Patent infringement: considerations to determine if there is infringement

Patent infringement is a statutory tort and the actions that make up the tort are set out in section 60 of the Patents Act 1977.

An infringement action may be brought by the patent owner or, alternatively, by an exclusive licensee of the patent.

To determine if there has been an infringement, it is necessary to consider:

1. The scope of the invention that is protected by the patent (or patent application).

2. Whether the activities of the potential infringer in connection with the invention fall under section 60(1) or (2) of the PA 1977.

3. Whether there are legal exceptions or other defenses available.

There are two types of infringement:

1. Direct infringement, that is, acts done directly in connection with patented products or processes (section 60(1), PA 1977). It covers activities in the United Kingdom related to: (I) patented products; (ii) Use of proprietary processes; (iii) Offer proprietary processes for use; and (iv) Products obtained directly through patented processes.

When the patented invention is a product, a person infringes the patent (Section 60(1)(a), PA 1977) when: (I) Manufactures the product; (ii) dispose of the product; (iii) Offer to dispose of the product; (iv) use the product; (v) Import the product; or (vi) Retain the product (whether for disposal or not).

2. Indirect Infringement, that is, acts carried out indirectly in relation to patented products or processes. A person indirectly infringes a patent (Section 60(2), PA 1977) when all of the following apply:

on. Provides or offers to provide in the United Kingdom to any person the means relating to an essential element of the patented invention to put the invention into practice.

B. Either he knows or it should be obvious to a reasonable person in the circumstances that the means are adequate to put the invention into practice in the UK and are intended to put it into practice.

against The person supplied or to whom the offer is made is not a licensee or other person entitled to exploit the invention.

Section 60(5) of the PA 1977 provides a number of exceptions to the infringement under sections 60(1) and (2) of the PA 1977.

In addition to exceptions to infringement, it is also possible to defend a claim of patent infringement by challenging the validity of the patent/patent registration on the basis that:

1. The invention does not meet the applicable legal criteria for patent registration;

2. There is prior art and the invention was not novel at the time of registration and therefore should not have been granted in the first place.

Alternatively, it is also possible to defend a claim of patent infringement by performing a technical analysis of the patent specification of the patent and showing that your product is outside the scope of the patent specification.