Infringement Flashcards
Section 60(1)
Meaning of direct infringement
(1) Subject to the provisions of this section, a person infringes a patent for an invention if, but only if, while the patent is in force, he does any of the following things in the United Kingdom in relation to the invention without the consent of the proprietor of the patent, that is to say—
(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 he offers it for use in the United Kingdom when he knows, or it is obvious to a reasonable person in the circumstances, that its use there without the consent of the proprietor would be an infringement of the patent;
(c) where the invention is a process, he disposes of, offers to dispose of, uses or imports any product obtained directly by means of that process or keeps any such product whether for disposal or otherwise.
Proctor v Bennis (1887)
‘The right of the patentee does not depend on the defendant having notice that what he is doing is an infringement. If what he is doing is in fact an infringement, even although the defendant acts in the way which …was bona fide or honest …’
As there is no knowledge requirement there is no obligation to warn a person he or she is infringing:
Key words: knowledge, no obligation to warn
As there is no knowledge requirement there is no obligation to warn a person he or she is infringing:
Makes is an ordinary English word and must be contextually construed – whether something is a making (or a repair) is a matter of degree.
Key words: makes
Nestec v Dualit [2013]
Whether the addition of a modular part consitute making the machine is also a matter of degree and fact dependent
Kalman v PCL Packaging [1982]
Disposes of does not extend to throwing away an object (or simply losing possession).
It includes selling and probably hire of the product.
Smith Kline & French v R D Harbottle [1980]
Disposes of does not include deliver or despatch of a product by a warehouse person.
American Cyanamid (Fenbufen) Patent [1990]
There is no infringing act of “exporting” as such
Smith Kline & French Laboratories [1990]
An export is likely to involve another infringing act (such as keeping or disposals).
MBM v William Hill [2002]
In relation to the internet, a use take place in the United Kingdom where a person who makes inputs on a computer is located there.
Sabaf SpA v MFI Furniture [2004]
The person who makes the arrangements for the importation will be treated as an importer.
Smith Kline & French v RD Harbottle [1980]
Keeping means ‘keeping in stock’
McDonald v Graham [1994
“keeping [the product] in stock for the purposes of his business in order to make use of them as and when it would be beneficial to him to do so”
RIM v Inpro Licensing [2006]
Where a process is contained within a computer program then running a computer program will be using the process.
Offering a process for use
(a) an offer to work the process for a person (who takes the products to the factory to be processed);
(b) an offer to sell a person a machine which uses the process; or
(c) selling a person the information to work the process him or herself (akin to a sale of confidential information).
Knowledge element
The knowledge requirement in relation to every aspect of infringement. So if that person reasonably believes:
(a) he or she has consent;
(b) that he or she is not offering the process for use or (c) he or she believes that the activities fall outside the scope of the monopoly
there is no infringement.
Gerber v Lectra [1995]
The word “offer” should not be given a too legalistic meaning.
Pioneer vWarner [1997]
Obtained directly means “without intermediary”
Halliburton Energy v Smith [2005
The further processing of a product obtained by a process where the essential characteristics are maintained does not stop being obtained directly.
Pioneer Electronics v Warner Music [1997]
The test is are the essential characteristics produced by the patented process, rather the essential characteristics of the patented product come from that process.
Obtained directly
The words mean “without intermediary”
The further processing of a product obtained by a process where the essential characteristics are maintained does not stop being obtained directly.
The test is are the essential characteristics produced by the patented process, rather the essential characteristics of the patented product come from that process.
Section 60(2)
Meaning of indirect infringement
(2) Subject to the following provisions of this section, a person (other than the proprietor of the patent) also infringes a patent for an invention if, while the patent is in force and without the consent of the proprietor, he 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 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.
(3) Subsection (2) above shall not apply to the supply or offer of a staple commercial product unless the supply or the offer is made for the purpose of inducing the person supplied or, as the case may be, the person to whom the offer is made to do an act which constitutes an infringement of the patent by virtue of subsection (1) above.
Qualcomm Inc v Nokia Corpn [2008]
The person must know that
(a) the ‘means’ supplied to put the invention into effect are suitable for putting the invention into effect; and
(b) those means are intended to put the invention into effect.
The time of the knowledge is the time of supply so it does not matter if the person does not go on to put the invention into effect.
Key terms: knowledge requirement for indirect infringement
Ward Building Systems v Hodgson Steel
The knowledge relates to putting the invention into effect, not infringement.
The seller does not need to have knowledge that a patent is in force or that the activity itself is infringing.
Key terms: knowledge requirement for indirect infringement
NAPP v Dr Reddy’s Laboratories [2016]
Where the incidents of infringement are so small they are considered de minimis the courts will not make a finding of infringement
Key terms: de minimis
