Patents: infringement

What is a patent?

A patent is a monopoly right given to inventions for a set period of time (usually 20 years) on a country by country basis. It is designed to prevent anyone other than the patent holder from making, using, or selling the patented invention.

Infringement: s 60(1)

If someone other than the patent holder makes use of the invention – either directly or indirectly – this amounts to infringement. This would allow the patentee to seek remedies through the court including an injunction against further infringement, damages or an account of profits.

A person infringes a patent in the UK under s 60(1) of the Patents Act 1977 if, while the patent is in force, he does any of the following in the UK in relation to the invention without the consent of the patent proprietor:

  • where the invention is a product, s/he makes, disposes of, offers to dispose of, uses or imports the product or keeps whether for disposal or otherwise;
  • where the invention is a process, s/he uses or offers it for use in the UK when s/he knows, or it is obvious to a reasonable person in the circumstances, that its use there without the consent of the proprietor would be an infringement of the patent.
  • where the invention is a process, s/he disposes of, offers to dispose of, uses or imports any product obtained directly by means of that process or keeps any such product whether for disposal or otherwise.

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. The right to make also covers 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.

The ‘right to import’ allows the holder to prevent others from making the patented product in a country where the patentee has 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.

When the invention is a process

Generally the same rights apply as with the product patents, however in the case of processes there also exists a ‘right to use’ which is the right to stop others 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 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.

Infringement: s 60(2)

Under s 60 (2) of the Patents Act 1977 a person (other than the proprietor of the patent) also infringes a patent if, while the patent is in force and without the consent of the proprietor, he supplies or offers to supply in the UK 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 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 UK.

Exceptions

Under s 60(5), an act which would constitute an infringement of a patent for an invention shall not do so if:

(a )it is done privately and for non-commercial purposes;
(b) it is done for experimental purposes relating to the subject-matter of the invention;
(c) it consists of the extemporaneous preparation in a pharmacy of a medicine for an individual in accordance with a prescription given by a registered medical or dental practitioner or involves dealing with a medicine so prepared;
(d) it consists of the use, exclusively for the needs of a relevant ship, of a product or process in the body of such a ship or in its machinery, tackle, apparatus or other accessories, in a case where the ship has temporarily or accidentally entered the internal or territorial waters of the UK;
(e) it consists of the use of a product or process in the body or operation of a relevant aircraft, hovercraft or vehicle which has temporarily or accidentally entered or is crossing the UK or the use of accessories for such a relevant aircraft, hovercraft or vehicle;
(f) it consists of the use of an exempted aircraft which has lawfully entered or is lawfully crossing the UK or of the importation into the UK, or the use or storage there, of any part or accessory for such an aircraft.
(g) it consists of the use by a farmer of the product of his harvest for propagation or multiplication by him on his own holding, where there has been a sale of plant propagating material to the farmer by the proprietor of the patent or with his consent for agricultural use;
(h) it consists of the use of an animal or animal reproductive material by a farmer for an agricultural purpose following a sale to the farmer, by the proprietor of the patent or with his consent, of breeding stock or other animal reproductive material which constitutes or contains the patented invention;

Burden of proof

If a patent holder sues for infringement, they will bear the burden of proof. If the defendant claims the patent is invalid the burden of proof shifts to the defendant.

Article written by...
Lucy Trevelyan LLB
Lucy Trevelyan LLB

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Lucy graduated in law from the University of Greenwich, and is also an NCTJ trained journalist. A legal writer and editor with over 20 years' experience writing about the law.