UK: The Basics Of Patent Law - Infringement And Related Actions

Gowling WLG's intellectual property experts discuss infringement and related actions as part of their 'The basics of patent law' series.

This article is part of a series called 'The basics of patent law', covering: Types of intellectual property protection for inventions and granting procedure; Initiating proceedings; Infringement and related actions; Revocation, non-infringement and clearing the way; Trial, appeal and settlement; Remedies and costs; Assignment and licensing; and The Unified Patent Court and Unitary Patent system.

The articles underpin Gowling WLG's contribution to Chambers' Global Practice Guide on Patent Litigation 2017, for which Gordon Harris and Ailsa Carter wrote the UK chapter.

Venue for infringement claims

In the UK, claims for patent infringement are governed by section 61 of the Patents Act 1977 ("PA"). They must be brought in the court unless the parties agree to refer the dispute to the Comptroller-General of Patents, Designs and Trade Marks (the "Comptroller").

Upon such a reference, the Comptroller only has jurisdiction to hear and determine claims for damages and claims for declarations as to the validity or infringement of the patent. If it appears to the Comptroller that the question referred to him would more properly be determined by the court, he may decline to deal with it and the court shall have jurisdiction. For more on court venue, please see our article on initiating proceedings.

Claimants

A claim for infringement of a patent may be brought by the proprietor (i.e. owner) of the patent and/or an exclusive licensee. Where the patent is jointly owned a joint owner may make a claim alone, but the co-owner(s) must, if not co-claimants, be made defendants to the action. In this capacity the defendant co-owner shall not be liable for any costs or expenses unless he enters an appearance and takes part in the proceedings. Where the claim is brought by the exclusive licensee, the proprietor(s) of the patent should similarly be joined (s.66 PA).

In order to maximise the recovery of damages for infringement, corporate litigants should ensure that licensing arrangements enable the relevant operating entity or entities to be claimants.

Acts of patent infringement

Pursuant to s.60(1) PA, it is an infringement of a patent to do any of the following in the UK while the patent is in force without the consent of the proprietor of the patent:

  1. where the invention is a product, making, disposing of, offering to dispose of, using or importing the product or keeping it whether for disposal or otherwise;
  2. where the invention is a process, using the process or offering it for use in the UK, with knowledge, or when it is obvious to the reasonable person in the circumstances, that its use without the consent of the proprietor would be an infringement of the patent;
  3. where the invention is a process, disposing of, offering to dispose of, using or importing any product obtained directly by means of that process or keeping any such product whether for disposal or otherwise.

The above are considered to be acts of 'direct' or 'primary' infringement.

Pursuant to s.60(2) PA, it is an infringement of a patent to supply or offer 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, with knowledge, or when it is obvious to a reasonable person in the circumstances, that the means supplied are suitable for putting, and are intended to put, the invention into effect. Section 60(2) infringement is known as 'contributory', 'indirect' or 'secondary' infringement.

Further, it is an act of joint tortfeasance to assist the commission of an act of direct or contributory infringement by another pursuant to a common design with that person (Sea Shepherd v Fish & Fish [2015] UKSC 10; Vertical Leisure v Poleplus [2015] EWHC 841 (IPEC), Glaxo v Sandoz [2016] EWHC 2743 (Ch)).

Construction and assessment of infringement

In accordance with the above, in order for the court to make a finding that a patent has been infringed, it must be satisfied (at least) that an act of infringement has been committed (i.e. making, offering to dispose of, using, supplying) in respect of a product, process or direct product of a process which is within the scope of at least one claim of the patent.

In order to assess this, the court construes the claims of the patent to determine what they would have meant to the person skilled in the art (with that person's relevant common general knowledge) at the priority date of the patent (Kirin-Amgen v Hoechst Marion Roussel [2004] UKHL 46). A "purposive" construction is adopted, the inventor's purpose being ascertained from the description and drawings, to interpret the meaning of the language used, in context. The court then considers whether the alleged infringing product or process falls within the scope of the claim (i.e. whether the alleged infringing product or process meets each integer of a claim, as construed).

In 2016 the Court of Appeal gave noteworthy obiter guidance on the so called "mental element" of a second medical use claim and the assessment of infringement of such a claim (Warner-Lambert v Generics [2016] EWCA Civ 1006).

Issues of construction may necessitate determination in the context of validity also.

Defences

In accordance with the definitions of infringing acts in s.60, an act is only capable of infringing a patent if it is done without the consent of the proprietor (express or implied) and is in respect of a claim of the patent that is not invalid.

A party alleged to infringe a patent may claim by way of defence that the patent is invalid and may seek revocation of it. The grounds for revocation of a patent are considered in our article on Revocation, non-infringement and clearing the way.

A party alleged to infringe may claim by way of defence that its acts benefited from the proprietor's consent.

Where goods are first placed on the market in the EEA by the proprietor of the patent or with his consent (e.g. by a licensee), the doctrine of exhaustion prevents the enforcement of the patent in the UK in respect of the imported goods (Centrafarm v Sterling C-15/74).

In some situations, compulsory licences or licences of right may be available, providing a defence to a claim of infringement (s.48-48B, s.46 PA).

In some contexts, a defence may be available that the enforcement of the patent breaches antitrust law. This remains a developing area of the law, with ongoing litigation in the UK and elsewhere in the context of patents that must be implemented in order to comply with an industry standard, for example in the telecommunications sector (see, for example, Huawei v ZTE C-170/13).

The Patents Act (section 60(3) & (4)) also provides that an act that would constitute an infringement of the patent will not do so if (broadly):

  • it is done privately and for purposes which are not commercial;
  • it is done for experimental purposes relating to the subject matter of the invention (which encompasses anything done in or for the purposes of a medicinal product assessment);
  • it is done in conducting a study, test or trial which is necessary for and is conducted with a view to obtaining marketing authorisation or complying with regulatory requirements;
  • it consists of the preparation in a pharmacy of a medicine for an individual in accordance with a prescription;
  • it consists of use on a ship or on an aircraft temporarily in the territorial sea or airspace of the UK;
  • it consists of a specified use by a farmer of the product of his or her harvest or an animal purchased with the consent of the proprietor of the patent; or
  • it is the supply or offer to supply of a staple commercial product, unless the supply or offer is made for the purpose of inducing infringement (as defence to s.60(2) contributory infringement only).

Innocent infringement

Although not a defence to liability, no damages or account of profits can be awarded in respect of infringing activities if the infringer can prove that at the date of the infringement, or each infringing act, it was not aware, and had no reasonable grounds for supposing, that the patent existed (s.62 PA). The burden of proof is on the party asserting the defence. It rarely succeeds because patents are available on a public register (see, for example, Collingwood v Aurora [2014] EWHC 228 (Pat)).

Crown use

Historically, the Crown was entitled to use patented inventions without the consent of or compensation to the patentee. Since 1883, the rights of the Crown have been curtailed, and are defined in s.55-59 PA. In short, any government department, and any person authorised in writing by a government department, may, for the services of the Crown, do any of the acts listed in s.55(1) in relation to a patented invention without the consent of the proprietor. The acts are similar to the acts of infringement set out in s.60. However, except for the purposes of foreign defence or for production or supply of specified drugs and medicines, permissible sale or offer to sell a product is limited to situations where this would be incidental or ancillary to making, using, importing or keeping the product. The proprietor or exclusive licensee of a patent is entitled to compensation by the Crown where the Crown use provisions are invoked, and may claim for patent infringement where the permissible acts are exceeded (although the availability of injunctive relief is limited).

Jurisdiction of the Comptroller to issue an opinion

Additionally, s.74A PA provides that the proprietor of a patent or any other person may request that the Comptroller issue an opinion on a prescribed matter in relation to the patent. Such issues include questions of infringement (or non-infringement). These opinions are not binding for any purposes. The proprietor or exclusive licensee of the patent may seek a review of the decision before the Comptroller. A decision by the Comptroller not to set aside an opinion is a decision from which appeal lies to the Patents Court.

Declarations of non-infringement

The Patents Act and common law permit a party to apply to the court for a declaration of non-infringement. As an action intended to 'clear the way' (i.e. to remove the effect of a patent), this is discussed in our article on Revocation, non-infringement and clearing the way.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
Events from this Firm
19 Sep 2019, Seminar, Birmingham, UK

Providing GCs, Heads of Legal and senior in-house lawyers with timely, topical and practical legal advice on a variety of topics.

26 Sep 2019, Seminar, London, UK

Providing GCs, Heads of Legal and senior in-house lawyers with timely, topical and practical legal advice on a variety of topics.

8 Oct 2019, Seminar, Birmingham, UK

Supporting the development of paralegals, trainees and lawyers of up to five years' PQE by providing valuable knowledge and guidance together with practical tips.

Similar Articles
Relevancy Powered by MondaqAI
 
In association with
Practice Guides
by Mondaq Advice Centres
Relevancy Powered by MondaqAI
Related Topics
 
Similar Articles
Relevancy Powered by MondaqAI
Related Articles
 
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Mondaq Free Registration
Gain access to Mondaq global archive of over 375,000 articles covering 200 countries with a personalised News Alert and automatic login on this device.
Mondaq News Alert (some suggested topics and region)
Select Topics
Registration (please scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions