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’.

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For more information on:

  • Secondary Infringement
  • Burden of Proof
  • Jurisdiction