Infringement of determining scope of protection

Question 1

What is the most basic rule when determining scope of protection?

Answer 1

When determining the scope of protection of UK/EP patents, the claims must be interpreted in accordance with the Protocol on the Intention of Article 69 EPC.

(Summary) Protocol 1 says that claim interpretation should fall somewhere between an interpretation following the strict, literal meaning of the wording and an interpretation where the claims are treated as serving only as guidance.

Question 2

What test should one follow in determining scope of protection?

Answer 2

Eli Lilly v Actavis UK [2017] UKSC 48

Address the following questions/issues through the eyes of the person skilled in the art:

(i) does the variant infringe any of the claims as a matter of normal interpretation; and, if not,
(ii) does the variant nonetheless infringe because it varies from the invention in a way or ways which is or are immaterial?

If the answer to either issue is “yes”, there is an infringement; otherwise, there is not.

Question 3

What must you consider before answering the first question in the test determine scope of protection?

Answer 3

From ‘Kirin Amgen’:
(1) claim must be given a purposive construction rather than a purely literal one: what would the skilled person have understood the claim to mean?

[purposive interpretation involves reading the claim through the eyes of the skilled person while keeping in mind the purpose of the invention]

From ‘Virgin Atlantic Airways’:
While the claim must be interpreted purposively, one is still concerned ultimately with the meaning of the language used–so must take note of language which deliberately limits the claim.

Question 4

What questions do you need to consider before answering the second question in the test determining scope of protection?

Answer 4

i) Notwithstanding that it is not within the literal meaning of the relevant claim(s) of the patent, does the variant achieve substantially the same result in substantially the same way as the invention, ie the inventive concept revealed by the patent?
ii) Would it be obvious to the person skilled in the art, reading the patent at the priority date, but knowing that the variant achieves substantially the same result as the invention, that it does so in substantially the same way as the invention?
iii) Would such a reader of the patent have concluded that the patentee nonetheless intended that strict compliance with the literal meaning of the relevant claim(s) of the patent was an essential requirement of the invention?

In order to establish infringement in a case where there is no literal infringement, a patentee would have to establish that the answer to the first two questions was “yes” and that the answer to the third question was “no”.

Question 5

What constitutes direct infringement (invention is a product)?

Answer 5

60 Meaning of 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—
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;

Question 6

different types of infringement, which have a knowledge element, how this affects remedies

What is the knowledge requirement for direct infringement of a product?

Answer 6

‘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 …’

There is no obligation to warm the infringer, though warning them could give rise to a threats action or estoppel

Question 7

What constitutes direct infringement (invention a process)?

Answer 7

60 Meaning of 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—

(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.

Question 8

What is the knowledge requirement where invention is a process?

Answer 8

There is no knowledge requirement where person uses product etc. obtained directly from process.

HOWEVER, there is a knowledge requirement when person uses process etc. itself.

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.

Question 9

What is the meaning of indirect infringement?

Answer 9

60 Meaning of 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.

Question 10

What are the rights conferred by publication regarding infringement?

Answer 10

Under section 69:

Where an application for a patent for an invention is published, then the applicant shall have, as from the publication and until the grant of the patent, the same right as he would have had, if the patent had been granted on the date of the publication of the application, to bring proceedings in the court or before the comptroller for damages in respect of any act which would have infringed the patent.

An act will only infringe the rights conferred by publication if the relevant act would infringe the patent as granted and any claim in the patent application in the form immediately before the preparations for the application’s publication were completed

Can only bring proceedings once the patent is granted.

BUT NOTE THAT: The claim itself does not need to be in the same form in both publications for section 69 to apply.

Question 11

What remedies are available re infringement?

Answer 11

Remedies available from the IPEC (section 61(1)):

• –injunction;
• –order to deliver up or destroy the product;
• –damages;
• –an account for profits;
• –declaration that patent is valid and has been infringed by the defendant.

Claimant cannot be awarded both damages and account or profit.

Remedies available before the Comptroller (section 61(3)):

• –damages;
• –declaration that patent is valid and has been infringed by the defendant Note that a case can only be heard by the Comptroller with the consent of both parties.