Infringement

Question 1

What is the terrotorial scope of s60?

Answer 1

UK, the Isle of Man and territorial waters.
The Channel Islands are dependent territories but not part of the UK.

Question 2

Experiments with what goal are an exception to infringement?

Answer 2

A scientific or technical goal, those with with a marketing or sales goal are not.

Question 3

What is the acronym for direct infringement of a product patent?

Answer 3

MUDOIK
Making
Using
Dispose
Offer to dispose
Import
Keep

Question 4

MUDOIK

Answer 4

Making
Using
Dispose
Offer to dispose
Import
Keep

Question 5

What are the statutory exceptions/defences from infringement?

Answer 5

An act which would otherwise infringe will not do so if it is done for the following purposes:

Private Use – it is done privately and for non-commercial purposes – there cannot be any element of commercial purpose involved.

Experimental Use – the act is done for experimental purposes relating to the subject matter of the invention, this includes experiments that are performed to further scientific knowledge and anything done in or for the purposes of a medicinal product assessment, including clinical trials and other studies required for obtaining or varying an authorisation to sell or supply, or offer to sell or supply, a medicinal product in the UK or elsewhere.

Extemporaneous preparation of prescription – the preparation of a medicament in a pharmacy for an individual in accordance with a prescription.

Vessels and Aircraft – the use of the product or process on a ship or aircraft which is temporarily in the airspace or waters of the UK.

Agricultural – the use in specified circumstances by a farmer of the product of their harvest, under section 60 (5)(g) of the Patents Act 1977, or the use of breeding stock or other animal reproductive material constituting or containing the patented invention sold to the farmer by the patentee or with his consent, for agricultural purposes, under section 60(5)(h).

Studies, tests or trials – the act is done in conducting a study, test or trial which is necessary for the application of paragraphs 1 to 5 of Article 13 of the EU Directive of 2001 on veterinary medicinal products or paragraphs 1 to 4 of Article 10 of the EU Directive of 2001 on medicinal products for human use or any other act which is required for the purpose of the application of those paragraphs.

Prior Use - Under section 64 of the Patents Act 1977 if a person in the UK before the priority date of the patent did, in good faith, an act which would constitute infringement of the patent if it were in force, or makes serious preparations to do such an act, then that person has the right to continue to do that act, though they are not permitted to grant a licence to others to do so. If this was done in the course of business then that person is entitled to authorise other members of his or her business to do the act and also to assign the right to do the act to anyone who acquires that element of his or her business.

Question 6

What is considered to be a patented product?

Answer 6

i. patent product
ii. a direct result of a patented process; or
iii. a product to which a (relevant) patented process has been applied.

Question 7

A process that produces more reliable CD master-disks only covers what?

Answer 7

The resulting CD master-disks not CDs made using the CD master-disks.

Question 8

What is the de minimis principle? does it exist?

Answer 8

As a general principle, the law does not concern itself with trifling matters, based on the Latin maxim de minimis non curat lex. Based on this de mimimis principle, it has been commonly understood that a defendant carrying out a triflingly small number of activities within the scope of a claim might avoid liability for patent infringement.

Question 9

What does ‘disposal’ cover?

Answer 9

Selling a product but also giving a product away in promotion or as a sample.

Practical tip is to buy the product to prove direct infringement.

Question 10

What are the caveats for the prior use defence to infringement?

Answer 10

Prior Use - Under section 64 of the Patents Act 1977 if a person in the UK before the priority date of the patent did, in good faith, an act which would constitute infringement of the patent if it were in force, or makes serious preparations to do such an act, then that person has the right to continue to do that act, though they are not permitted to grant a licence to others to do so. If this was done in the course of business then that person is entitled to authorise other members of his or her business to do the act and also to assign the right to do the act to anyone who acquires that element of his or her business.

Question 11

Can a person relying on the prior use defence to infringement grant a licence to an another party, who can then rely on prior use as a defence?

Answer 11

No

Question 12

What are the caveats to the agricultural use defence to infringement?

Answer 12

Agricultural – the use in specified circumstances by a farmer of the product of their harvest, under section 60 (5)(g) of the Patents Act 1977, or the use of breeding stock or other animal reproductive material constituting or containing the patented invention sold to the farmer by the patentee or with his consent, for agricultural purposes, under section 60(5)(h).

Question 13

What are the caveats to the studies, tests or trials defence to infringement?

Answer 13

Studies, tests or trials – the act is done in conducting a study, test or trial which is necessary for the application of paragraphs 1 to 5 of Article 13 of the EU Directive of 2001 on veterinary medicinal products or paragraphs 1 to 4 of Article 10 of the EU Directive of 2001 on medicinal products for human use or any other act which is required for the purpose of the application of those paragraphs.

Question 14

What are the caveats to the Vessels and Aircraft defence to infringement?

Answer 14

Vessels and Aircraft – the use of the product or process on a ship or aircraft which is temporarily in the airspace or waters of the UK.

Does not include vehicles with a UK registration or with NO registration (i.e. open to UK registration).

Question 15

What are the caveats to the Experimental use defence to infringement?

Answer 15

Experimental Use – the act is done for experimental purposes relating to the subject matter of the invention, this includes experiments that are performed to further scientific knowledge and anything done in or for the purposes of a medicinal product assessment, including clinical trials and other studies required for obtaining or varying an authorisation to sell or supply, or offer to sell or supply, a medicinal product in the UK or elsewhere.

Question 16

What are the caveats to the private, non-commerical use defence to infringement?

Answer 16

Private Use – it is done privately and for non-commercial purposes – there cannot be any element of commercial purpose involved.

Question 17

What is the exhaustion defence to infringement?

Answer 17

Exhaustion – once a patentee has dealt in or consented to dealings in goods within the EEA that otherwise would infringe their patent rights, those rights are said to be exhausted. This means that they cannot prevent further circulation of those goods within the EEA, for example via importation into the UK which otherwise would be an infringing act. What the position on exhaustion of rights-based defences will be post-Brexit has yet to be determined.

Question 18

What is the abuse of a dominant position defence to infringement?

Answer 18

Abuse of a dominant position – whilst it is established that the existence of a patent right per se cannot be considered to be an abuse of dominant position under EU competition rules contained in Article 102 of the Treaty on the Functioning of the EU, it has been held that the way in which a patent right is exercised could be considered to be abusive. It has also been held that there could be a defence to infringement where the enforcement of the right assists the patentee in conduct which would be considered abusive under Article 102.

Question 19

What is the Gillette defence to infringement?

Answer 19

In Gillette Safety Razor co v Anglo American Trading Co, the defendant successfully argued that the ‘infringing’ act complained of was actually disclosed in a prior art document. As there was no substantial difference between the prior art and the actions of the defendant the court held that this was a good defence. It should be noted that this case was decided in 1913 and, whilst still technically good law, recent commentary would suggest that in actual fact this is not really a separate defence to infringement, rather an obviousness attack on the validity of the patent.

Question 20

The onus of proof of infringement of a patent is always with the patentee except in what case?

Answer 20

In the case of a process producing a new product, where the existence of the product causes a presumption of infringement (reversal of burden of proof).

Question 21

What tests must be applied to determine indirect infringement? (4)

Answer 21

1.a. Are the supply and recipient in the UK? (exporting out of UK is not covered by a UK patent).

1b. Or, is the offer to supply in the UK?

2. Do the means relate to an essential element of the invention?
3. Is it known, or obvious, that the means suit and are intended for putting the invention into effect in the UK?

If the above tests are met, indirect infringement may have occured, unless the means is a staple product UNLESS they are used to induce infringement.

Question 22

What is indirect infringement?

Answer 22

Section 60(2) of the Patents Act defines acts which may not directly involve patented products or processes but would nevertheless be considered infringing acts. Acts of ‘indirect’ infringement occur when, without the consent of the proprietor, a person (or company):

supplies or offers to supply in the United Kingdom 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 or she knows, or it is 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 United Kingdom.

Question 23

Is providing someone with information about a product such as data sheets or technical specifications constitute an offer to suppy?

Answer 23

No.
There must be a flavour of negiotation.

Question 24

Does indirect infringement apply to owners of Nespresso machines who buy third party pods?

Answer 24

In Nestec v Duralit, Duralit supplied third-party pods whilst Nestec held the patent to the interplay between the specific pods and the nespresso machines. The purchasers of Nespresso machines were held not to be unauthorised users (s60(2) only applies to unauthorised users).

Question 25

What is the knowledge/intent test w.r.t indirect infringement?

Answer 25

If a supplier supplies an essential means with directions to use the means for a non-patented method/product, is this indirect infringement?

If infringement by at least some (supplied) parties in inherent in the supplied means or was forseeable, it is likely to satisfy the requirement for knowledge and intent.

Question 26

What is the ‘double territoriality’ requirement?

Answer 26

Indirect infringement.
s60(2) only covers UK to UK.
Check to make sure the intended recipient is not overseas.

An offer to suppy which clearly targets UK recipients can be unilateral - there does not need to be a proven recipient [but no actual damage likely].

Question 27

How can estoppel occur regarding infringement?

Answer 27

Implied consent can lead to estoppel:
Undue delay in bringing actions (laches) or implying a lack of intent to enforce rights that the defendant then acts upon, can result in estoppel.

Question 28

Who has the onus of proof of establishing if their has been consent?

Answer 28

The defendant.
Note: an implied licence to simply use or re-sell a product arises during an ordinary sale of the product.

Question 29

What are limits of an implied licence to repair?

Answer 29

Schutz v Werit:
The Supreme Court found that it was relevant to assess whether the bottle was a subsidiary part of the patented article when determining whether its replacement, when required, involves ‘making’ a new article or not. Factors taken into accounts included:

the lower life expectancy of the bottle compared to the cage;

the fact that the bottle was easily replaceable; and

the bottle neither including “any aspect of the inventive concept of the Patent”nor “having a function which is closely connected with that concept”.

It thus found that, in this case, the bottle was relatively subsidiary to the patented article. It therefore concluded that, on balance and taking into account the facts of this case, Delta was not ‘making’ the patented product.

This “matter of fact and degree” guidance is good news for spare part manufacturers or resellers as the Court of Appeal decision on this case might have caused them some concern. Some might have for example been worried that repairing any part of a product would be considered as an infringement, even in cases where the part is not related to the inventive concept of the patent. On the other hand, the Supreme Court has not given spare part manufacturers or resellers a licence to freely repair or replace any spare part, and in particular repairs relating to the inventive concept of a patent are less likely to be found allowable. Even though this “matter of fact and degree” is unlikely to be a straightforward point to address (and opposing parties will surely fight this point at length in court), we can now hope that, from a legal definition perspective, the issue of ‘repair’ has now been put to rest in view of the more balanced approach of the Supreme Court in Schütz v Werit.

Question 30

Civil proceedings may be brought by the proprietor of a patent against an alleged infringer, requesting what? (5)

Answer 30

(a) for an injunction or interdict restraining the defendant or defender from any apprehended act of infringement;

(b) for an order for him to deliver up or destroy any patented product in relation to which the patent is infringed or any article in which that product is inextricably comprised;

(c) for damages in respect of the infringement;

(d) for an account of the profits derived by him from the infringement;

(e) for a declaration or declarator that the patent is valid and has been infringed by him.

Question 31

How do requests for damages and accounts of profit relate to one another?

Answer 31

They are mutually exclusive.

Question 32

The proprietor and an alleged infringer may agree to let the UKIPO Comptroller decide the matter of infringement (or not), saving court costs. In such a situation, if the Comptroller determines that infringement has occured, what remedies are they limited to?

Answer 32

Damages or a declaration of validity and infringement, only.

Note: the Comptroller can also decide to just refer a case to the courts (passing the buck).

Question 33

Generally, one can only claim damages for infringements up to how long ago?

Answer 33

6 years, 5 in Scotland.

Question 34

What is the price cap for infringement proceedings in the IPEC?

Answer 34

10k

Question 35

What are the sequence of requirements for getting an interim injunction? (3)

Answer 35

1. There is a serious case to be tried;
2. The potential harm cannot be adequately compensated for by eventual damages won at trial (note therefore that if you have licencees you will probably not get an injunction because a model exists for calculating damages). Damages are unlikely to be adequate if your exclusive market position will be irreparably damaged by entry of a competitor (more often true for pharmaceuticals);
3. There is a balance of convenience - this is a factor enabling the court to take into consideration any other relevant details, such as the releative financial standings of the parties (i.e. avoiding the imposition of possible hardship such as bankruptcy by either granting or not granting the interim injunction.

If all the above points are balanced, then the current status quo will be maintained; hence if the infringer has not yet launched their product, they will be prevented from doing so - but conversely, if they are established in the market then they will be allowed to continue to do so. This is another reason not to delay in requesting an interim injunction.

Question 36

Why are financial cross-undertakings sometimes required when an interim injunction is granted?

Answer 36

To compensate the other side if an interim injunction was wrongly granted; this can be expensive if you want the infringers product to be recalled, and the ability to pay is likely to be a factor in balance of convenience requirement for granting an interim injunction.

Question 37

What can be done if there is a worry that an infringer may ‘misplace’ any evidence or monies?

Answer 37

Complementary forms of interim relief include a search order to search for evidence, and a freezing injunction to freeze assets, although these are only used in exceptional cases.

Question 38

Can an alleged infringer view an unpublished patent application?

Answer 38

Yes, under s118(4)

Question 39

What are some defensive actions to consider if the client is the infringer? (5)

Answer 39

1. A patentee cannot bring infringement actions in the UK until a patent is granted, and a granted patent must still be in force (e.g. renewal fees paid) when the infringement occurs Check both these conditions.
2. Check whether the infringer is in fact a prior user (see s64), and if so also be seen to check if they have any documentation that may act as prior art.
3. If sensible, request a declaration of non-infringement from the patentee, and if they do not co-operate, then from the comptroller/court, or request an opinion on validity and infringement of the patent from the UKIPO.
4. Offer a settlement, since if a claimant recovers less than was offered prior to proceedings, then they pay full costs.
   - Therefore, if in a weak position as an infringer and have no alternative, consider offering a sum up front as this encourages settlement and so the avoidance of court costs if payment otherwise looks inevitable.
5. Offer to indemnify commercial clients, customers, etc., if the situation threatens business. Of course, advise that this could be costly if you lose.

Question 40

What are the offensive actions to consider if the client is the infringer?

Answer 40

1. Consider a prior art search against the patent. Is it in force?
2. Note the infringer can file observations if they know of any details that may affect grant of the patent. However, the patentee has more scope to amend before grant, so consider waiting and bringing revocation or opposition proceedings later.
3. For an EP patent, check whether currently in the opposition period (for up to nine months from notice of grant in EP bulletin). If so, file an opposition where a relevant ground can be determined from the question.
4. For a UK patent, begin revocation proceedings (s72) where a relevant ground can be determined from the question.

Question 41

Damages/ Accounts of Profit are not awarded against a defendant who can prove what?

Answer 41

They can prove they were unaware and had no reasonable grounds to suppose that the patent existed and was in force at the time of the infringement.

Mere application of the word ‘patented’ or similar to a product is not enough to confer awareness, unless in conjunction with the patent number or a web link to that number.

Question 42

Can damages be awarded for infringement during a s25(4) (renewal fee grace) period?

Answer 42

Yes, but they are discretionary.

Question 43

When an amendment to a granted patent has been allowed, what is taking into consideration when considering damages for infringement of this patent? (3)

Answer 43

1. At the date of the infringement, whether the defendant knew or had reasonable grounds to know that he was infringring.
2. Whether the patent as published was prepared in good faith and with reasonable skill and knowledge (e.g. didn’t ignore art), and

3) Whether the current proceedings are brought in good faith.

Advise client amend as soon as possible.

Question 44

What is the key point regarding the ‘innocent infringment’ test of s62(1)?

Answer 44

It relates to being unaware of a patent, rather than being unaware of infringing the patent.

Question 45

Existence of a licence of right limits damages to what?

Answer 45

2x the retrospective licence fee

Question 46

One cannot claim costs or expenses for proceedings relating to infringements occuring prior to registration of a transaction if what?

Answer 46

If that registration was more than six months after the transaction or not ‘as soon as possible’ otherwise.

Question 47

Post-grant, it is preferable to amend under what sections, why?

Answer 47

s27 (general amendment of patent) or A105a EPC (limitation at EPO) rather than s75 (amendment during infringement proceedings) as there is generally more freedom.

Question 48

Since under s62(1) ignorance of a patent is a potential defence against damages, what should be considered if representing the patentee?

Answer 48

Sending the infringer a copy of the patent or application (even if not published) noting that the risk is that this invites observations on an application or revocation/opposition proceedings.

Question 49

If the validity of a patent is contested during infringement proceedings and the patent is found to be only partially valid, may a court still grant relief in respect of that part of the patent that is valid and infringed?

Answer 49

Yes.

When awarding damages in these circumstances, the court or Comptroller will take into account:

a. whether the infringer knew or would reasonably suspect they were infringing;

b. whether the patent was framed in good faith and with reasonable skill and knowledge (e.g. amended when aware of relevant prior art);

c. whether the infringement proceedings themselves were brought in good faith (i.e. did the proprietor believe in the validity of the patent themselves).

The awarding of expenses and the date from which damages should be considered to accrue are at the court or comptroller’s discretion.

Question 50

If the validity of a patent is contested during infringement proceedings and the patent is found to be only partially valid, a court may still grant relief in respect of that part of the patent that is valid and infringed.

When awarding damages in these circumstances, the court or Comptroller will take into account what? (3)

Answer 50

When awarding damages in these circumstances, the court or Comptroller will take into account:

a. whether the infringer knew or would reasonably suspect they were infringing;

b. whether the patent was framed in good faith and with reasonable skill and knowledge (e.g. amended when aware of relevant prior art);

c. whether the infringement proceedings themselves were brought in good faith (i.e. did the proprietor believe in the validity of the patent themselves).

The awarding of expenses and the date from which damages should be considered to accrue are at the court or comptroller’s discretion.

Good faith allows for broad claims but expects timely notification of issues to the patent office (new prior art).

Question 51

If the validity of a patent is contested during infringement proceedings and the patent is found to be only partially valid, a court may still grant relief in respect of that part of the patent that is valid and infringed.

Relief may be conditional on what?

Answer 51

Relief, in these circumstances, may be conditional on amending under s75 to recover the partial validity.

The Comptroller may similarly grant relief following central limitation of an EP(GB) patent by the EPO, as requested by the proprietor.

Question 52

What are the requirements set out in s64(1) regarding prior use? (3)

Answer 52

A person in the UK who, before the priority date (NOT FILING DATE) of a patent’s application:

a. in good faith did an act that would infringe the patent if it had been 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.

[‘continue’ - suggets that significant expansion or divergence from the original act is not alowed]

The resulting products of the act can be dealt in freely.

Question 53

Can prior use rights be licensed?

Answer 53

No, however, the right may be used to authorise partners in the business, and be assigned or bequeathed as part of the business or a part thereof.

Question 54

What does the use of the word ‘continue’ in Section 64: Prior Use suggest? (2)

Answer 54

(a) ‘continue’ - suggets that significant expansion or divergence from the original act is not alowed.

(b) Also assumes that preparations are ongoing, a pause or shelving of preparation may thus suggest they are no longer serious or effective.

Question 55

What is the practical effect of Section 65: Certificate of Contested Validity?

Answer 55

If, during court/Comptroller proceedings, the patent is contested but found to be wholly or partially valid, a certificate to that effect can be awarded.

If awared, then in any subsequent proceedings that unsuccessfully contest validity, the proprietor is entitled to costs from the other party on an ‘indemnity’ basis (instead of a ‘standard’ basis) - i.e. also paying the reasonable costs of the proprietor.

This therefore has the practical effect of deterring multiple, ‘harassing’ revocation proceedings. Certificates are generally issued following unsuccesful revocation proceedings.

Question 56

Damages/ Accounts of Profit are not awarded against a defendant when they can prove what?

Answer 56

When they can prove they were unaware and had no reasonable grounds to suppose that the patent existed and was in force at the time of the infringement.

Mere application of the word ‘patented’ or similar to a product is not enough to confer awareness, unless in conjunction with the patent number or a web link.

Question 57

Can damages be awarded for infringement during a s25(4) (renewal fee grace) period?

Answer 57

Yes but they are discretionary.

Question 58

Can one co-owner of a patent initiate proceedings for infringement alone?

Answer 58

Yes - but the other co-owners must be made party to the proceedings; however the others are not liable for costs unless they actively take part.

Question 59

Can the holder of an exclusive licence bring proceedings for infringement?

Answer 59

Yes - for any act that occurs after the date of the licence.
Damages / Relif take account of the exclusive licensee’s losses.

The proprietor is made party to the proceedings but is not liable for costs unless they take part.
s67

Question 60

Can a sole licensee (which is not exclusive) bring proceedings for infringement?

Answer 60

Yes but only with the consent and involvement of the patentee.
s67

Question 61

What is the effect of non-registration on infringement proceedings?

Answer 61

Where a transaction occured and the patent is then infringed before the transaction is registered (only applies to infringement proceedings), the court or Comptroller will not award costs or expenses for proceedings relating to such infringement unless:

a) the transaction, etc. was registered within six months of occuring, or

b) it can be proved to have been registered as soon as practicable if registered thereafter.

s68

Question 62

What criteria must be met for enforcement of ‘provisional rights’ rights conferred by publication of a patent application? (3)

Answer 62

1) proceedings are begun after the patent has granted, and
2) the act would infringe the claims as originally published as well as in the final granted patent.

3) The publication must have been in English.

The applicant can send an English translation to the alleged infringer and the period of back damages run froms date of receipt of this translation.

There is some latitude for the infringer if it was unclear whether they infringe and to allow some time for them to wind down any infringing activities (case law).

s69