Infringment Flashcards
What section deals with infringment
S60
What does S60 deal with?
infringment
conditions for infringment
A patent must be in force and an infringing act must have taken place without the proprietor’s consent
what are infringing acts
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.
What conditions need to be fulfilled for indirect infringement to have occurred?
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.
What is excluded from acts that would otherwise infringe a granted patent?
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
What court can patent infringement proceedings be brought?
IPEC or the High Court
BY
the proprietor of the patent
What can be requested in proceedings for infringement?
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
If both parties choose to allow the comptroler to decide a case of infingement what is allowable
only
Damages
Declaration of validity and infringement.
The proceedings can still pass to the court
what is the time limit for claiming damages from infringement?
limitations act:
6 years in England and wales
5 years Scotland
What does S69 deal with?
Rights arising from a published application
What section deals with rights arising from a published application?
S69
What rights arise from a published application under S69?
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
What does S62 deal with
Restrictions on the recovery of damages
What section deals with restrictions on the recovery of damages?
S62
What defence might a defendant have against damages and an account of profits
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 -
What are considered when awarding damages
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
what might limit damages available to a claimant
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.
What effect does reigistration of a transaction have on infringement proceedings.
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.
What does section 63 apply to?
Relief from infringment of a partially valid patent
What is section 64
Prior use Rights
What section deals with prior use rights
`S64
What rights arrise from prior use?
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
Section 65 deals with what?
Certificate of contested validity
What section deals with a certificate of contested valididty
S65
What effect does certification under S65 bring
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)
Waht does section 66 deal with?
Proceedings for infringement by a co-owner
What section deals with infringement by a co-owner
S66
if a patent is co-owned who my bring infringment proceedings?
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.
What does section 67 deal with?
Proceedings for infringement by exclusive licencees
What section deals with Proceeds for infringement brought by exclusive licencees
S67
What rights does an exclusive license give you?
The exclusive right to carry out the invention
AND
The right to enforce the patent as if the proprietor
If the exclusive licensee of a patent enforces the patent against an infringer what are the effects
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
What is an exclusive licensee
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.
What does section 68 deal with
Effect of non-registration of a license
What section deals with non registration of a license?
S68
How long do parties have to register a license?
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
S69 deals with what
Infringement of rights conferred by publication of an application
What section deals with infringement of rights conferred by publication?
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.
What section deals with a declaration of none infringment
S71
What does S71 deal with?
Declarations or Declarator of non-infringment
What conditions must be fulfilled for a declaration under S71
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
What is the result of requesting a declaration of non-infringment?
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
What does S72 deal with
the power to revoke patents
What section deals with the general power to revok patents?
S72
Who can intervene under S72
any person including the proprietor of the patent
On what grounds can a patent be revoked under S72
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
What are the limitations on revocation under S72(1)(b) entitlement?
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
when can’t an application for revocation be refered to the court?
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
How many application for revocation can a person make?
only one unless given leave by the courts
What effect do revocation proceedings have on the right to challenge validity during infringement proceedings?
no effect. The proceedings can occur in paralell
What grounds can’t be used as grounds for revocation?
Unity and clarity
What effect does revocation under S72 have and how does it different to S29 surrender?
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
What is section 73
The comptrollers power to revolk
What section deals with the comptroller’s power to revolk
S73
On what grounds will the comptroller revolk a patent under S73
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
What does S74 concern?
Proceedings during which validity may be put at issue
what section Proceedings during which validity may be put at issue
S74
What proceedings may allow the validity of a patent to be questioned?
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
What section deals with burden of proof?
S100
Who bears the burden of proof in a product by process infringment?
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
