Infringment

Question 1

What section deals with infringment

Answer 1

S60

Question 2

What does S60 deal with?

Answer 2

infringment

Question 3

conditions for infringment

Answer 3

A patent must be in force and an infringing act must have taken place without the proprietor’s consent

Question 4

what are infringing acts

Answer 4

if a patent is for a product:
M anufacture
O ffer for disposal
D ispose of by sale or any other method
U se
K eep
I mport

If a patent is for a process:
use or offer to use the process in the UK when it is KNOWN or it would be OBVIOUS given the circumstances that a patent would be infringed to do so.

If a patent is for a process:
ODUKI any product obtained DIRECTLY from the process.

Question 5

What conditions need to be fulfilled for indirect infringement to have occurred?

Answer 5

S60(2)
The patent must be in force
a person must supply or offer to supply
in the UK a person other than the patentee or licensee
with a means relating to an essential element of the invention
AND
he knows or it would be obvious in the circumstances that the meas are suitable for and intended to put the invention into effect IN THE UK
UNLESS
the means is a staple commercial product available at the priority date of the application unless the supply or offer is made to induce infringement.

Question 6

What is excluded from acts that would otherwise infringe a granted patent?

Answer 6

a) private non commercial
b) Experimental
c) Pharmacist fulfilling a prescription from a doctor for an individual
d) use of a product or process exclusively for the needs of a ship in the body, equipment, tackle or accessories of the ship temporarily in UK waters or territory - must be registered in a foreign country
e) Use of a product or process in the body of an aircraft, hovercraft or vehicle temporarily or accidentally entered or crossing UK territory - must be registered in a foreign country
f) The use of an exempted aircraft that has lawfully entered the UK - or the import, use, keeping of parts or accessories for the aircraft

Question 7

What court can patent infringement proceedings be brought?

Answer 7

IPEC or the High Court
BY
the proprietor of the patent

Question 8

What can be requested in proceedings for infringement?

Answer 8

D elivery up or destruction of infringing items
A ccout of profits
D amages
D eclaration of validity and infringment
I njunction 
c O sts

Question 9

If both parties choose to allow the comptroler to decide a case of infingement what is allowable

Answer 9

only
Damages
Declaration of validity and infringement.
The proceedings can still pass to the court

Question 10

what is the time limit for claiming damages from infringement?

Answer 10

limitations act:
6 years in England and wales
5 years Scotland

Question 11

What does S69 deal with?

Answer 11

Rights arising from a published application

Question 12

What section deals with rights arising from a published application?

Answer 12

S69

Question 13

What rights arise from a published application under S69?

Answer 13

If the patent is GRANTED and IN FORCE
AND
the act infringes the claims as published and the claims as granted damages will be due from publication if the infinger would have been aware
AND
it would have been reasonable to expect that a patent would be granted from the published application

Question 14

What does S62 deal with

Answer 14

Restrictions on the recovery of damages

Question 15

What section deals with restrictions on the recovery of damages?

Answer 15

S62

Question 16

What defence might a defendant have against damages and an account of profits

Answer 16

If the defendant can prove that they were unaware adn had no reasonable grounds to suppose that the patent existed and was in force at the time of infringement.
OR
if the patent was in the grace period for renewals award of damages is discretionary -

Question 17

What are considered when awarding damages

Answer 17

Whether the defendant was aware of the patent (not that he was infringing
If the patent was prepared in good faith i.e. is valid

Question 18

what might limit damages available to a claimant

Answer 18

S46(3) If a patent is registered for licences of right damages are limited to 2x the cost of the license for the infringing period.

Question 19

What effect does reigistration of a transaction have on infringement proceedings.

Answer 19

Registration of a transfer using PF21 ensures that a claimant can be awarded costs in infringment proceedings
BECAUSE
If a transaction is not registered within six months or as soon as practically possible if thereafter. The comptroller/court will not award costs to the claimant in infringment proceedings.

Question 20

What does section 63 apply to?

Answer 20

Relief from infringment of a partially valid patent

Question 21

What is section 64

Answer 21

Prior use Rights

Question 22

What section deals with prior use rights

Answer 22

`S64

Question 23

What rights arrise from prior use?

Answer 23

If a third party before the priortity date of a granted patent did in good faith an act that would infringe the patent if it had been in force or made serious and effective preparations to do so - They may continue but cannot license others to do so.
The right can only be transfered if the right resides in a company and the whole or part of the company in which the right resides is sold
NOTE
this prior use could easily be a prior art if in the public domain

Question 24

Section 65 deals with what?

Answer 24

Certificate of contested validity

Question 25

What section deals with a certificate of contested valididty

Answer 25

S65

Question 26

What effect does certification under S65 bring

Answer 26

If the validity of a patent is contested in court and found to be valid. A certificate of contested validity may be issued AND If in further proceedings for infringement or revocations, the validity is contested and the patent is found to be valid the proprietor is entitled to costs on an indemnity basis not a standard basis (he will be entitled to the costs between himself and his solicitor)

Question 27

Waht does section 66 deal with?

Answer 27

Proceedings for infringement by a co-owner

Question 28

What section deals with infringement by a co-owner

Answer 28

S66

Question 29

if a patent is co-owned who my bring infringment proceedings?

Answer 29

Any one of the joint proprietors my bring proceedings against infringment without the concurrence of the others. The co-owners must be made party to the proceedings, but will not be liable for costs unless they enter an appearance and take part in proceedings.

Question 30

What does section 67 deal with?

Answer 30

Proceedings for infringement by exclusive licencees

Question 31

What section deals with Proceeds for infringement brought by exclusive licencees

Answer 31

S67

Question 32

What rights does an exclusive license give you?

Answer 32

The exclusive right to carry out the invention AND The right to enforce the patent as if the proprietor

Question 33

If the exclusive licensee of a patent enforces the patent against an infringer what are the effects

Answer 33

The proprietor of the patent is made a party to proceedings, however is not liable for costs unless he enters an appearance and takes part in proceedings

Question 34

What is an exclusive licensee

Answer 34

given a licence to the exclusion of all others of "any right" not all rights - eg can be limited geographically eg scotland or only to the exclusive manufacture not sale etc.

Question 35

What does section 68 deal with

Answer 35

Effect of non-registration of a license

Question 36

What section deals with non registration of a license?

Answer 36

S68

Question 37

How long do parties have to register a license?

Answer 37

The comptroller will only award costs or expenses in infringement proceedings brought about by an assignee or exclusive licensee IF The transaction, instrument or event is registered within six months OR IF not within six months as soon as practically possible

Question 38

S69 deals with what

Answer 38

Infringement of rights conferred by publication of an application

Question 39

What section deals with infringement of rights conferred by publication?

Answer 39

A published UK patent or PCT(GB) or EP(GB) shall have from the date of publication to grant the same rights as the granted patent IF The patent is granted and in force AND The infringing act infringes the published claims and the granted claims AND When considering damages for such an infringement the court or the comptroller shall consider whether or not it would have been reasonable to expect a from the application as published for a patent to grant. If not damages shall be reduced as he sees fit.

Question 40

What section deals with a declaration of none infringment

Answer 40

S71

Question 41

What does S71 deal with?

Answer 41

Declarations or Declarator of non-infringment

Question 42

What conditions must be fulfilled for a declaration under S71

Answer 42

For a declaration of non infringement to be issued by a Court or the Comptroller IF The person must have already written to the proprietor of the patent requesting such a declaration AND the proprietor must have either refused or failed to acknowledge the request

Question 43

What is the result of requesting a declaration of non-infringment?

Answer 43

The court or comptroller will provide an opinion on infringment. In doing so they will question the validity of the patent. If the patent is found to be invalid this will not result in revocation unless proceedings are brought under S72

Question 44

What does S72 deal with

Answer 44

the power to revoke patents

Question 45

What section deals with the general power to revok patents?

Answer 45

S72

Question 46

Who can intervene under S72

Answer 46

any person including the proprietor of the patent

Question 47

On what grounds can a patent be revoked under S72

Answer 47

``` PPEAS The invention is not patentable OR The patent was granted to a person not entitled OR Lack of sufficiency OR added matter OR the protection of the patent was extended by an amendment that should not be allowed. ``` ``` P atentability P ostgrant amendment not allowable E ntitlement A dded mattert S ufficiency ```

Question 48

What are the limitations on revocation under S72(1)(b) entitlement?

Answer 48

The person making the intervention must have been found to be entitled to grant of the patent during S71 declaration of non-infringement or S37 post grant entitlement proceedings AND Proceedings must be brought before the second anniversary of the grant of the patent UNLESS the proprietor knew at the point of grant he was not entitled

Question 49

when can't an application for revocation be refered to the court?

Answer 49

When an outstanding application under S27 is outstanding with the Comptroller UNLESS The proprietor agrees OR the comptroller certifies in writing that a court would be more suitable to properly determine the outcome of the proceeings

Question 50

How many application for revocation can a person make?

Answer 50

only one unless given leave by the courts

Question 51

What effect do revocation proceedings have on the right to challenge validity during infringement proceedings?

Answer 51

no effect. The proceedings can occur in paralell

Question 52

What grounds can't be used as grounds for revocation?

Answer 52

Unity and clarity

Question 53

What effect does revocation under S72 have and how does it different to S29 surrender?

Answer 53

Revocation is retroactive, so it is as if the patent never granted. Therefore, licencees may sue for any fees back or any previous damages awarded for infringment may have to be repaid. Surrender of a patent under S29 is not retroactive thus no issue. This is also why an application under S29 is not likely to be granted during any proceedings that may call validity into question

Question 54

What is section 73

Answer 54

The comptrollers power to revolk

Question 55

What section deals with the comptroller's power to revolk

Answer 55

S73

Question 56

On what grounds will the comptroller revolk a patent under S73

Answer 56

S73 exists to prevent double patenting. Thus If a patent is no longer novel by virtue of S2(3) noveltry destroying prior art the comptroller will revolk - but must inform the proprietor and give the opportunity to amend under S75 subject to S76 OR If the validity of the patent is found lacking under S74A opinion of validity OR A patent with the same subject matter, same priority date and same appliant is granted by EP (after opposition period or oppositions finish) IN ALL CASES the proprietor has the opportunity to amend within S76 to make the patent valid/not double patented

Question 57

What does S74 concern?

Answer 57

Proceedings during which validity may be put at issue

Question 58

what section Proceedings during which validity may be put at issue

Answer 58

S74

Question 59

What proceedings may allow the validity of a patent to be questioned?

Answer 59

``` DRATIC S61 & S69 infringement proceedings of a patent or published application OR S70A Actionable threat OR S71 Declaration of none infringement OR S72 Revocation OR S58 disputed crown use AND NO OTHERS ``` DRATIC D eclarations of validity and infringement R evocation proceedings A ctionable T hreats proceedings I nfringment proceedings of a patent or published ap c rown use disputed

Question 60

What section deals with burden of proof?

Answer 60

S100

Question 61

Who bears the burden of proof in a product by process infringment?

Answer 61

If a NEW product is claimed by virtue of the patented method of production. This product shall be deemed to have been made by the patented method unless the defendant can prove otherwise HOWEVER the defendant will not have to reveal any commercial secrets that it is unreasonable to do so