9) Infringement Flashcards
Section 60
Meaning of Infringement
(1) A person infringes a patent if, while it is in force, he does any of the following in the UK without the proprietor’s consent:
(a) where the invention is a product, he makes, disposes of, offers to dispose of, uses or imports the product or keeps it whether for disposal or otherwise;
(b) where the invention is a process, he uses the process or offers it for use in the UK when he knows or it would be obvious to a reasonable person in the circumstances that it would infringe to do so;
(c) where the invention is a process, he disposes of, offers to dispose of, uses or imports any product obtained directly from that process or keeps any such product whether for disposal or otherwise.
(2) A person also infringes a patent if, while it is in force, he supplies or offers to supply in the UK a person other than a licensee or other person entitled to work the invention with any of the means, relating to an essential element of the invention, for putting the invention into effect when he knows or it would be obvious to a reasonable person in the circumstances that those means are suitable for putting, and are intended to put, the invention into effect in the UK.
(3) Subsection (2) shall not apply to the supply or offer of a staple commercial product to a person unless the supply or offer is made for the purpose of inducing that person to commit an infringement by virtue of subsection (1).
Section 61
Proceedings for Infringement
(1) Civil infringement proceedings may be brought by the proprietor, requesting
(a) an injunction;
(b) an order for the defendant to deliver up or destroy any product that infringes the patent;
(c) damages;
(d) an account of profits;
(e) a declaration that the patent is valid and has been infringed.
(2) Requests for damages and an account of profits are mutually exclusive with respect to the same infringement.
(3) The proprietor and infringer may agree to let the Comptroller decide the matter, in which case the proprietor can only request damages or a declaration.
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(5) It is appears to the Comptroller on a reference under subsection (3) above that the question referred to him would be more properly determined by the court, he may decline to deal with it.
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Section 62
Restriction on Recovery of Damages for Infringement
(1) Damages/an account of profits shall not be awarded against a defendant who proves that at the date of infringement he was not aware, and had no reasonable grounds for supposing, that the patent existed. The mere application of the word “patented” or similar to a product is not enough to stop this defence, unless the number of the patent or a web link accompanies the word(s) in question.
(1A) Said web link must be publicly accessible, must be free of charge, and must clearly associate the product with the patent number.
(2) Damages can be awarded for infringement during the s25(4) renewal fee grace period, but are discretionary.
(3) Where a patent has been amended, the court or Comptroller shall, when awarding damages or an account of profits with regards to an infringement committed before the amendment, take the following into account:
(a) whether at the date of infringement the defendant knew, or had reasonable grounds to know, that he was infringing the patent;
(b) whether the specification of the patent as published was framed in good faith and with reasonable skill and knowledge;
(c) whether the proceedings are brought in good faith.
[This doesn’t change the fact that amendments are retroactive to grant. If the infringement wouldn’t infringe the amended claims, you’re not getting damages in respect of that infringement. Subsection (3) is directed at those infringements which were committed prior to amendment but would also infringe the amended claims. The point of this subsection is that it’s not easy to get damages for an infringement of a claim that was invalid at the time.]
Section 63
Relief for Infringement of Partially Valid Patent
(1) If, during infringement proceedings, the patent is found to be only partially valid, the court or Comptroller may grant relief in respect of that part of the patent which is found to be valid and infringed.
(2) In this case, when awarding damages, costs or an account of profits, the court or Comptroller shall take the following into account:
(a) whether at the date of infringement the defendant knew, or had reasonable grounds to know, that he was infringing the patent;
(b) whether the specification of the patent was framed in good faith and with reasonable skill and knowledge;
(c) whether the proceedings are brought in good faith;
and the costs awarded and the date from which damages or an account of profits should be reckoned are at the discretion of the court or Comptroller.
(3, 4) As a condition of relief, the court or Comptroller may direct that the patent be amended under s75 to recover partial validity, or under central limitation for EP(GB)s.
Section 64
Right to Continue Use Begun Before Priority Date
(1) A person in the UK who, before the priority date,
(a) did in good faith an act which would have infringed the patent were it in force; or
(b) made in good faith effective and serious preparations to do so,
has the right to continue the act or to do the act, but they cannot licence this right to another person.
(2) If the act was done or preparations were made in the course of business, the person entitled to the above right may
(a) authorise the doing of that act by any partners in that business; and
(b) assign that right or transmit it on death (or, in the case of a company, on dissolution) to any person who acquires that part of the business where the act was done or preparations made.
(3) A product disposed of in exercise of the above rights shall be treated as if it were disposed of by the registered proprietor of the patent.
Section 65
Certificate of Contested Validity
(1) If in any proceedings before the court or Comptroller the patent is contested but is found to be wholly or partially valid, a certificate to that effect can be awarded.
(2) If awarded, then in any subsequent proceedings that unsuccessfully contest validity, the proprietor is entitled to costs from the other party on an indemnity basis.
Section 66
Proceedings for Infringement by a Co-Owner
Any co-owner may initiate infringement proceedings and the other co-owners must be made party to the proceedings, but the others are not liable for costs unless they actively take part.
Section 67
Proceedings for Infringement by Exclusive Licencee
(1) The holder of an exclusive licence has the same rights as a proprietor to bring proceedings relating to any act that occurs after the date of the licence.
(2) Relief shall take into account any loss suffered or likely to be suffered by the exclusive licensee.
(3) The proprietor shall be made a party to the proceedings but is not liable for costs unless he takes part.
Section 69
Infringement of Rights Conferred by Publication of Application
(1) Where an application is published, the applicant shall have the same right as he would have had if the patent had been granted on the publication date, to bring infringement proceedings before the court or Comptroller for damages in respect of any act between publication and grant which would have infringed the (eventual) patent.
(2) The applicant will only be so entitled
(a) after the patent has been granted; and
(b) if the act would have infringed the claims as originally published as well as in the final granted patent.
(3) In considering the amount of damages for infringement under this section, the court or Comptroller shall consider whether it would have been reasonable to expect, from a consideration of the published application, that a patent would eventually be granted which would be infringed by the act in question, and if the court or Comptroller finds that it would not have been reasonable, they shall reduce the damages to an amount that is just.
