Infringement

Question 1

What acts constitute infringement of a UK patent for a product?

Answer 1

While the patent is in force and without the proprietor’s consent, a person infringes if they make, dispose of, offer to dispose of, use, import, or keep the product in the UK

Question 2

What acts constitute infringement of a UK patent for a process?

Answer 2

While the patent is in force and without the proprietor’s consent, a person infringes if they use the process or offer it for use in the UK when they know, or it’s obvious to a reasonable person, that its use there without consent would be infringement

Question 3

What acts constitute infringement related to a product obtained directly by a patented process?

Answer 3

While the patent is in force and without the proprietor’s consent, a person infringes if they dispose of, offer to dispose of, use, import, or keep any product obtained directly by means of that process in the UK

Question 4

What is indirect or contributory infringement?

Answer 4

Supplying or offering to supply in the UK, without the proprietor’s consent, means relating to an essential element of the invention for putting it into effect, when knowing or it’s obvious these means are suitable for and intended to put the invention into effect in the UK. This does not apply to staple commercial products unless supplied to induce infringement

Question 5

List some exemptions from patent infringement.

Answer 5

Acts done privately and for non-commercial purposes,
acts done for experimental purposes relating to the subject-matter of the invention (including medicinal product assessments),
extemporaneous preparation of medicine in a pharmacy for an individual according to a prescription,
use exclusively for a relevant ship, aircraft, hovercraft, or vehicle temporarily or accidentally in the UK (if registered outside UK),
certain farming uses of harvest product or animal reproductive material,
and studies/tests/trials necessary for market authorisation

Question 6

Where can civil proceedings for patent infringement be brought?

Answer 6

In the court

Question 7

What remedies or claims can a patent proprietor seek in court proceedings for infringement?

Answer 7

An injunction or interdict,
an order to deliver up or destroy patented products, damages,
an account of profits derived from the infringement,
or a declaration that the patent is valid and has been infringed.
Note that damages and an account of profits cannot both be awarded for the same infringement

Question 8

Can questions of patent infringement be decided outside of the court?

Answer 8

Yes, the proprietor and another person can agree to refer the question to the comptroller

Question 9

What remedies can a proprietor seek if an infringement question is referred to the comptroller?

Answer 9

Claims for damages or a declaration that the patent is valid and has been infringed

Question 10

When might damages or an account of profits for infringement not be awarded?

Answer 10

Against a defendant who proves they were not aware, and had no reasonable grounds for supposing, the patent existed at the time of infringement.
This unawareness is not assumed merely from the word “patent” or “patented” on a product unless the patent number or a relevant internet link accompanied it.
They may also be refused for infringement during the renewal fee grace period.

Question 11

What is the effect if a patent is found to be only partially valid during infringement proceedings?

Answer 11

The court or comptroller may grant relief only in respect of the part found to be valid and infringed. Factors like the defendant’s knowledge, the specification’s good faith framing, and the proceedings’ good faith are considered for damages/costs/profits. The court or comptroller may direct the specification be amended

Question 12

Under what circumstances might a person have a right to continue doing an act that would otherwise infringe a patent?

Answer 12

If they, in the UK and before the priority date of the patent, did in good faith the act or made effective and serious preparations to do it. This is known as a prior use right

Question 13

Can an exclusive licensee bring proceedings for infringement?

Answer 13

Yes, an exclusive licensee has the same right as the proprietor to bring proceedings for infringement committed after the date of the license.

Question 14

What rights does a patent applicant have regarding potential infringement after their application is published but before the patent is granted?

Answer 14

The applicant has the same right as if the patent had been granted on the publication date to bring proceedings for damages in respect of any act that would have infringed the patent. However, this right is only enforceable after the patent is granted, and only if the act would have infringed both the granted patent and the claims as they were just before publication preparations were completed

Question 15

How can a person seek a declaration that an act (done or proposed) does not constitute infringement of a patent?

Answer 15

By applying in writing to the proprietor for a written acknowledgment, furnishing full particulars of the act, and the proprietor having refused or failed to provide the acknowledgment. This can be sought in court or before the comptroller

Question 16

What happens if someone falsely represents that a product they dispose of for value is patented?

Answer 16

They can be liable on summary conviction to a fine. Using words like “patent” or “patented” implies the product is patented. This does not apply in certain circumstances after a patent has expired or been revoked

Question 17

Can the validity of a patent be challenged within infringement proceedings?

Answer 17

Yes, the validity of a patent may be put in issue by way of defence in proceedings for infringement

Question 18

What is a “threat of infringement proceedings”?

Answer 18

A communication from which a reasonable recipient would understand that a patent exists and a person intends to bring infringement proceedings (UK or elsewhere) against another person for an act done or to be done in the UK

Question 19

When is a threat of infringement proceedings actionable?

Answer 19

Generally, a threat is actionable by any person aggrieved by it, unless it falls under specific exceptions (e.g., relates only to making/importing a product for disposal or using a process, or is a non-express threat contained in a permitted communication).

Question 20

What are “permitted communications” in the context of threats?

Answer 20

Communications made for a permitted purpose (like giving notice a patent exists, discovering who is doing primary infringing acts like making/importing/using, or giving notice of a right where awareness is relevant to potential proceedings), containing only necessary information the sender reasonably believes is true. Examples of necessary information include stating the patent exists/application is published, accurate patent/right details, and identifying allegedly infringing products/processes.
Certain requests (like ceasing commercial activity or demanding delivery up) are not permitted purposes.

Question 21

What remedies can be sought in proceedings for an actionable threat?

Answer 21

A declaration that the threat is unjustified, an injunction against its continuance, and damages for any loss sustained by the aggrieved person.

Question 22

What is a key defence if proceedings are brought for an actionable threat?

Answer 22

Showing that the act in respect of which proceedings were threatened constitutes, or if done would constitute, an infringement of the patent.

Question 23

Can proceedings for an actionable threat be brought against a professional adviser?

Answer 23

Generally no, if the adviser is acting in a professional capacity, is regulated, is acting on instructions from another person, and identifies that person when making the communication

Question 24

What section of the law defines the meaning of infringement for a patent for an invention?

Answer 24

s.60(1)

Question 25

What section defines the acts constituting infringement for a UK patent for a product?

Answer 25

s.60(1)(a) (also covered by s.60(1) and s.60(3))

Question 26

What section defines the acts constituting infringement for a UK patent for a process?

Answer 26

s.60(1)(b)

Question 27

What section defines the acts constituting infringement related to a product obtained directly by a patented process?

Answer 27

s.60(1)(c)

Question 28

What section covers indirect or contributory infringement by supplying means relating to an essential element of the invention?

Answer 28

s.60(2)

Question 29

What section provides exemptions from patent infringement?

Answer 29

s.60(5)

Question 30

What section covers the exemption for acts done privately and for non-commercial purposes?

Answer 30

s.60(5)(a)

Question 31

What section covers the exemption for acts done for experimental purposes, including medicinal product assessments?

Answer 31

s.60(5)(b) and s.60(6D)

Question 32

What section covers the exemption for extemporaneous preparation in a pharmacy?

Answer 32

s.60(5)(c)

Question 33

What section covers the exemption for the use of an invention on relevant ships, aircraft, hovercraft, or vehicles temporarily or accidentally in the UK (registered outside UK)?

Answer 33

s.60(5)(d), (e), (f) and s.60(7)

Question 34

What section covers the exemption for certain farming uses of harvest product or animal reproductive material?

Answer 34

s.60(5)(g) and s.60(5)(h) (with clarifications in Schedule A2 via s.60(6A))

Question 35

What section covers the exemption for studies, tests, or trials necessary for market authorisation?

Answer 35

s.60(5)(i)

Question 36

What section states that civil proceedings for patent infringement may be brought in the court and lists the possible claims/remedies?

Answer 36

s.61(1)

Question 37

What section allows for a question of infringement to be referred to the comptroller by agreement, and what claims are available in such a reference?

Answer 37

s.61(3), allowing claims under s.61(1)(c) (damages) or (e) (declaration)

Question 38

What section restricts the award of damages or an account of profits against a defendant unaware of the patent, and addresses the effect of merely marking a product "patented"?

Answer 38

s.62(1)

Question 39

What section addresses the refusal of damages or an account of profits for infringement committed during the renewal fee grace period (specified in s.25(4))?

Answer 39

s.62(2)

Question 40

What section deals with relief for infringement of a partially valid patent?

Answer 40

s.63(1)

Question 41

What section grants a right to continue use (prior use right) for acts done or preparations made in good faith before the patent's priority date?

Answer 41

s.64(1)

Question 42

What section grants an exclusive licensee the same right as the proprietor to bring proceedings for infringement committed after the date of the license?

Answer 42

s.67(1)

Question 43

What section covers the applicant's rights to bring proceedings for damages for acts done after publication but before grant, provided certain conditions are met?

Answer 43

s.69(1) and s.69(2)

Question 44

What section allows a person to seek a declaration as to non-infringement from the court or the comptroller?

Answer 44

s.71(1)

Question 45

What section addresses the offence of making an unauthorised claim of patent rights, such as falsely representing a product is patented?

Answer 45

s.110(1)

Question 46

What section provides the grounds on which the court or the comptroller may revoke a patent on application by any person?

Answer 46

s.72(1)

Question 47

What section gives the Comptroller power to revoke patents on his own initiative under specific circumstances (e.g., prior art under s.2(3), or based on a s.74A opinion)?

Answer 47

s.73(1) and s.73(1A)

Question 48

What section deals with the Comptroller's power to revoke a UK patent due to double patenting with an EP(UK) for the same invention?

Answer 48

s.73(2)

Question 49

What section lists the proceedings in which the validity of a patent may be put in issue (e.g., as a defence to infringement)?

Answer 49

s.74(1)

Question 50

What section defines what constitutes a "threat of infringement proceedings"?

Answer 50

s.70(1)

Question 51

What section states that a threat of infringement proceedings is actionable by any aggrieved person, subject to exceptions?

Answer 51

s.70A(1)

Question 52

What section defines a "permitted communication" which is not actionable as an express threat (and not actionable if it's a non-express threat)?

Answer 52

s.70B(1)

Question 53

What section lists the remedies that can be sought in proceedings for an actionable threat (declaration, injunction, damages)?

Answer 53

s.70C(1)

Question 54

What section provides the key defence in proceedings for an actionable threat, based on showing that the threatened act constitutes or would constitute an infringement?

Answer 54

s.70C(3)

Question 55

What section states that proceedings for an actionable threat cannot be brought against a professional adviser if certain conditions are met?

Answer 55

s.70D(1)

Question 56

What is the territorial scope of s60?

Answer 56

UK, the Isle of Man and territorial waters. The Channel Islands are dependent territories but not part of the UK.

Question 57

Experiments with what goal are an exception to infringement?

Answer 57

A scientific or technical goal, those with with a marketing or sales goal are not.

Question 58

What is the acronym for direct infringement of a product patent?

Answer 58

MUDOIK Making Using Dispose Offer to dispose Import Keep

Question 59

What are the statutory exceptions/defences from infringement?

Answer 59

An act which would otherwise infringe will not do so if it is done for the following purposes: Private Use – it is done privately and for non-commercial purposes – there cannot be any element of commercial purpose involved. Experimental Use – the act is done for experimental purposes relating to the subject matter of the invention, this includes experiments that are performed to further scientific knowledge and anything done in or for the purposes of a medicinal product assessment, including clinical trials and other studies required for obtaining or varying an authorisation to sell or supply, or offer to sell or supply, a medicinal product in the UK or elsewhere. Extemporaneous preparation of prescription – the preparation of a medicament in a pharmacy for an individual in accordance with a prescription. 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. Agricultural – the use in specified circumstances by a farmer of the product of their harvest, under section 60 (5)(g) of the Patents Act 1977, or the use of breeding stock or other animal reproductive material constituting or containing the patented invention sold to the farmer by the patentee or with his consent, for agricultural purposes, under section 60(5)(h). 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 Article 13 of the EU Directive of 2001 on veterinary medicinal products or paragraphs 1 to 4 of Article 10 of the EU Directive of 2001 on medicinal products for human use or any other act which is required for the purpose of the application of those paragraphs. Prior Use - Under section 64 of the Patents Act 1977 if a person in the UK before the priority date of the patent 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 do that act, though they are not permitted to grant a licence 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 his or her business.

Question 60

What is considered to be a patented product?

Answer 60

i. patent product ii. a direct result of a patented process; or iii. a product to which a (relevant) patented process has been applied.

Question 61

A process that produces more reliable CD master-disks only covers what?

Answer 61

The resulting CD master-disks not CDs made using the CD master-disks.

Question 62

What does ‘disposal’ cover?

Answer 62

Selling a product but also giving a product away in promotion or as a sample. Practical tip is to buy the product to prove direct infringement.

Question 63

What are the caveats for the prior use defence to infringement?

Answer 63

Prior Use - Under section 64 of the Patents Act 1977 if a person in the UK before the priority date of the patent 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 do that act, though they are not permitted to grant a licence 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 his or her business.

Question 64

Can a person relying on the prior use defence to infringement grant a licence to an another party, who can then rely on prior use as a defence?

Answer 64

No

Question 65

What is indirect infringement?

Answer 65

a Section 60(2) of the Patents Act defines acts which may not directly involve patented products or processes but would nevertheless be considered infringing acts. Acts of ‘indirect’ infringement occur when, without the consent of the proprietor, a person (or company): supplies or offers to supply in the United Kingdom a person other than a licensee or other person entitled to work the invention with any of the means, relating to an essential element of the invention, for putting the invention into effect when he or she 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 United Kingdom.

Question 66

The proprietor and an alleged infringer may agree to let the UKIPO Comptroller decide the matter of infringement (or not), saving court costs. In such a situation, if the Comptroller determines that infringement has occurred, what remedies are they limited to?

Answer 66

Damages or a declaration of validity and infringement, only. Note: the Comptroller can also decide to just refer a case to the courts.

Question 67

What are some defensive actions to consider if the client is the infringer? (5)

Answer 67

A patentee cannot bring infringement actions in the UK until a patent is granted, and a granted patent must still be in force (e.g. renewal fees paid) when the infringement occurs Check both these conditions. Check whether the infringer is in fact a prior user (see s64), and if so also be seen to check if they have any documentation that may act as prior art. If sensible, request a declaration of non-infringement from the patentee, and if they do not co-operate, then from the comptroller/court, or request an opinion on validity and infringement of the patent from the UKIPO. Offer a settlement, since if a claimant recovers less than was offered prior to proceedings, then they pay full costs. - Therefore, if in a weak position as an infringer and have no alternative, consider offering a sum up front as this encourages settlement and so the avoidance of court costs if payment otherwise looks inevitable. Offer to indemnify commercial clients, customers, etc., if the situation threatens business. Of course, advise that this could be costly if you lose.

Question 68

What are the offensive actions to consider if the client is the infringer?

Answer 68

Consider a prior art search against the patent. Is it in force? Note the infringer can file observations if they know of any details that may affect grant of the patent. However, the patentee has more scope to amend before grant, so consider waiting and bringing revocation or opposition proceedings later. For an EP patent, check whether currently in the opposition period (for up to nine months from notice of grant in EP bulletin). If so, file an opposition where a relevant ground can be determined from the question. For a UK patent, begin revocation proceedings (s72) where a relevant ground can be determined from the question.

Question 69

Damages/ Accounts of Profit are not awarded against a defendant who can prove what?

Answer 69

They can prove they were unaware and had no reasonable grounds to suppose that the patent existed and was in force at the time of the infringement. Mere application of the word ‘patented’ or similar to a product is not enough to confer awareness, unless in conjunction with the patent number or a web link to that number.

Question 70

Can damages be awarded for infringement during a s25(4) (renewal fee grace) period?

Answer 70

Yes, but they are discretionary.

Question 71

When an amendment to a granted patent has been allowed, what is taking into consideration when considering damages for infringement of this patent? (3)

Answer 71

At the date of the infringement, whether the defendant knew or had reasonable grounds to know that he was infringring. Whether the patent as published was prepared in good faith and with reasonable skill and knowledge (e.g. didn’t ignore art), and 3) Whether the current proceedings are brought in good faith. Advise client amend as soon as possible.

Question 72

If the validity of a patent is contested during infringement proceedings and the patent is found to be only partially valid, a court may still grant relief in respect of that part of the patent that is valid and infringed. When awarding damages in these circumstances, the court or Comptroller will take into account what? (3)

Answer 72

When awarding damages in these circumstances, the court or Comptroller will take into account: a. whether the infringer knew or would reasonably suspect they were infringing; b. whether the patent was framed in good faith and with reasonable skill and knowledge (e.g. amended when aware of relevant prior art); c. whether the infringement proceedings themselves were brought in good faith (i.e. did the proprietor believe in the validity of the patent themselves). The awarding of expenses and the date from which damages should be considered to accrue are at the court or comptroller’s discretion. Good faith allows for broad claims but expects timely notification of issues to the patent office (new prior art).