PA 60 – Meaning of infringement

Question 1

What does S60 concern

Answer 1

the meaning of infringement

Question 2

What must a patent be to be infringed

Answer 2

S60(1)
A person infringes a PATENT if, WHILE IT IS IN FORCE,

Question 3

What are direct infringement acts for a product

Answer 3

S60(1) a)
make, offer to dispose, dispose, use, import or keep the product

Question 4

What are direct infringement acts for a process

Answer 4

S60(1)
b) USE it or OFFER for use IN THE UK when it is KNOWN of would be OBVIOUS that it would infringe to do so;
c) offer to dispose, dispose, use, import or keep any product obtained DIRECTLY by the process

Question 5

What are the requirements for indirect or contributory infringement

Answer 5

S60(2)
SUPPLY or OFFER to supply
IN THE UK
an UNAUTHORISED party
with MEANS RELATING TO AN ESSENTIAL ELEMENT of the invention,
if the person KNOWS or it would be OBVIOUS that those means are suitable for AND intended for putting the invention into effect IN THE UK

(3) UNLESS the means is a STAPLE COMERCIAL PRODUCT, and is NOT used to INDUCE infringement

Question 6

What are exemptions to infringement

Answer 6

S60(5)
a) private, 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 a prescription
d) use for the needs to a ship temporarily in UK waters
e) use in an aircraft/vehicle temporarily in the UK
f) certain except aircraft lawfully in the UK, and their parts and 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 7

Which exemptions do not apply for indirect infringement

Answer 7

S60(6)
Under a) private, 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 a prescription

EXCEPT for
a) persons supplying the crown
b) persons supplying prior inventors or pre-restoration/instalment rights holder.

Question 8

Are there any restrictions on exemptions

Answer 8

S60
(6A) schedule A1 contains restrictions on farm propagation and provisions for when it is invoked
(6B) breeding of livestock uses include making an animal or animal reproductive material available for the farmer’s agricultural activity BUT NOT sale for commercial reproductive activity

Question 9

Where must ships, aircraft, vehicles etc be registered to be exempt from infringing

Answer 9

S60(7)
they must be registered OUTSIDE THE UK

(i.e. not: registered in the UK ,or not yet registered anywhere)

Question 10

Where is the onus of proof for infringement

Answer 10

Always with the patentee except in the case of a process producing a new product, where the existence of the product causes a presumption of infringement (reversal of burden of proof S100

Question 11

What is considered as a patented product

Answer 11

i) the patented product
ii) a DIRECT result of a patented process, or
iii) a product to which a (relevant) patented process has been applied

Question 12

what patented process may be applied to a product to make it a patented product?

Answer 12

courts construe as being a process that results in some alteration to the product - must have a non-trivial new property as a result of the process. This should be UNIQUE and TESTABLE

NO subsequent process should be applied which results in some alteration of the product

merely delivering cars in a patented lorry will not make the cars patented BUT applying a patented rust-proof treatment ay result in the cars being a patented product

Question 13

is there a de minimus principle in infringement

Answer 13

in principal, no,
but it will affect considerations of damage and equitable remedies.

Question 14

What does “disposal” cover

Answer 14

it is broader that merely selling,
it encompasses giving a product away in a promotion or as a sample

Question 15

What does offering to dispose cover

Answer 15

NOT merely listing or stocking a product which is instead an “invitation to treat” - but could still get an injunction against this.

Question 16

what does keep not imply

Answer 16

more than being a custodian (i.e. keeping for stock)
which is instead keeping in preparation / readiness to perform one of the other acts

Question 17

When can infringement by importation apply

Answer 17

if there has been no exhaustion of rights (i.e. if the imported product had not already been sold with the proprietors consent in another EEA country)

Question 18

What is the double territoriality requirement for indirect infringement

Answer 18

that the SUPPLY AND RECIPIENT are IN THE UK

Question 19

Does a double territoriality requirement always apply for indirect infringement

Answer 19

No, OFFER to SUPPLY IN THE UK, as this is normally unilateral, it can only be tested for being in he UK

Question 20

What should an offer to supply be

Answer 20

it should have a “flavour of a negotiation” so simply providing information about a product (e.g. data sheets or technical specifications) are not offers to supply.
An advert with a price, or providing means to begin a process of acquisition would be an offer to supply

Question 21

Who are unauthorised parties

Answer 21

a consumer who bought a patented product will be classified as an authorised party (Nestec Nespresso pods)
so machine-consumable parts be likely not automatically fall under S60(2)

Question 22

What should you consider regarding knowledge and intent

Answer 22

that the law is in flux, so if a question is clear that it exists, say so, but if not , discuss both sides.

Question 23

What should S60(2) infringement be called

Answer 23

indirect or secondary infringement
as no primary infringement is actually needed, so contributory is misleading.

Question 24

How do you check if the “induced infringement” criteria for secondary infringement is met

Answer 24

check against direct infringement requirements, as the induced infringement should be a primary infringement under S60(1)

Question 25

What classifies something as a staple commercial product

Answer 25

the item has at least one other legitimate use

Question 26

What does non commercial mean for being exempt from infringement

Answer 26

it means immediately non-commercial , i.e. not to sell the product or charge for a service incorporating the process

Question 27

What experiments are / not exempt

Answer 27

experiments can ultimately have commercial purpose for e.g. improving a business, but cannot be mere demonstrations or comparison experiments for third parties as those have the purpose of generating revenue, or experiments to test the market

experiments with a scientific or technical goal are generally allowed, but those with marketing or sales are not

Question 28

What is the territorial scope of S60

Answer 28

the UK, isle of Man, and territorial waters

Question 29

Where must directly infringing acts take place

Answer 29

within the territorial scope of S60, so the channel islands are not part of this

Question 30

What should be considered for determining who has potentially infringed

Answer 30

where the title of ownership has occurred, i.e. overseas or in the UK. If manufactured aboard, who actually did the importing. Consider other parties for joint tortfeasors if they act beyond normal seller/buyer relationship

Question 31

What does the offer to supply section of S60(2) allow for

Answer 31

allows for interim injunctions to prevent the double territorial act from actually being performed.

Question 32

What can be a defence for a would be infinger

Answer 32

consent of an implied licence from the proprietor

Question 33

How can consent or an implied licence occur

Answer 33

can be indirect (e.g. via a licence) or indirect, so consent may be express of implied,
implied licenses to repair will come from the purchase of a product, within limits

Question 34

What can implied consent lead to

Answer 34

estoppel

Question 35

Who has the onus of proof for establishing consent in infringement proceedings

Answer 35

A DEFENDENT

Question 36

How should a core element of the invention be interpreted for working out whether repair is allowable or not

Answer 36

the core element is typically the part which confers its value and inventiveness

Question 37

What should you do if you are unsure if an act is an invitation to treat or an offer to dispose

Answer 37

advise purchasing the product to provide evidence of infringement

Question 38

What is the test for infringement by means of equivalence in the UK

Answer 38

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, 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 39

What can you do if you are concerned about infringement

Answer 39

1) perform an FTO search (if it is non-specific)
2) consider a declaration of non-infringement (S71 - for a specific patent / competitor)