Infringement

Question 1

What are the criteria for direct infringement of a patent relating to an inventive product?

Answer 1

A person infringes a product claim in a patent if, while it is in force (check renewal fees!) they do any of the following in the UK without the proprietor’s consent: makes, offers to dispose, dispose, use, import or keep the product (MODUIK)

NB exporting is not an infringing act

NB “for” in a product claim is interpreted as “suitable for” therefore a claim for “Pyrex for increasing bounce” is construed as a claim for pyrex.

Question 2

What are the criteria for direct infringement of a patent relating to an inventive process?

Answer 2

A person infringes a process claim in a patent if, while it is in force (check renewal fees!) they do any of the following in the UK without the proprietor’s consent:

• use it or offer it for use in the UK when it is known/would be obvious that it would infringe to do so (KNOWLEDGE REQUIRED)
• offer to dispose, dispose, use, import, or keep any product obtained directly by the process

Question 3

When will a product be considered to be ‘obtained directly’ from a patented process?

Answer 3

Encompasses both (i) products made by the process and (ii) products to which the patented product has been applied.

For (ii), consider whether the process has altered the product in some way that it acquires a non-trivial new property which has some unique and testable property.

For both (i) and (ii), if any subsequent process outside the scope of the patent is applied that results in a further alteration, then the product won’t infringe - has the subsequent process materially affected the testable property of the product?

Question 4

Is there a de minimis exclusion available for infringement?

Answer 4

On balance, it appears that there is currently no de minimis principle in the statute or case law.

However there has been one case (Monsanto v Merck) where a one part in a billion patented compound in a product was excused.

Question 5

How is ‘disposal’ interpreted for infringement?

Answer 5

Disposal is more than simply selling and encompasses giving a product away in a promotion or as a sample.

However, merely listing or stocking a product (e.g. in a catalogue or on eBay) may be interpreted as an ‘invitation to treat’ rather than an offer of disposal, in this case:

• Advise client to make a purchase to prove infringement
• It may be possible to get an injunction to prevent sale

Question 6

What is Exhaustion of Rights?

Answer 6

All of a patentee’s right are subject to exhaustion - once a product has been made available in the EEA with the proprietor’s consent.

International exhaustion does not apply e.g. sale in China doesn’t allow import into the EEA.

This is particularly relevant to import. Note that if there is only a UK right and someone makes the product in France, then importation will be infringement as the product was not made available in the EEA with the proprietor’s consent.

Question 7

Who bares the burden of proof in infringement actions?

Answer 7

Usually the proprietor, but

S100(1) - if a patented process creates a new product, the production of the same product by an unathorised party is prima facie evidence of infringement of the process, unless it can be proved to the contrary (‘reversal of burden of proof’).

S100(2) - this burden of proof will not require the second party to reveal commercial secrets if unreasonable to do so

Question 8

What are the criteria for indirect/secondary/contributory infringement?

Answer 8

A person infringes if they supply or offer to supply in the UK an unathorised party with any means relating to an essential element of the invention, if the person knows or is it obvious that those means are suitable for, and intended for, putting the invention into the effect in the UK.

NB double territoriality requirement for indirect infringement - exporting such a means will not infringe (but check protection in other country)

Question 9

What is the exception to indirect infringement set out in s60(3)?

Answer 9

Indirect infringement will not apply if the means relating to an essential element of the invention is a staple commercial product, UNLESS it is used to induce (primary) infringement.

Question 10

What is considered a ‘staple commercial product’ for the purposes of FD1?

Answer 10

Anything that has at least one other legitimate use will generally be considered a staple commercial product.

NB but watch out for statements that it is ‘very rarely used’ or similar

Question 11

How was ‘unathorised party’ interpreted in Nestec v Dualit?

Answer 11

Purchasers of Nespresso machines were not considered to be ‘unathorised users’ so purchase by them of third party capsules (machine-consumable part) was not a secondary infringement by Dualit

NB in this case the capsules were not independently protected - check this.

Question 12

What exceptions to infringement are set out in section 60(5)?

Answer 12

a) private, (immediately) non-commercial acts (e.g. private individuals)
b) experimental purposes relating to the subject-matter of the invention
c) a medicine prepared in a pharmacy in response to an individual’s prescription

(NB a)-c) do not excuse acts under s60(2) except for Crown use and supplying prior inventors/third party rights holders)

d) use for a ship temporarily in UK waters
e) use in an aircraft/vehical temporarily in UK territory/airspace/waters
f) certain exempt aircraft lawfully in the UK, and their parts or accessories
g) farm use: propagating the product of a harvest on own holding
h) farm use: breeding livestock
i) human or veterinary health trials for market authorisation

Question 13

What sorts of experiments fall under the s60(5) exemption?

Answer 13

Scientific/technical goal = acceptable

Experiments can ultimately have a commercial purpose but excludes:

• ‘demonstration’ or ‘comparison’ for third parties (=advertising)
• experiments for the immediate purpose of generating revenue
• experiments to test the market

Question 14

What vehicles fall under the Section 60(5) exemption?

Answer 14

Ships, aircraft, cars etc. must be registered outside of the UK to fall under the exemption.

NB vehicles not yet registered anywhere won’t fall within the exception.

Question 15

What is the territorial scope of s60?

Answer 15

the UK, Isle of Man and territorial waters

NB the Channel Islands are dependent territories and not part of the UK.

Question 16

What are the important considerations when deciding who is the importer?

Answer 16

Depends where transfer of title of ownership actually happened.

Generally a person paying the transport costs is more likely to be responsible at the point of entry into the UK.

Other parties involved may be joint tortfeasors.

Question 17

Explain consent and implied licences

Answer 17

Owners of patented products have an implied licence to use they product as they wish and re-sell it.

Such consent can be indirect e.g. via a licensee

Implied consent can lead to estoppel e.g. undue delay in bringing actions or implying a lack of intent to enforce rights.

The defendent has the onus of proof in establishing consent.

Question 18

When will repairing a product be considered making?

Answer 18

An owner of a patented product has an implied licence to repair their product.

When considering making v repair:

• Is the part being replaced that part that confers value/inventiveness?
• How big is the part being replaced?
• Is the part being replaced a staple product?
• What is the relative lifespan of that part relative to the rest of the product i.e. does it need replacing often?

If replacing a core element of the invention this may be considered making the product anew = infringement.

FD1 keywording: if act amounts to replacing the inventive concept then it is not repair.

Question 19

How can someone request an opinion from the patent office, and what can they ask about?

Answer 19

A proprietor or anyone else may request an opinion (by filing FORM + FEE) on:

• whether a particular act is or would be an infringement of a patent (in FD1 advise potentially infringing client to get an opinion)
• whether a ptent falls foul of s1(1)(a) or (b)
• whether patent provides a sufficient disclosure
• whether patent application contains added subject-matter
• whether a claim in a granted patent has been broadened
• whether an SPC is invalid

Question 20

When do prior use rights arise?

Answer 20

If a person in the UK, before the priority date of a patent application, in good faith did an act which would infringe the patent if it were in force or in good faith, made serious and effective preparations to do so may continue to do so but cannot licence others.

NB always consider if prior use could act as prior art i.e. was it secret?

Question 21

To what extent can people with prior use rights allow others to do the otherwise infringing act?

Answer 21

s64(2) - if prior use was in the course of business they can:

• authorise partners in the business
• assign the right as part of the business or a part thereof

s64(3) - resulting products can be dealt in freely

Question 22

Who can bring infringement proceedings and what can they ask for?

Answer 22

Civil proceedings may be brought in court by the proprietor of a patent (granted and in force) against an alleged infringer, requesting:

• an injunction restraining D from committing the infringing act
• an order to deliver up or destroy the infringing products
• damages (i.e. recover losses to patentee) or an account of profits (i.e. recover benefits to D) and/or
• a declaration of validity and infringement

Question 23

What is the statute of limitations for damages in infringement cases?

Answer 23

6 years (5 years in Scotland)

Question 24

Can infringement proceedings be brought before the Comptroller?

Answer 24

Yes (cheaper than court), but the Comptroller is only able to award damages and give a declaration of validity and infringement.

The Comptroller can decline to deal with it and refer the case to the court.

Question 25

In FD1, when might you suggest an amicable solution to an infringement action?

Answer 25

Only if this is sensible - if the Q says they’re competitors or had a falling out then it may be inappropriate to advise an amicable solution.

• Offer a licence (particularly if the infringer might be threatning revocation proceedings)
• Offer to sell the relevant product or provide the relevant service
• Cross licence in the event that they have refined your invention or developed a complementary invention

Question 26

What steps can you take to expedite grant of a UK patent application?

Answer 26

• Request combined search and examination
• Request accelerated prosecution by reason of infringement
• Request early publication to obtain s69 rights as soon as possible
• Consider amending the present application narrowly to cover the infringement and file a divisional application to the broader subject-matter

Question 27

What steps can be taken to expedite grant of an EP application?

Answer 27

• Use PACE
• Request early publication
• Pay exam and designation fees early and waive the right to confirm examination
• Prepare translations early and send to the EPO and the desired designation states
• Consider narrowing claims to cover infringing act and filing a divisional application to the broader subject-matter

Question 28

What steps can be taken to expedite a PCT application?

Answer 28

• Request early publication
• Request early entry into the national/regional phase (needs to be accompanied by a request for early processing)

Question 29

When answering an FD1 question where your client’s patent has been infringed what things should you consider?

Answer 29

• Identify the infringers and the infringing acts - suggest analysing the allegedly infringing product and/or buying the product
• Consider amicable solutions
• Check that your patent is granted and enforceable (check renewal fees)
• If you are aware of any new prior art may need to amend before enforcing - not doing so can affect the award of damages
• Consider sending a copy of the patent to ensure no defence of ignorance (primary processes and secondary infringement) - but beware of TPOs or revocation proceedings

Question 30

What are the requirements for an interim injunction?

Answer 30

• There is a serious case to be tried;
• that the potential harm cannot be adequately compensated for by eventual damages won e.g. if your exclusive market position would be damaged
• there exists a balance of convenience: any other details such as relative financial standing of the parties

If all of the above are balanced then the current status quo will be maintained.

An interim injunction will often required a financial cross-undertaking.

Question 31

What are Anton Piler orders and Mareva injunctions?

Answer 31

Anton Piler - search order

Mareva Injunction - a freezing injunction to freeze assets

In exceptional cases, where evidence or monies might be ‘misplaced’ by an infringer these can be granted.

Question 32

Can an alleged infringer view an unpublished patent?

Answer 32

Yes - section 118(4)

Question 33

What defensive actions can an infringing client take?

Answer 33

• Check whether use is in fact prior use - check if client has any documentation that would be considered prior art.
• If sensible request a declaration of non-infringement from the patentee, and if they don’t co-operate then from the Comptroller (or request an opinion)
• If in a weak position, offer a settlement - might be cheaper than court - also if a claimant recovers less than was offered prior to proceedings they pay full costs.
• Offer to indemnify commercial clients, customers etc.
• Check to see if one of the exclusions apply

Question 34

What offensive actions can an infringer take?

Answer 34

• Prior art search
• File TPOs against application (but note this gives applicant more time and scope to amend)
• Start revocation proceedings
• For EPs - use opposition proceedings
  
  • If opposition is ongoing (but window is closed) and an infringement action is brought then infringer can intervenve in opposition and bring new grounds

Question 35

What are the requirements of s69 for a patentee to bring proceedings for actions between publication and grant?

Answer 35

• Proceedings must be begun after the patent has granted, and
• the allegedly infringing act must infringe the claims as originally published and also as granted

When considering damages in these cases, the court will consider whether it was reasonable to expect that infringement would eventually occur given the published contents e.g. if an infringer believed that the originally published application was unrealistic

NB rights will only arise where the publication and granted patent are in English.

Question 36

Scenario:

Your PCT/EP application is in German, but you become aware of an infringer

Answer 36

Can get s69 rights either by:

• Accelerate entry into GB national phase and request early publication of the English spec
• Send a translation directly to the alleged infringer
• For an EP can get a certified translation of the claims published earlier (s78 and 79)

Question 37

What restriction does s62(1) place on the recovery of damages?

Answer 37

Damages/Account of profits are not awarded if D can prove that they were unaware and had no reasonable grounds to suppose that the patent existed and was in force at the time of infringement.

NB Mere use of the word ‘patented’ or similar is not enough, unless in conjunction with the patent number or a web link.

There is a greater presumption that large companies know about patents

Question 38

Can damages be awarded for infringement in a s25(4) grace period?

Answer 38

Yes, but they are discretionary.

Question 39

What additional considerations are there when awarding damages for infringement of a patent that was amended post-grant?

Answer 39

When awarding damages/AOP the court/comptroller will taken account of:

• whether, at the time of infringing, D knew or had reasonable grounds to know, they were infringing
• whether the specification of the patent as published was framed in good faith with reasonable skill and knowledge
• whether proceedings are brought in good faith

Therefore if you need to amend prior to enforcing do so ASAP because it can affect damages

Question 40

Are damages awarded for infringements prior to amendment of a patent?

Answer 40

Typically not, unless the court/Comptroller is satisfied that the claim was originally filed in good faith (didn’t ignore prior art) and the infringement fell within the scope of the claim in each form.

Question 41

Under what circumstances can a declaration non-infringement be obtained?

Answer 41

The court can order a declaration provided:

• the person seeking the declaration has written to the proprietor requesting a declaration AND providing full particulars of their activities, and
• the proprietor has refused or failed to give acknowledgement

The Comptroller can also give such a declaration, but if in so doing he finds the patent invalid this is not binding on any future infringement proceedings (such a finding of invalidity won’t lead to revocation - requires s72 proceedings).

The court can provide a declaration at the end of infringement proceedings without a seperate process

Question 42

Can damages (or other relief) still be granted if a patent is found to be partially invalid?

Answer 42

Yes, under s63(1) the court may still grant relief in respect of the valid part of the patent if infringed.

Under s63(3), relief may be conditional on amending the patent under s75 to recover partial validity

Question 43

What are the considerations when awarding damages for a partially valid patent?

Answer 43

• Knowledge/reasonable suspicion of the infringer that he was infringing
• Whether or not the patent was published/prepared in good faith with reasonable skill and knowledge (i.e. amended when aware of prior art)
• Whether infringement proceedings were brought in good faith (i.e. did the patentee believe their patent to be valid?)

The awarding of damages, and from which date, are at the Comptroller’s/court’s discretion.

Question 44

Scenario:

Client’s EP(GB) patent is found to be partially valid during infringement proceedings

Answer 44

Client can apply to the EPO to centrally limit the patent - see A105A - this is more cost effective than doing so in each country seperately.

Under s63(4) - the court can grant relief following central limitation

Question 45

What is the benefit of obtaining a certificate of contested validity?

Answer 45

Certificates of contested validity can be awarded following a finding by the court/Comptroller that a patent is valid or partially valid.

If awarded, in any subsequent proceedings that unsuccessfully challenge validity, the proprietor is entitled to costs from the other party on an ‘indemnity’ basis i.e. also paying the reasonable legal costs of the proprietor.

Question 46

Can co-owners begin infringement proceedings?

Answer 46

Yes, for the purposes of s60 proprietor includes co-owner.

Any co-owner can initiate proceedings - the other co-owner(s) will be made party to the proceedings but will only be liable for costs if they participate.

Question 47

Can licensees begin infringement proceedings?

Answer 47

Only exclusive licencees have the right to bring infringement proceedings, and they can only do so for any act occurring after the date of the licence.

Any damages/relief takes account of the exclusive licensee’s losses.

The proprietor is made party to proceedings (as a nominal defendent) but is not liable for costs unless they take part.

NB the right to bring infringement proceedings for prior infringements can be stipulated in the licence

Question 48

What are the effects of non-registration of a transaction on infringement proceedings?

Answer 48

Where a transaction (assignment/licence) occured and the patent is infringed before the transaction is registered, then the court will not award costs or expenses unless the transaction was registered:

• within 6 months; or
• as soon as practicable thereafter

Question 49

How is the extent of protection of a patent defined?

Answer 49

Defined by the claims as they are interpreted by the description and any drawings.

Question 50

Can a claim encompassing two inventions/embodiments have different priority dates?

Answer 50

Yes

Question 51

How is claim scope interpreted?

Answer 51

S125(3) - protocol on the interpretation of Article 69 EPC, having a provision similar to s125(1), while in force, applies for the purposes of s125(1).

Question 52

Under what circumstances may the UK courts now refer to the contents of a prosecution file when interpreting the claims?

Answer 52

Actavis v Eli Lilly [2017] UKSC 48

Lord Neuberger: the courts may refer to the contents of the prosecution file ‘in limited circumstances’:

• If they clearly resolve a genuine ambiguity; or
• If it would be contrary to the public interest for the contents of the file to be ignored.

Question 53

What are the reformed Improver questions for determining if something is an equivalent?

Answer 53

1. Notwithstanding that it is not within the literal meaning of the claim, does the variant achieve substantially the same result in substantially the same way?
2. If yes, would it be obvious to the skilled person, reading the patent at the priority date, but knowing that the variant achieves substantially the same result, that is does so in substantially the same way?
3. If yes, would such a reader have concluded that the patentee nonetheless intended that strict compliance with the literal meaning of the claim was an essential requirement? IF NO - VARIANT INFRINGES

i.e. need to answer yes, yes, no for variant to count.

This test essentially incorporates a doctrine of equivalents into UK patent law.