Lecture 5

Question 1

What are the two types of infringement?

Answer 1

Direct and indirect/contributory
Direct arises when an individual carries out any of the exclusive acts in Section 60(1) PA in relation to a protected invention.

Indirect/contributory infringement arises when a person facilitates direct infringement by another Section 60(2) PA

Question 2

What section of PA deals with direct infringement?

Answer 2

Direct arises when an individual carries out any of the exclusive acts in Section 60(1) PA in relation to a protected invention.

Indirect/contributory infringement arises when a person facilitates direct infringement by another Section 60(2) PA

Question 3

What section of PA deals with indirect/contributory infringement?

Answer 3

Direct arises when an individual carries out any of the exclusive acts in Section 60(1) PA in relation to a protected invention.

Indirect/contributory infringement arises when a person facilitates direct infringement by another Section 60(2) PA

Question 4

Under section 60(1) PA, a person infringes a patented product if…

Answer 4

Where the invention is a product, someone infringes if he makes, disposes of, offers to dispose of, uses or imports the product or keeps it for disposal or otherwise.

Question 5

Under section 60(1) PA, a person infringes a patented process if…(2)

Answer 5

Where the invention is a process, someone infringes if he uses the process or he offers it for use in the UK when he knows, or it is obvious to a reasonable man in the circumstances, that its use without the consent of the proprietor would be an infringement of the patent;

OR

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 6

Liability is absolute. In terms of infringement this means what?

Answer 6

The knowledge of the defendant is not relevant when deciding whether they have carried out one of the activities protected by the patent.

However, the intention, while not relevant to the determining of liability, it may be relevant when deciding on the remedies granted by the court.

Question 7

With regards to infringement and the right to repair, what was stated in United Wire v Screen Services?

Answer 7

Repair is one of the concepts (like modifying or adapting) which shares a boundary with “making” but does not trespass on its territory… The right to repair… is a residual right forming part to do whatever does not amount to making the product.

Question 8

What is the relevance of Schutz v Werit for direct infringement?

Answer 8

Placing a Werit bottle in a Schutz cage did not constitute a ‘making’ of the patented article and thus was non-infringing as it was the Schutz cage that was the novel and inventive feature and Delta were not making the cage simply replacing the oft replaced bottles.

Question 9

The owner of a UK patent for a process is given the right to use the process or to offer it for use in the UK, but the right is only infringed where what can be shown?

Answer 9

The right is only infringed where it can be shown that the defendant knew, it would have been obvious to a reasonable person in the circumstances that the unauthorised use of a process would be an infringement of the patent.

Liability is not absolute, the patent owner must prove that the defendant knows, or should have known.

Question 10

Where a patent is granted over a process, the protection includes what? (2)

Answer 10

Both the process (1) in question and the product (2) that results from that process.

Pioneer V Warner Music [1995] RPC 487

Only direct products of the process, without any material or important steps between the process and the product in question.

Warners CDs were derived from the master dicks, but it required using three additional stages of manufacture.

Question 11

What does Section 60(2) of the PA say regarding indirect infringement?

Answer 11

A person… 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 UK… 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 UK.

Question 12

For indirect infringement to take place, what three criteria must be satisfied?

Answer 12

1) the proprietor of the patent must establish that the means supplied by the defendant relate to an essential element of the invention.
2) the supplier must know or it must be obvious to a reasonable person in the circumstances, that the means are both ‘suitable’ for and ‘intended’ to be used in putting the invention in to effect (‘intention’ is not linked to any specific person), i.e. parties that do not knowingly benefit from the misuse of the patent are not caught as indirect infringers.
3) the supply of staple commercial products will not infringe, as there may be legitimate reasons why a person supplies or offers to supply something that enables the means for putting the invention into effect.

Question 13

Grimme V Scott [2010] CA was an example of what?

Answer 13

Indirect infringement.
Patent for rubber rollers, defendant sold machine with steel rollers which were advertised as being easily removable. Held to be contributory/indirect infringement.

Key aspect being that the supplier knew, or it is obvious in the circumstances, that ultimate users will intend to put the invention into effect.

It is not enough merely that the means are suitable for putting the invention into effect.

Question 14

What are the two different approaches to interpreting a claim?

Answer 14

Literal approach [exact words]
Or
Purposive approach [what it means]

Question 15

Prior to implementation of EPC 1973, how did the UK and German approaches to claims interpretation differ?

Answer 15

UK = strict, literal reading. 
Germany = claims act as a guide for determining the scope of the protection. 

In order to harmonise the approaches to claims interpretations, the Protocol on Intepretation of Article 69 EPC 1973 was introduced that provides guidance as to how patent claims should be interpreted.

Question 16

Article 1: ‘General Principles’ of the Protocol on the Interpretation of Article 69 states what?

Answer 16

Article 69 should not be interpreted as meaning that the extent of the protection conferred by a European patent is defined exactly by the strict literal meaning of the wording in the claims but neither should it be taken to mean that the claims serve only as a guideline.

Middle ground.

Question 17

Article 2: ‘Equivalents’ of the Protocol on the Interpretation of Article 69 states what?

Answer 17

For the purpose of determining the extent of protection conferred by a EP patent, due account shall be taken of any element which is equivalent to an element specified in the claims.

Question 18

At the EPO, each claim should be read giving the words the meaning and scope which they normally have in the relevant art, unless what?

Answer 18

Unless in particular cases the description gives the words a special meaning, by explicit definition or otherwise…

The claim should also be read with an attempt to make technical sense out of it. Such a reading may involve a departure from the strict literal meaning of the wording of the claims.

Question 19

Catnic v Hill & Smith was an example of what?

Answer 19

The UK approach to infringement.

Defendants product had a lintel at 84 degrees whilst the patent product had a ‘vertical’ lintel.

A literal interpretation of the claims would have limited the claimants patent to lintels at 90 degree.

A purposive construction approach meant that the PSA would understand that vertical related to the load-bearing capacity of the lintel.

A 6 degree movement led to only a 0.6 percent reduction in the load bearing capacity of the lintel. This meant that the defendants lintel effectively performed the same purpose or function as the claimants.

Question 20

With regards to claim interpretation in the UK, under purposive construction the question to ask is NOT what the patentee said in the claims, but rather…

Answer 20

What the PSA would have understood the patentee to be claiming.

Question 21

Improver v Remington is an example of what?

Answer 21

The UK approach to infringement and how to interpret a claim when there is a functional equivalent.

The patented product claimed a hair removal device using a helical spring whilst the defendants product operated in the same way but used a rubber rod.

Under the literal interpretation the defendants product fell outside of the patent scope.

Question 22

In Improver V Remington, the court should ask itself what three questions?

Answer 22

1) Does the variant have a material effect on the way the invention works? If yes, the variant is outside the claim and does not infringe.
2) Would this (i.e. that the variant had no material effect) have been obvious at the date of the publication of the patent to a reader skilled in the art? If no, the variant is outside the scope of the claim.
3) Would the reader skilled in the art nevertheless have understood from the language of the claim that the patentee intended that strict compliance with the primary meaning was an essential requirement of the invention? if yes, the variant is outside the claim.

Yes to the first two questions but the claim specifically referred to a helical spring and did not mention any other mechanism and thus could not be stretched to include within its meaning a rubber rod.

Question 23

Kirin Amgen v Hoechst is an example of what?

Answer 23

Infringement case.
Considered whether a protein manufactured by gene-activation infringed a patent relating to production of the same protein by recombinant DNA technology.

Take home message was that UK purposive construction is in accordance with the guidance offered by the Protocol. This principle does not give the patentee more than the full extent of the monopoly which the person skilled in the art would think that he was intending to claim - fair protection and reasonable certainty for third parties.

Question 24

Actavis v Eli Lily is an example of what?

Answer 24

One of the most recent changes in the infringement test.

Equivalents.
Patent disclosed/claimed a particular salt, a generic wanted to manufacture other salts, generic was found to infringe but the court reformulated the Improver questions.

Question 25

What are the three reformulated ‘Improver’ questions as a result of Actavis v Eli Lily?

Answer 25

1. Does the variant achieve substantially the same result in substantially the same way as the invention, i.e. the inventive concept revealed by the patent?
2. 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?
3. 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?

Question 26

If it is approved a defendant has performed an activity that falls within the scope of a patent monopoly, what options do the alleged infringer then have? (3)

Answer 26

1) Challenge the validity of the claimant’s patent.
2) Argue that there has been no infringement, because the defendants activities vary significantly from what is contained in the claims and apply to the court for a declaration of non-infringement.
3) Show that the activity is exempted from liability by one of the statutory defences to patent infringement that are available.

Question 27

Under what section of the PA can the validity of a patent be challenged?

Answer 27

Section 74 PA 1)… the validity of a patent may be put in issue - a) by way of defence, in proceedings for infringement of the patent…

Question 28

What is the ‘Gillette Defence’ RE patent infringement?

Answer 28

In Gillette Safety Razor co v Anglo American Trading Co, the defendant successfully argued that the ‘infringing’ act complained of was actually disclosed in a prior art document. As there was no substantial difference between the prior art and the actions of the defendant the court held that this was a good defence. It should be noted that this case was decided in 1913 and, whilst still technically good law, recent commentary would suggest that in actual fact this is not really a separate defence to infringement, rather an obviousness attack on the validity of the patent.

The patentee can attempt to accept a narrower interpretation of the claims so as to exclude the activity in question, or;

Accept the patent covers the prior (anticipitating) activity and thus is invalid for lack of novelty.

Question 29

What are the statutory defences to patent infringement? (7)

Answer 29

1) Private use
2) Experimental use - testing whether the patented invention works (with a view to obtain a license or if there is a belief that the patent is invalid for insufficiency).
3) Extemporaneous preparation of prescription - the preparation of a medicament in a pharmacy for an individual in accordance with a prescription.
4) Vessels and Aircraft - The use of the product or process on a ship or aircraft which is temporarily in the airspace or waters of the UK.
5) Agricultural use in specified circumstances by a farmer of the product of their harvest, under section 60 (5)(g) of the PA 1977 or the use of breeding stock or other animal reproductive material constituting or containing the patented invention sold to the farmed by the patentee or with his consent, for agricultural purposes under section 60(5)(h).
6) BOLAR EXCEPTION Studies, tests or trials - the act is done in conducting a study, test or trial which is necessary for the application of paragraphs 1 to 5 of Art. 13 of EU Directive of 2001 on Vet Med Products or paragraphs 1 to 4 or Art 10 of the EU Directive of 2001 on Med Products for Human use.
7) Prior use - under section 64 of the PA 1977, if a person in the UK before the priority date did, in good faith, an act which would constitute infringement of the patent if it were in force, or makes serious preparations to do such an act, then that person has the right to continue to that act though not to grant a license to others to do so. If this was done in the course of business then that person is entitled to authorise other members of his or her business to do the act and also to assign the right to do the act to anyone who acquires that element of the business.

Question 30

What are the non-statutory defences to patent infringement? (4)

Answer 30

1) Invalidity
2) Exhaustion - once a patentee has dealt in or consented to dealings in goods within the EEA that otherwise would infringe their patent rights, those rights are said to be exhausted. This means that they cannot prevent further circulation of those goods within the EEA, for example via importation into the UK which would otherwise be an infringing act. Brexit impact???

3) Abuse of a dominant position - whilst it is established that the existence of a patent right per se cannot be considered to be an abuse of dominant position under EU competition rules contained in Article 102 of the Treaty of the Functioning of the EU, it has been held that the way in which a patent right is exercises could be considered to be abusive. It has also been held that there could be a defence to infringement where the enforcement of the right assists the patentee in conduct which would be considered abusive under Article 102.
4) Gilette defence.

Question 31

How can Compulsory licences be used in patent infringement defences?

Answer 31

Compulsory licenses are provided for in section 48 of the PA 1977.

In certain circumstances, any person may apply to the UK’s comptroller general of patents, designs and trade marks:

for a license under the patent;
for an entry to be made in the register to the effect that licenses under the patent are to be available as of right; or
where the applicant is a government department, for the grant to any person specified in the application of a licence under the patent.

Question 32

When can compulsory licenses be applied for?

Answer 32

These compulsory licences can be applied for at any time after the expiry of three years, or other prescribed period, from the date of the grant of a patent, and where relevant grounds are met. These grounds include:

where demand for a product is not being met in the UK;
the patentee has refused to grant licences on reasonable terms for the exploitation of an invention which is a technical advance of considerable economic significance.

Question 33

What grounds must be met for a compulsory licence to be applied for?

Answer 33

These compulsory licences can be applied for at any time after the expiry of three years, or other prescribed period, from the date of the grant of a patent, and where relevant grounds are met. These grounds include:

where demand for a product is not being met in the UK;
the patentee has refused to grant licences on reasonable terms for the exploitation of an invention which is a technical advance of considerable economic significance.

Question 34

What key grounds must be met for a defence of experimental use to succeed against patent infringement proceedings?

Answer 34

SKF v Evans
The purposes must relate to the claimed subject-matter of the patent in suit in the sense of having a real and direct connection with the subject-matter.

Example:
A person who wished to test a cure for cancer they had developed by applying it to a genetically modified mouse could not rely on the defence against a claim by the patentee of the mouse.
In this case the experimental purpose is directed towards the cure for cancer not the mouse.
If it was otherwise, the patentee of diagnostic kits would never receive any remuneration because all uses of the kit would be experimental (Bently).

Question 35

Who is the inventor as per Section 7 PA 1977?

Answer 35

The actual deviser of the invention.

The natural person who ‘came up with the inventive concept’

Question 36

What are some examples of non-inventive contribution to a patent that would rule someone out from being named as an inventor? (4)

Answer 36

1) where a party has only contributed ‘unnecessary detail’ to an invention.
2) where a party has merely recognised a potential application of a general idea.
3) managerial or entrepreneurial contributions, such as the provision of money, facilities, materials, support staff.
4) supply of crucial starting materials.

Question 37

Section 36 PA governs co-ownership of patents and applications for patents.
(1) Where a patent is granted to two or more persons, each of them shall, subject to any agreement to the contrary, be entitled to an equal undivided share in the patent.

What things can co-owners do? (1)
What things cant co-owners do? (2)

Answer 37

Co-owners can S.36(2) each of them be entitled to do in respect of the invention concerned without the consent of the others, any act which would amount to an infringement without it being an infringement.

Co-owners cannot S.36(3):

a) amend the specification of the patent or apply for such an amendment to be allowed or for the patent to be revoked;
b) grant a license under the patent or assign or mortgage a share in the patent… or permit security to be granted over it.

In the US this is different, each co-owner can independently grant a license…

Question 38

Section 8 PA states that at any time >before< a patent has been granted for an invention (a) any person may refer to the comptroller the question whether he is entitled to be granted (alone or with any other persons) a patent for that invention.

What can the Comptroller then do? (4)

Answer 38

(a) order that the application shall proceed in the name of that person, either solely or jointly with that of any other applicant, instead of in the name of the applicant or any specified applicant;
(b) where the reference was made by two or more persons, order that the application shall proceed in all their names jointly;
(c) refuse to grant a patent in pursuance of the application or order the application to be amended so as to exclude any of the matter in respect of which the question was referred;
(d) make an order transferring or granting any license or other right in or under the application and give directions to any person for carrying out the provisions of any such order.

Question 39

Section 37 PA deals with instances where a UK patent has been granted to a wrong person. What actions may the Comptroller take in such circumstances? (4)

Answer 39

1) the person referring the issue to the Comptroller may be listed as the proprietor of the patent, or
2) the Comptroller may grant a license to the claimant, or
3) revoke the patent on the ground that it was granted to the wrong person (Section 72 PA),
4) if it is decided that the patent should be revoked, the Comptroller may order the person who made the application to make a new application for a patent

Question 40

Section 37 PA deals with instances where a UK patent has been granted to a wrong person. The Comptroller may take the following actions:

1) the person referring the issue to the Comptroller may be listed as the proprietor of the patent, or
2) the Comptroller may grant a license to the claimant, or
3) revoke the patent on the ground that it was granted to the wrong person (Section 72 PA),
4) if it is decided that the patent should be revoked, the Comptroller may order the person who made the application to make a new application for a patent.

The Comptroller can only transfer the patent or permit the patent reapplication when?

Answer 40

If the reference was made within two years from the date of the grant of the patent.

UNLESS the proprietor of the patent knew they were not entitled to the patent.

Question 41

What happens if an EU patent is to be granted to or was granted to the wrong person?

Answer 41

Not very much as entitlement is determined by national courts.

HOWEVER, the Protocol on Jurisdiction and Recognition in Respect of the Right to a Grant of a European Patent, 5th October 1973 provides that questions about entitlement are only to be heard by one Member State.

Establishes rules to determine which nation has jurisdiction to hear ownership disputes.

Question 42

The Protocol on Jurisdiction and Recognition in Respect of the Right to a Grant of a European Patent, 5th October 1973 established what rules in the absence of an agreement between the applicant and the claimant on jurisdiction?

Answer 42

In the absence of an agreement, the entitlement is to be determined by the law of the country of which the applicant is resident (or place of business).

If the applicant is not an EPC member state, ownership is determined by the tribunal of the (EPC member state) country of the claimant.

If both the applicant and the claimant are not residents in an EPC member state, it is heard by the German courts in Munich.

Question 43

What happens if a EP patent application has been filed by non-entitled persons? (3)

Answer 43

Article 61 provides for instances where EP patent applications have been filed by non-entitled persons:

(1) If by a final decision it is adjusted that a person other than the applicant is entitled to the grant of the European patent, that person may, in accordance with the Implementing Regulations:

(a) prosecute the application as their own;
(b) file a new EP application in respect of the same invention; or
(c) request that the EP application be refused.

Question 44

If the employee is an inventor, in most cases, an invention will belong to the employer by virtue of what Section of the PA?

Answer 44

Section 39 PA

Question 45

If the employee is an inventor, in most cases, an invention will belong to the employer by virtue of Section 39 of the PA.

What are the exceptions? (2)

Answer 45

1) It is not their responsibility to invent as a course of their normal duties (Electrolux ltd v Hudson, Greater Glasgow Health Board, Harris Patent)
2) The invention is in a field outside that of what their normal day job is/wouldnt reasonably have come up with the idea at work.

Question 46

Would the invention of a Director or Senior Manager of a company belong to said company even if it might reasonably be said that their jobs were not to invent/unlikely to result in inventions?

Answer 46

In certain circumstances, an employee’s position within an organisation is such that they are deemed to be under a special obligation to further the interests of their employer.

Section 39(1)(b) PA

While the normal or special duties of an employee may not require them to invent, this is overridden by the fact that their seniority effectively places them under an obligation not to compete with the firm.

Question 47

What section of the PA allows an employee to claim compensation?

What must they show?

Answer 47

Section 40 PA allows an employee to claim compensation if he can show that either the invention, patent or both is of ‘outstanding benefit’ to the employer, taking into account the employer’s size and type of business.

See recent Shanks v Unilever decision 2019 for a successful claim and also the Kelly v GE Healthcare 2009 verdict.

Question 48

Section 41 of the PA deals with amount of compensation for employee inventions.

Compensation payable should represent a fair share of the benefit to the employer of the invention, the patent, or an assignment thereof.

What does this ‘fairness’ depend on?

Answer 48

The ‘fairness’ will depend on many factors including the nature of the employees duties, pay, effort and skill used, the contribution of the employer and of other employees to the invention.