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FD1 > 8) Infringement > Flashcards

8) Infringement Flashcards

1
Q

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…]

A
  1. In force
  2. United Kingdom
  3. Consent
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2
Q

What are the infringing acts for a product according s60(1)(a)? MODUIK

A
  1. Make
  2. Offer to dispose of
  3. Dispose of
  4. Use
  5. Import
  6. Keep
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3
Q

What are the infringing acts for a process according s60(1)(b)? UO

A
  1. Use it
  2. Offer is for use
    –> Where?
    in the UK
    —> Condition?
    When it is know or would be obvious that it would infringe to do so
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4
Q

What are the infringing acts for a process according s60(1)(c)? ODUIK

A
  1. Offer to dispose of
  2. Dispose of
  3. Use
  4. Import
  5. Keep

Any product obtained directly by the process.

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5
Q

“Any product obtained directly by the process”
What is meant by “directly obtained”?

A

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?

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6
Q

What products are considered “patented products”?

A
  1. a patented product
  2. a direct result of a patented process
  3. a product to which a patent process has been applied
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7
Q

What is meant by the de minimis principle RE: material infringement?
Is it applicable?

A

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

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8
Q

In MODUIK, describe what “D” includes

A
  1. Selling
  2. Giving away (promotion or sample)
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9
Q

In MODUIK, describe what “O” excludes

A

“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

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10
Q

In MODUIK, in which case does “I” not count as an Infringing act?

A

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

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11
Q

What are two other names for Contributory infringement?

A
  1. Indirect
  2. Secondary
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12
Q

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…].

A
  1. Supply
  2. Offer to supply
  3. UK
  4. Means relating to an essential element of the invention
  5. Knows or it is obvious
  6. UK
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13
Q

In Contributory Infringement (SO), describe what “O” includes

A

Offer to supply must have a flavour of negotiation
- An advert with price –> yes
- Providing info (tech spec/ data sheets) to a person –> no

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14
Q

What is meant by “double territoriality requirement” RE: Contributory Infringement

A

(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

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15
Q

What is a Defence to Contributory Infringement? SCP

A
  1. 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

  1. If you are supplying a co-owner of an invention - s36(4)
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16
Q

What does staple mean in staple commercial product?

A

Element has at least one other use

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17
Q

What acts are exempted from Infringement - s60(5)

A

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

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18
Q

Where must ships, aircrafts and vehicles be registered to gain Infringement exemption under s60(5)(d&e)?

A

Temporarily = registered outside the UK

Temporarily can include repeated occasions and long stop within the UK (eg a regular ferry service)

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19
Q

Who is the default burden of proof on for infringement?
And in which cases is there a “reversal” of the burden of proof?

A

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.

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20
Q

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?

A

If the patent also contain product per se claims, to that same new product, then the burden of poof stays with the patentee.

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21
Q

What are exempted from being revealed when the alleged infringer is proving that the new product was obtained by an non-infringing process? How?

A

Manufacturing or commercial secrets

Alleged infringer’s non-infringing process can be shown CONFIDENTIALLY during proceeding (excl. patentee) to satisfy reversed BoP

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22
Q

In which territories does UK infringement apply?
Which islands are excluded?

A
  1. UK
  2. Isle of Man
  3. UK territorial waters

Channel Islands are excluded

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23
Q

Who is the importer?

A

The person paying the transport costs

But there can be joint liability from the seller and the buyer

Unless the seller has sold the goods (ie transfer of title of ownership) before they entered the UK

24
Q

What defences exist for infringement?

A
  1. Act is exempt by s60(5) (private, non-commercial, experiments etc.)
  2. Alleged infringer has the consent of the patentee
  3. Rights have been exhausted in EEA
25
Q

What are the different types of patentee’s consent?

A
  1. Indirect
  2. Express
  3. Implied
26
Q

Give a type of Implied Consent? What can implied consent lead to?

A

If patentee delays bringing a infringement action

Can lead to preventing of claiming lack of consent (ie estoppel)

27
Q

Describe when an implied licence happens (not in writing)

A

Ordinary sale of the product allows for use (and/or re-sale) of the product

28
Q

Who can infringe a patent?

A
  1. Anyone who does not have consent of the Proprietor
  2. The Proprietor himself, if he has granted an exclusive licence
29
Q

Where can you sue for infringement?

A
  1. Comptroller (UKIPO)
  2. Patents Court
  3. Intellectual Property Enterprise Court (IPEC)
30
Q

What remedies/ what can you claim from an infringement proceedings at a Court - s61(1)

DADDI-D

A

a) Injunction (to stop defendant from committing infringing act)
b) Delivery up or destruction (of an infringing product)
c) Damages (recover losses of the claimant)
d) OR account of profits (recover benefit from the defendent)
e) Declaration of validity and infringement

31
Q

What remedies/ what can you claim from an infringement proceedings at a UKIPO (c.f. from Court)

A

Only:
c) Damages (recover losses of the claimant)
e) Declaration of validity and infringement

32
Q

When can a claimant start infringement proceedings?

A

After the patent has granted

NB. For damages to be ‘recoverable’ in the period of provisional protection (i.e., post-publication –> pre-grant), claims as published (some) and as granted must BOTH be infringed.

33
Q

What does the Limitation Act refer to for Infringement proceedings?

A

You can sue after a patent has expired, but

You can only claim damages for infringement up to:
- 6 years ago (in England)
- 5 years ago (in Scotland)

34
Q

What is the limit of damages in the small claims track at the IPEC?
What is the advantage of using this court for claims?

A

£10,000

Cheaper than Patent Courts

35
Q

In what 3 situations do Restrictions (Decrease) on recovery of remedies for infringement occur?

Which remedie(s) are affected?

s62

A
  1. Innocent infringement (Damages/AoP)
  2. s25(4) period (Damages/AoP are discretionary)
    aka. if infringing act done during the renewal grace period when the renewal fee were not paid (Intervening period)
  3. Partially valid patent which has been amended (Damages or AoP)
36
Q

In what other 2 situations does a decrease on recovery of remedies for infringement occur?

Which remedie(s) are affected?

A
  1. Licence of Right
    –> damages are limited to 2X the retrospective licence fee
  2. If infringement occured prior to registration of a transaction & the transaction was >6M ago
    –> cannot claim costs/ expenses for proceedings
37
Q

Who is the burden of proof on for the (1) Innocent Infringer restriction?

What are the conditions?

A

On the Alleged Infringer.

He must prove that:

  1. At the date of the infringement
  2. He was not aware, and
  3. Had no reasonable grounds for supposing,
  4. That the patent existed

NB. If infringement is found, damages are backdated to the date of publication - not to the date of notification of the existence of the patent app (by the competitor)

38
Q

What can a patentee do to ensure that the alleged infringer is “aware” that the patent existed, so that he cannot use the Innocent Infringer defence.

What is not enough?

A

Application of the word “PATENTED” to a product is not enough.

Patentee must also provide the patent number/web link.

39
Q

What type of entity is less likely to demonstrate ignorance to pass the ‘Innocent Infringer’ test and get a reduction in Damages/AoP?

A

Less likely = Large companies (who are patent active), as they should have a Competitive Intelligence/ IPD advising them (due diligence)

More likely = SMEs and individuals

40
Q

Where the validity of a patent is put in issue in proceedings for Infringement and it is found that a patent is only partially valid, what 3 points will the Court or Comptroller taken into account when awarding Damages/AoPs?

II GF RSK GF

A
  1. At the date of infringement, did the defendant know or have reasonable grounds to know that he was infringing
  2. Was the patent as published framed in good faith with reasonable skill and knowledge (eg did not ignore prior art)
  3. Are current infringement proceeding brought in good faith?
41
Q

Under what conditions will Damages be awarded for infringement prior to amendment of an infringed claim?

A
  1. If the Court/Comptroller is satisfied that the claim was originally filed in good faith (eg did not ignore prior art)
    &
  2. Infringement fell within the scope the claim in each form (pre and post amendment)
42
Q

If the validity of a patent is put in issue in proceedings for infringement and it is found that the patent is only partially valid, what part of the patent can the Court or Comptroller grant relief in respect of?

A

The part of the patent which is found to be valid and infringed.

43
Q

What may relief for Infringement of a partially valid patent be conditional on?

A
  1. On amending the specification (s75) of the patent to the satisfaction of the Court or the Comptroller
  2. On amending the specification due to Central Limitation of an EP(GB) - Art. 138(3) EPC
44
Q

Complete s64

Where a patent is granted, a person who in the UK before the [1…]
(a) does in [2…] an act which would constitute an infringement of the patent if it were in force, or

(b) makes in good faith [3…] preparations to do such an act, has the right to [4…] notwithstanding the [5…] of the patent.

A
  1. Priority date
  2. Good faith
  3. Effective and Serious
  4. Continue to do the act
  5. Grant
45
Q

From s64 “Right to continue use”, what is the person who can continue the act not allowed to do? Why?

A

Grant a licence to another person to do the act.

Because s64 confers a Personal right

46
Q

In what situation, can the s64 Right to continue use be
1. Assigned
2. Transmitted it (death/dissolution)
3. Authorise partners

A
  1. If the prior act or preparations occurred in the course of a business
  2. Upon the sale of the product (ie rights are exhausted)
47
Q

Is the prior use mentioned in s64 (ie before the PD) public or secret prior use?

A

Secret prior use.

NB. If the act was public, the patent would be invalid, and so infringement would not arise and a user would not need the protection of s.64

48
Q

Would a pause in serious and effective preparations (s64) change anything to the rights?

A

Yes, pausing preparations disqualifies them as “serious and effective” and thus, user has no right to continue use.

49
Q

What type of certificate does a patentee get, if the during proceedings, the contested patent is found to be:
- wholly
OR
-partially
VALID

Who can grant it?

A

A certificate of Contested Validity from the Court or the Comptroller.

50
Q

What is the benefit of getting a certificate of Contested Validity?

A

The patentee’s legal costs will be covered by any claimant claiming subsequent proceedings against the already unsuccessfully contested patent.

Certificate aims to deter multiple/harassing revocation actions

51
Q

In the case, that a patent is jointly owned, can one of the owners initiate infringement proceedings?

A

Yes, but they must make the other owner “party to the proceedings”

The other owner can choose whether they actively take part (inter) or does not (ex parte)

If they take part, the co-owners are jointly liable for costs.

52
Q

In the case, that a patent is licensed out, can the licensee initiate infringement proceedings?

A

It depends.

A sole licensee (which include patentee) cannot bring proceedings by themselves.

An exclusive licensee can bring proceedings relating to an act that occurred after the date of the licence.

Same as for co-owners, excl. licensee must make patentee a party to proceedings, and patentee can chose whether to take part or not (with consequence on joint liability)

53
Q

What does the court/ comptroller take into consideration when awarding Damages/any other relief to the exclusive licensee?

A

Only what is relevant to Exc. Licensee

  • Damages: Loss suffered by the excl. licensee
    OR
  • Account of profits: Profits derived from the infringement of the rights of the excl. licensee
54
Q

Does the Applicant of a published application have a right to bring infringement proceedings for any act occurring btw publication and grant? s69

A

Yes, providing that:
(a) proceeding are begun after the patent has granted
(b) acts would infringe the claims (ind or dep) as originally published + as granted

55
Q

What will the court consider when awarding Damages/AoP for infringing acts occurring btw publication and grant of a patent?

A

Whether it would have been reasonable to expect infringement to occur, given the published contents of the application (even of a dependent claim…)

NB. this is why we do FTOs on published apps (and granted patents)

56
Q

Which claims are considered the “originally published claims” for the purpose of s69?

A

Those which were originally filed (must be in ENG)

However, any claim amendments filed in time before publication are also included.

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