Permitted acts Flashcards
Smith Kline & French Laboratories v Evans Medical [1989]
An act is not an infringement of the patent provided it is done privately and for purposes which are non-commercial.
‘… the word “privately” includes commercial and non-commercial situations. This word is not, in my view, synonymous with “secret” or “confidential” and would include acts which were secret or confidential or were not. This word appears to me to be used as the opposite of “publicly” and to be used in the sense of denoting that the act was done for the person’s own use …’
The test is, therefore, subjective and so where there is a dual purpose, one purpose being commercial the other being non-commercial, it falls outside the exception.
A person with information which might have a commercial benefit does not turn otherwise non-commercial use into infringing commercial use
‘section 60(5)(b) not only requires the act to be done for experimental purposes, but also that the purposes relate to the subject matter of the invention …the real difficulty arises as to what nexus is required by the words “relating to”. Can it be an indirect relationship, or must it be a direct relationship? The difficulty is best illustrated by an example which was canvassed before me in argument. Supposing a company seeking to investigate a chemical patent either for the purposes of challenging its validity or for the purposes of improving upon the invention of that patent, carries out the process of the patent, using a reagent which is made and marketed by a third party who has patented that reagent. In such circumstances, can the experimenter, relying on sub-section (5)(b), manufacture the reagent without the consent of the patentee of the reagent patent, thereby depriving him of the sale. In my view he cannot. I believe that in the circumstances outlined the experimental purposes relate to the chemical patent and not to the reagent patent. A contrary conclusion would, in practice, deprive the words “relating to the subject matter of the invention” of any meaning as sub-section (5)(b) would apply in all cases where the experiments were carried out which involve the use of an invention’.
Key terms: Private and non-commercial use, subject matter of the invention
Monsanto Co v Stauffer Chemical Co [1985]
‘Experimental’ which is not a term of art and has its normal meaning.
Key terms: Experimental purposes
Corevalve Inc v Edwards Lifesciences AG [2009
Such experiments can have a commercial motive but cannot be for the immediate generation of revenue.
Experiments undertaken solely to demonstrate to a third party that a product works or to provide information to a third party, which can include a regulatory authority, are not experimental use
Key terms: Experimental purposes
Inhale Therapeutic v Quandrant Healthcare plc [2002]
Where the experiment is conducted to exploit and sell technology this cannot be experimental use.
Key terms: Experiments
Auchinloss v Agricultural and Veterinary Supplies Ltd [1999]
The English approach that the subject matter of the patent should be ascertained from examining the patent as a whole.
Key terms: subject matter of the invention
Clinical trials I [1997]
The German courts have adopted a more subjective approach suggesting that the subject matter of the invention is the object of the experimental act. In other words, the subject matter of the invention is determined by the invention experimented on, rather than the patent itself.
Key terms: subject matter of the invention
Meter-Tech Llc & Anor v British Gas Trading Ltd [2016]
Although it is tempting to place a gloss on the statutory wording, in my judgment that would not be appropriate. The evaluation in each case involves consideration of a range of factors of which the following are some:
a. Whether the acts in question are properly characterized as trials and whether those trials can be described as undertaking scientific or development research;
b. Whether the trials were carried out in order to discover something technically unknown or to test a technical hypothesis or whether they were carried out to discover whether the product was commercially acceptable to the market;
c. Whether the trials were intended to find out whether something which was known to work in specific conditions would work in different conditions and, in the case of a system intended to operate on a large scale, whether it was capable of operating on such a scale;
d. Whether the trials were carried out mainly in order to demonstrate or collect information to demonstrate to a third party customer or regulator that a product works – which points away;
e. Whether the purpose of the trial was mainly directly or indirectly to generate revenue as a result of the use of the invention in the trial itself – which points away.
Key terms: research
