any product obtained directly by the process.
“Any product obtained directly by the process”
What is meant by “directly obtained”?
Unchanged by subsequent steps which are not included in the scope of the patent/ process claims
Relevant Q = has there been any material change to the product?
What products are considered “patented products”?
- a patented product
- a direct result of a patented process
- a product to which a patent process has been applied
What is meant by the de minimis principle RE: material infringement?
Is it applicable?
Allowing incidental/ trace infringement to be excused
e.g., if a product contains 10-9 of an infringing part is it excusable (Monsanto v Merck 2000; Monsanto v Cargill 2007)
Currently, no de minimis principle for infringement but could reduce the damages
In MODUIK, describe what “D” includes
- Selling
- Giving away (promotion or sample)
In MODUIK, describe what “O” excludes
“Offering to dispose of” excludes Invitations to treat <– not an infringing act (but still possible to get Injunction remedy)
Practical Advice: Buy the produce to turn O into D
In MODUIK, in which case does “I” not count as an Infringing act?
If there has been Exhaustion of Right
i.e., if imported product has previously been sold with the P’s consent in another EEA country
EoR allows for further distribution and resale of goods
What are two other names for Contributory infringement?
- Indirect
- Secondary
Complete s60(2) [Contributory Infringement]:
A person also infringes a patent if they [1…] or [2…] in the [1…] an unauthorised party with any [4…]
If the person [5…] that those means are suitable for and intended for putting the invention into effect in the [6…].
- Supply
- Offer to supply
- UK
- Means relating to an essential element of the invention
- Knows or it is obvious
- UK
In Contributory Infringement (SO), describe what “O” includes
Offer to supply must have a flavour of negotiation
- An advert with price –> yes
- Providing info (tech spec/ data sheets) to a person –> no
What is meant by “double territoriality requirement” RE: Contributory Infringement
(i) The supply must in the UK &
(i) The recipient must put into effect in the UK
OR
(i) The offer to supply must be in the UK
no info of recipient when talking about an offer (e.g., advert)
So exporting outside the UK is not Contributory infringement
But, check for GB equivalents in destination territory
What is a Defence to Contributory Infringement? SCP
- Means relating to an essential element of the invention = a Staple Commercial Product –> No Contributory Infringement
Unless in turn, they are used to induce infringement
- If you are supplying a co-owner of an invention - s36(4)
What does staple mean in staple commercial product?
Element has at least one other use
What acts are exempted from Infringement - s60(5)
a) Private, non-commercial acts
b) Experimental purposes relating to the SM of the invention
c) Medicine prepared in the pharmacy for a patient’s prescription
d&e) Use in an ship/aircraft/vehicle temporarily in UK
f) Exempt aircraft lawfully in the UK (+ parts and accessories)
g&f) Propagating farm product + breeding livestock
i) human or veterinary health trials for MAs
Where must ships, aircrafts and vehicles be registered to gain Infringement exemption under s60(5)(d&e)?
Temporarily = registered outside the UK
Temporarily can include repeated occasions and long stop within the UK (eg a regular ferry service)
Who is the default burden of proof on for infringement?
And in which cases is there a “reversal” of the burden of proof?
Default = Patentee
Presumption of guilt on the Alleged infringer –> Reversal
If the patented process creates a new product, the production of the same new product by an unauthorised party is prima facie evidence of infringement, unless it can proved (by AI) to the contrary.
In what situation would there be no reversal of the burden of proof even if the patent related to a process for making a new product?
If the patent also contain product per se claims, to that same new product, then the burden of poof stays with the patentee.
What are exempted from being revealed when the alleged infringer is proving that the new product was obtained by an non-infringing process? How?
Manufacturing or commercial secrets
Alleged infringer’s non-infringing process can be shown CONFIDENTIALLY during proceeding (excl. patentee) to satisfy reversed BoP
In which territories does UK infringement apply?
Which islands are excluded?
- UK
- Isle of Man
- UK territorial waters
Channel Islands are excluded