Patent Infringement, Licensing and Remedies

Question 1

What is required to assign a European patent application?

Answer 1

• In writing
• The signature of the parties to the contract
• Registered for it to be recognised by the EPO

For registration:

• A request of an interested party
• The production of documents satisfying the EPO that the transfer has taken place
• The payment of an administrative fee

Question 2

What is an exclusive licensee and what rights do such licensees have?

Answer 2

• The holder of an exclusive license
• An exclusive license is a licence from the proprietor that conferring on the licensee, or on him and persons authorised by him, to the exclusion of all other persons (including the proprietor or applicant), any right in respect of the invention to which the patent or application relates
• They have the right to bring proceedings in respect of any infringement of the patent committed after the date of the licence

Question 3

Explain “loss of sale” with respect to assessing damages for patent infringement used by the English courts.

Answer 3

The sales that the claimant lost as a result of the competing sale of infringing goods (or services) by the defendant

Question 4

Explain “loss licences” with respect to assessing damages for patent infringement used by the English courts.

Answer 4

• Represents a fee that the defendant would have paid for a licence for the use of the rights that they infringed
• Takes into account any licences actually granted and the rates of royalty fixed by them, to estimate their relevance and comparability
• Not necessary to have any actual licensees but only to show that it is the royalty that would have been charged – objective reasonable.

Question 5

Explain “the user principle” with respect to assessing damages for patent infringement used by the English courts.

Answer 5

• A consideration of what sum would have been arrived at in negotiations between the parties had each been making reasonable use of their respective bargaining positions,
• Bear in mind the information available to the parties and the commercial context at the time that notional negotiation should have taken place (at the date of the breach).
• Character traits, such as whether one or other party is easy-going or aggressive, are to be disregarded.

Question 6

What is the purpose of a “choice of court” term in a patent licence?

Answer 6

• The parties to a contract can agree where any dispute under the contract will be heard
• Example “Any dispute between the parties relating to this contract will be heard before the High Court in London”
• This enables the parties to choose the court and matters like the rules of procedures etc.

Question 7

What is the purpose of a “choice of law” term in a patent licence?

Answer 7

• A term of a contract in which the parties specify that any dispute arising under the contract shall be determined in accordance with the law of a particular jurisdiction.
• Example “The law of England shall apply to this agreement”.
• They know what law is likely to be applied to determine questions regarding their rights and obligations under the contract. This, in turn, allows them to analyse their legal position with confidence.

Question 8

What remedies are available for patent infringement before the court?

Answer 8

Remedies available if infringement case heard by the court (DADDI):

• damages
• account of profit
• delivery up of goods
• declaration
• injunction

Question 9

What remedies are available in infringement proceedings before the comptroller?

Answer 9

Remedies available if infringement case heard by comptroller:

• damages,
• declaration

(Source: Manual of patent practice - s.61)

Question 10

In what circumstances can a product patent be infringed?

Answer 10

Only if, whilst the patent is in force any of the following things are done in the UK in relation to the invention without the consent of the proprietor

• makes
• disposes of
• offers to dispose of
• uses
• imports the product
• keeps it whether for disposal or otherwise

Question 11

What remedies are available in infringement proceedings before the Intellectual Property and Enterprise Court?

Answer 11

All the remedies available elsewhere in the High Court can be claimed in the IPEC. These include:

• Preliminary and final injunctions
• Damages
• Account of profits
• Search and seizure orders
• Asset freezing orders
• Orders requiring the dissemination of judgment (such as publication on a website)

(IPEC Guide)

Question 12

When does a communication contain a “threat of infringement proceedings” within the meaning of section 70(1) of the Patents Act 1977?

Answer 12

If a reasonable person in the position of a recipient would understand from the communication that –

• A patent exists, and
• A person intends to bring proceedings (whether in a court in the UK or elsewhere) against another person for infringement of the patent by –
  • An act done in the UK, or
  • An act which, if done, would be done in the UK

Question 13

What must have occurred before the Comptroller will consider an application for a declaration of non-infringement under section 71 of the UK Patents Act?

Answer 13

• A person has applied in writing to the proprietor for a written acknowledgement of the declaration claimed
• That person has furnished the proprietor with full particulars in writing of the act in question; and
• the proprietor has refused or failed to give any such acknowledgement

Question 14

What is the effect of a declaration of non-infringement?

Answer 14

Creates an estoppel against the patentee contending the acts including the article set out in the declaration constitute an infringement of the patent

Question 15

Describe situations in which the ability to file an application for a declaration of non-infringement would be useful to a client.

Answer 15

• May form part of a pre-emptive “clearing the way” strategy
• May be used in a counterclaim to the alleged infringement.
• Create a path to market
• Altering a product after a finding of infringement

Question 16

In the context of the UK Patents Act, discuss infringement of a patent for a process by dealing in a product of the process.

Answer 16

It is an infringement where the invention is a process and one does the following acts for any product obtained directly by means of a patented process

• disposes of,
• offers to dispose of,
• uses or imports
• keeps any such product for disposal or otherwise

“Obtained directly” requires the product alleged to infringe to be the direct and immediate result at the end of applying the patented process without an intermediary.

Question 17

According to Section 60(5), an act which would normally constitute an infringing act does not do so if it meets one or more conditions. List two such conditions.

Answer 17

• Private and non-commercial use
• Experimental purposes relating to invention
• Extemporaneous preparation on prescription
• Visiting ships, aircraft etc.
• Relevant aircraft etc.
• Plant reproductive material
• Bolar exemption

Question 18

What is a “Bolar exemption”

Answer 18

• Allows the use of patented products for the purposes of providing the clinical trial and experimental evidence required for obtaining regulatory approval.
• This allows a pharmaceutical manufacturer to obtain regulatory approval for a generic version of a patented drug prior to the expiry of the patent.
• The manufacturer is therefore able to sell the approved generic drug immediately after expiry of the patent rights which is cheaper for consumers

Question 19

When does a communication contain a “threat of infringement proceedings” within the meaning of section 70(1) of the Patents Act 1977?

Answer 19

Section 70 (1)

A reasonable person in the position of a recipient would understand from the communication that –

• A patent exists, and
• A person intends to bring proceedings (whether in a court in the United Kingdom or elsewhere) against another person for infringement of the patent by –
  
  • An act done in the UK, or
  • An act which, if done, would be done in the UK

Question 20

With reference to the UK Patents Act 1977, what is the meaning of innocent infringement (Section 62 -(Restrictions on recovery of damages for infringement’)

Answer 20

• When the infringer proves he was unaware of the existence of the patent and had no reasonable grounds for supposing the patent existed
• Marking a product with the word ‘patent’ or ‘patented’ is insufficient notice of the existence of the patent unless the patent number is included

Question 21

With reference to section 30(6)(b) of the UK Patents Act, a patent assignment document is void unless two conditions are satisfied. What are these conditions?

Answer 21

…shall be void unless:

• it is in writing and
• is signed by or on behalf of the assignor or mortgagor
• or, in the case of assent or other transaction by a personal representative, by or on behalf of the personal representative

Question 22

Describe the procedure for recording an assignment at the UK Intellectual Property Office.

Answer 22

• File form 21
• Pay the fee
• File evidence sufficient to establish the transaction

Question 23

Describe two potential consequences of a failure to record an assignment within six months of execution

Answer 23

• In infringement proceedings the assignee will not be awarded costs or expenses where the infringement occurred before the assignment was recorded – Section 68;
• A person who acquires the patent application is not affected by the earlier (non-recorded) assignment if he did not know of it– Section 33

Question 24

What defences may a person rely upon if that person is accused of improperly threatening someone with a claim of patent infringement?

Answer 24

• Show the threat is not groundless -A defendant who proves the patent was valid and infringed has a complete defence to a threats claim
• Show that they have taken reasonable steps to find anyone who has carried out, or intends to carry out a primary act but that they have failed

Question 25

When can proceedings be brought for a groundless threat of patent infringement?

Answer 25

A person is able to bring an application for relief even though the threats have not been made against them, providing that he/she can show that they were aggrieved by the threats.

S70A(1)

Question 26

Who may bring a threats action?

Answer 26

Any person aggrieved by a threat may bring a threats action unless one of the below exceptions applies.

(A “person aggrieved” means any person whose commercial interests have been or might be affected by the threat in a real rather than a fanciful way.)

Question 27

When is a threat not actionable.

Answer 27

Action for unjustified threats is not available where the threat is in respect of an allegedly infringing primary act.

• Making a product for disposal
• Importing a product for disposal
• Using a patented process