Patents – Infringement of Patent

What is infringement

In general a patent infringement consists of directly or indirectly making use of or putting into practice a patented invention. It is a tort that can be brought against an alleged infringer up to 6 years after the alleged infringing act has taken place.

Whilst it is possible to infringe a patent pending (i.e. one that has been submitted but not granted) it is not possible to sue unless the patent is actually granted. If an infringement occurs during the patent lifetime but the patent has expired it is still possible to sue for the infringement as long as the tort is brought within 6 years of the infringement.

Primary Infringement

Primary infringement is held under Section 60 (1) of the Patents Act 1977, which gives a list of situation where a person would infringe a patent. These provide a list of exclusive rights the patent holder may exercise. The list provided does not allow the holder to actually perform the acts but merely to prevent others from performing the given acts.

The Exclusive Rights – Section 60(1)

The exclusive rights for a patent allow the patent holder to stop certain acts depending on whether the patent relates to a product or a process.

When the invention is a product

The ‘right to make’ gives the holder the right to prevent others from making the product relating to the invention. This does not necessarily give the holder the right to make the product himself. For example a weapons manufacturer may need licences to produce some products it has a patent for. The right to make also cover repairs or modifications made to the patented product, however the precise scope is unclear in the case of modifications and repairs as the courts have suggested a patent only covers the ‘essential element’ of the invention. 

The ‘right to dispose’ is similar to the ‘right to offer’. Both relate to selling the product. The ‘right to dispose’ is the actual act of selling, and the ‘right to offer’ is the act of offering for sale. Both of these rights are exhausted upon the first legitimate sale of the patented product and so the rights do no extend to any subsequent resale of the product.

The ‘right to import’ allows the holder to prevent others from making the patented product in a country where they have no protection and then bringing it into the country where there is protection. This can create an effective monopoly within the protected country although the holder should be aware of competition law should they choose to exclude everybody.

The ‘right to keep’ specifically states “for disposal or otherwise”. This means that if the patent product is in your warehouse without permission of the holder it is an infringement whether or not you intent to sell the product. It should be noted that the use of the product is also specifically given in law as a preventable act.

When the invention is a process

Generally the same rights apply as with the product patents, however is the case of processes there also exists a ‘right to use’ which is the right to stop other performing the patented process or offering the process for use within the UK. There is also a requirement for another party to have knowledge of the patent in order to be actually infringing the ‘right to use’.

Also, if the invention is a process, the holder may prevent another party from disposing, using, importing, offering or keeping a product obtained by the process in the same manner as for product patent claims.

Secondary Infringement

Secondary is held under section 60 (2) of the Patents Act 1977 and relates to supplying or offering to supply any means relating to an essential feature of a patent. In order to win a secondary infringement case it must be shown that the alleged infringer had knowledge that what was supplied was suitable for the invention and that it would be needed to make the infringing invention work. For example, a specific manufacturing machine is required to create a patented product without the manufacturing machine being patented itself. Using the manufacturing machine to create the patented invention without the consent of the patent holder is primary infringement. Supplying the manufacturing machine to the person planning on creating the invention is secondary infringement assuming you have knowledge that the manufacturing machine will be used to make an infringing article.

It should be noted that this provision does not extend to regular commercial products. For example, a screwdriver may be needed to put together a patented invention but as it is a common and commercial product, providing the screwdriver would not count as an infringing act. There may also be a further exclusion for a simple product such as a screw.

Burden of Proof

It is normal that whoever brings the case bears the burden of proof. This means that it is usual that the patent holder will bear the burden of proof as they will be the ones suing for infringement. This is not, however, always the case. If the defendant claims that the patent is invalid the burden of proof shifts to the defendant. This is because it is now the obligation of the defendant to prove that although they may have performed an infringing act, the patent wasn’t valid in the first place and therefore there is no patent to infringe. If the patent is proved to be valid, the burden of proof may once again switch to the patent holder to prove that the patent had been infringed.

Jurisdiction

It must be remembered that patents are strictly territorial. This means that a patent held in one country has no effect in another country. If a patented invention is made in country B but the patent is held in country A there is no infringement. If the patented invention is then imported into country A from country B it is possible to sue for patent infringement, not on the grounds of making the patented invention but on the grounds of importing and possibly keeping, disposing and offering as well.