FD1 - Infringement Flashcards
When is a patent to a product infringed?
A patent to a product is infringed if, while in force, a third party does any of the following without the proprietor’s consent:
(a) Making
(b) Using
(c) Disposing
(d) Offering to dispose
(e) Importing
(f) Keeping the product
MUDOIK!
When is a patent to a process infringed?
A patent to a process is infringed if, while in force, a third party does any of the following without the proprietor’s consent:
(a) Use or offer to use; and
(b) in the UK; and
(c) when it is known or would be obvious that the claim is infringed
All required!
Also MUDOIK for any product directly obtained from the process
What is the test for indirect/secondary infringement?
If a third party:
(a) Supplies or offers to supply
(b) in the UK
(c) an unauthorised person
(d) with any means relating to an essential element of the invention
(e) if the third party knows or it is obvious that those means are suitable for and intended to put the invention into effect
(f) in the UK
All required! May see double territorial requirement written
What is the main defence against indirect/secondary infringement?
If the means is:
(a) a staple commercial product and
(b) is not used to induce an act of primary infringement
What are the exemptions to primary infringement?
- Private, non-commercial use
- Experimental purposes relating to the subject matter of the invention
- Medicine prepared in a pharmacy in response to a prescription
- Use for the needs of a ship/aircraft/vehicle temporarily in UK waters/territory/airspace (must be registered outside UK)
- Certain exempt aircraft lawfully in the UK (and their parts/accessories)
- Farm use - propagating the product of a harvest on own holding
- Farm use - breeding livestock
- Human/veterinary health trials for marketing authorisation
Who must prove infringement?
Patentee - except where the infringement is alleged based on the product of a process. In this case, there is a presumption of infringement based on the existence of a product of a process, and the burden flips
What is a patented product?
A patented product (e.g. a clever CD master disk)
A direct result of a patented process (e.g. a CD master disk produced by a clever process, but not CDs made from the master disk)
A product to which a patented process has been applied (e.g. a CD made clever by a process)
If your client thinks they may infringe, what should be advised?
Freedom to operate search
Consider a declaration of non-infringement
What are the remedies for infringement?
Injunction
Delivery up OR destruction
Damages OR account of profits
Declaration of validity and infringement
If the comptroller is allowed to decide on infringement, what are the remedies?
Damages
Declaration of validity and infringement
Can the comptroller pass a case to the courts?
Yes
Client is patentee - what do we always comment on?
Identify infringers
Whether patent has been granted - we can only enforce a granted patent
If appropriate, include analysing the product/making a test purchase
What type of infringement has occurred?
Apply the tests
Client is patentee - what are possible amicable solutions?
Offer a licence (consider what terms you may offer)
Offer to sell the product/provide a service
Consider cross licensing if the infringer has improved your invention/made a complementary invention
Client is patentee - can we assert rights?
Check patent is in force - have renewal fees been paid?
Evaluate any mentioned prior art
Propose any necessary claim amendments before you assert
Accelerate proceedings if still not granted
Send a copy of the application/patent to the infringer to eliminate ignorance defence (note that this may trigger observations/opposition)
Consider narrowing to a more easily allowed claim and pursuing broader subject matter in a divisional
How can we accelerate an EP?
Request PACE (search and exam)
Request early publication
Pay all fees ASAP (e.g. exam and des fees)
Waive right to a 70(2) communication
Prepare translations early
How can we accelerate a GB?
Request combined search and exam (form required)
Request accelerated prosecution by reason of infringement
Request early publication
How can we accelerate a PCT?
Request early publication
Request early entry into regional phases (and notify relevant offices)
What could we recommend to a small client?
Use the small claims court (if less than £10k)
What is an interim injunction?
An emergency action prior to trial - any delay in request will undermine your case.
Interim injunctions seek to maintain the status quo.
What is the test for an interim injunction?
- A serious case is to be tried
- Potential harm would not be remedied by damages after trial
- There is a balance of convenience
Client is infringing - what do we always comment on?
Identify all possible infringers/patentees
Check patents are in force
Check prior user rights
Run tests
Client is infringing - what amicable solutions exist?
Take a licence
Purchase the product/service
Become a client
Cross licence (in return for no action re. previous actions)
Client is infringing - what defensive actions can we take?
Check that the patent is in force
Check prior user rights
Request declaration of non-infringement (if sensible) from either patentee or comptroller
Request an opinion on validity/infringement from the UKIPO
Offer a settlement - if the patentee gets less in eventual damages, they must pay costs
Offer to indemnify customers/clients
Advise that this could be costly if we lose!
Can damages be awarded for actions during a renewal fee grace period?
Yes - but discretionary
When can damages not be awarded?
When the defendant is an innocent infringer, i.e. they did not know that the product was patented and in force
Does a licence of right limit damages?
Yes - 2x retrospective licence fee
What does the court/comptroller consider when a partially valid patent is infringed?
Did the infringer know or reasonably expect that they were infringing?
Was the patent framed in good faith?
Were infringement proceedings brought in good faith?
What is the test for prior use?
A person before the priority date (which may be the filing date):
(a) in good faith did an act which would have infringed the patent if in force; or
(b) in good faith made serious and effective preparations to do so
may continue to do so but cannot licence others to do so (and cannot do new infringing acts)
Note that a pause in preparations may stop (b) from being used
Can prior use be prior art?
Yes - if made available to public
Can further validity actions be brought after a certificate of validity is issued?
Yes - but an unsuccessful contest of validity would mean that the proprietor is entitled to costs
Can an individual co-owner bring infringement proceedings?
Yes - other co-owners are party to proceedings, but will not be liable for costs unless they take part
Can an exclusive licensee bring infringement proceedings?
Yes - patentee is a party to proceedings but is not liable for costs unless they take part
Can a sole licensee bring infringement proceedings?
No - must bring with proprietor
How can transactions affect remedies?
If infringement occurs before a transaction is registered, costs and expenses will not be awarded unless:
transaction is registered within six months of occurring; or
it can be proved to have been registered as soon as practicable
No effect on damages or accounts of profit
What rights are conferred on publication?
An applicant can bring infringement proceedings for acts which occurred after publication of their application, provided the act infringed both the claims as published and as granted
