PA 60 – Meaning of infringement Flashcards
What does S60 concern
the meaning of infringement
What must a patent be to be infringed
S60(1)
A person infringes a PATENT if, WHILE IT IS IN FORCE,
What are direct infringement acts for a product
S60(1) a)
make, offer to dispose, dispose, use, import or keep the product
What are direct infringement acts for a process
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
What are the requirements for indirect or contributory infringement
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
What are exemptions to infringement
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
Which exemptions do not apply for indirect infringement
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.
Are there any restrictions on exemptions
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
Where must ships, aircraft, vehicles etc be registered to be exempt from infringing
S60(7)
they must be registered OUTSIDE THE UK
(i.e. not: registered in the UK ,or not yet registered anywhere)
Where is the onus of proof for infringement
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
What is considered as a patented product
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
what patented process may be applied to a product to make it a patented product?
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
is there a de minimus principle in infringement
in principal, no,
but it will affect considerations of damage and equitable remedies.
What does “disposal” cover
it is broader that merely selling,
it encompasses giving a product away in a promotion or as a sample
What does offering to dispose cover
NOT merely listing or stocking a product which is instead an “invitation to treat” - but could still get an injunction against this.
what does keep not imply
more than being a custodian (i.e. keeping for stock)
which is instead keeping in preparation / readiness to perform one of the other acts
When can infringement by importation apply
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)
What is the double territoriality requirement for indirect infringement
that the SUPPLY AND RECIPIENT are IN THE UK
Does a double territoriality requirement always apply for indirect infringement
No, OFFER to SUPPLY IN THE UK, as this is normally unilateral, it can only be tested for being in he UK
What should an offer to supply be
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
Who are unauthorised parties
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)
What should you consider regarding knowledge and intent
that the law is in flux, so if a question is clear that it exists, say so, but if not , discuss both sides.
What should S60(2) infringement be called
indirect or secondary infringement
as no primary infringement is actually needed, so contributory is misleading.
How do you check if the “induced infringement” criteria for secondary infringement is met
check against direct infringement requirements, as the induced infringement should be a primary infringement under S60(1)
What classifies something as a staple commercial product
the item has at least one other legitimate use
What does non commercial mean for being exempt from infringement
it means immediately non-commercial , i.e. not to sell the product or charge for a service incorporating the process
What experiments are / not exempt
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
What is the territorial scope of S60
the UK, isle of Man, and territorial waters
Where must directly infringing acts take place
within the territorial scope of S60, so the channel islands are not part of this
What should be considered for determining who has potentially infringed
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
What does the offer to supply section of S60(2) allow for
allows for interim injunctions to prevent the double territorial act from actually being performed.
What can be a defence for a would be infinger
consent of an implied licence from the proprietor
How can consent or an implied licence occur
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
What can implied consent lead to
estoppel
Who has the onus of proof for establishing consent in infringement proceedings
A DEFENDENT
How should a core element of the invention be interpreted for working out whether repair is allowable or not
the core element is typically the part which confers its value and inventiveness
What should you do if you are unsure if an act is an invitation to treat or an offer to dispose
advise purchasing the product to provide evidence of infringement
What is the test for infringement by means of equivalence in the UK
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?
What can you do if you are concerned about infringement
1) perform an FTO search (if it is non-specific)
2) consider a declaration of non-infringement (S71 - for a specific patent / competitor)
