Comparative Guides

Welcome to Mondaq Comparative Guides - your comparative global Q&A guide.

Our Comparative Guides provide an overview of some of the key points of law and practice and allow you to compare regulatory environments and laws across multiple jurisdictions.

Start by selecting your Topic of interest below. Then choose your Regions and finally refine the exact Subjects you are seeking clarity on to view detailed analysis provided by our carefully selected internationally recognised experts.

4. Results: Answers
Patent infringement
What Constitutes Patent Infringement?

Answer ... Patent infringement takes place when others exploit the invention as claimed. The term ‘exploit’ is defined in the Patents Act, in respect of a product, as follows: “[to] make, hire, sell or otherwise dispose of the product, offer to make, sell, hire or otherwise dispose of it, use or import it, or keep it for the purpose of doing any of those things.” Where the invention is a method or process, it is an infringement to “use the method or process or do any act mentioned above in respect of a product arising from such use”.

In Apotex Pty Ltd v Warner-Lambert Company LLC (No 3) [2017] FCA 94, the court confirmed that offers made during the patent term to supply after the expiry of the patent expiry constituted infringement.

In addition to direct infringement, it is possible for infringement to be indirect, or contributory, where no single party is responsible for infringement, but rather multiple parties act in concert to perform an infringing act. For instance, selling a known product with instructions to use in an infringing manner will constitute contributory infringement. Contributory infringement need not be explicitly directed. Selling a product with no reasonable non-infringing purpose, or even selling a product with the reasonable expectation that it would be used in an infringing manner, may be sufficient to constitute infringement. The approach of the courts with respect to contributory infringement has not always been consistent.

For more information about this answer please contact: Charles Tansey from Shelston IP
Does your jurisdiction apply the doctrine of equivalents?

Answer ... No. Claims are given a purposive construction, rather than a strict literal construction, but features in the claims are not broadened beyond the wording used. The claims are read by a person of “practical knowledge and experience” in the art, informed by the specification, and will be construed to have that breadth. In Meat & Livestock Australia Limited v Cargill, Inc [2018] FCA 51 at 217, it was stated that: “To apply a purposive construction does not justify extending the patentee’s monopoly to the ideas disclosed in the specification.”

For this reason, US claims should not automatically be used verbatim in Australia, as the consequences can be overly limiting. Where a specific feature can be claimed in functional terms, that should be preferred.

During prosecution and when a challenge to validity arises, the question of whether a claim or feature of a claim is a mere technical equivalent of features found in the prior art will be considered. If the feature is found to be a technical equivalent and provides the same functionality within the context of the problems solved, an issue of lack of inventive step may arise.

For more information about this answer please contact: Charles Tansey from Shelston IP
Can a party be liable if the patent infringement takes place outside the jurisdiction?

Answer ... In some cases a party can be liable if the actual steps leading to infringement take place outside Australia. In Warner-Lambert Company LLC v Apotex Pty Limited (No 2) [2018] FCAFC 26 it was held that importation and sale in Australia of a product made outside the jurisdiction by a method claimed in an Australian patent amounted to patent infringement. In effect, simply working the patented method outside Australia and importing the resultant product into Australia will constitute infringement.

This is particularly important in the pharmaceutical area, where many generic drugs may be imported. Even if the primary substance patent has expired, goods made overseas by a specific claimed process may still be infringing.

For more information about this answer please contact: Charles Tansey from Shelston IP
What are the standards for wilful infringement?

Answer ... There is no distinct category of ‘wilful patent infringement’ under Australian law. However, the nature of the conduct engaged in by an infringer, such as whether such conduct is flagrant and/or intentional, can be relevant to issues of patent infringement in several respects.

First, where infringement is determined to have occurred, wilfulness may be relevant to liability for damages or an account of profits. A court may refuse to grant such relief in the case of ‘innocent infringement’ if satisfied that, as at the date of infringement, the defendant was unaware, and had no reason to believe, that a patent for the invention existed. If products marked to indicate that they are patented are sold to a substantial extent before the date of infringement, the defendant is taken to have been aware of the existence of the patent unless the contrary is established. In the case of divisional patents (in particular, divisional innovation patents), it was suggested in Coretell Pty Ltd v Australian Mud Company Pty Ltd [2017] FCAFC 54 at [105] that “a defendant cannot be aware of a patent, let alone the invention as claimed in the claims of a patent, before it is brought into existence”. Innocent infringement does not affect the court’s ability to order an injunction.

Second, the wilfulness of infringement may be relevant to an award of additional damages, as discussed in more detail in question 9.6.

For more information about this answer please contact: Charles Tansey from Shelston IP
Which parties can bring an infringement action?

Answer ... An action for patent infringement can be brought by either the patent owner or the exclusive licensee of a patent (S120(1) Patents Act 1990 (Cth)). An ‘exclusive licensee’ is defined in the Patents Act 1990 (Cth) as “a licensee with the right to exploit the patented invention throughout the patent area to the exclusion of the patentee and all other persons”. Courts have recently given attention to the question of when a party is an ‘exclusive licensee’ for the purposes of the Patents Act and therefore whether the party is entitled to bring proceedings for patent infringement.

In Bristol-Myers Squibb Co v Apotex Pty Ltd [2015] FCAFC 2 at [104], it was affirmed that “the right to exploit” is a single indivisible right. Additionally, an exclusive right to exploit a patent within a particular region in Australia is unlikely to be considered an exclusive licence. Care should be taken in drafting exclusive licences of Australian patent rights to ensure that the terms of the licence confer exclusive licensee status on the licensee, if that is the intention.

If infringement proceedings are initiated by an exclusive licensee, the patentee must be joined to the proceedings as a defendant if it has not been joined as a plaintiff (Section120(2) of the Patents Act 1990 (Cth)). If joined in accordance with this requirement, the patentee is not liable for costs unless the patentee enters an appearance and takes part in the proceedings (Section120(3) of the Patents Act 1990 (Cth)).

For more information about this answer please contact: Charles Tansey from Shelston IP
How soon after learning of infringing activity must an infringement action be brought?

Answer ... An action for infringement must be brought by the later of either three years from the date that a patent is granted or six years from the date on which an act of infringement took place (S120(4) Patents Act 1990 (Cth)).

Generally speaking, an action can be brought any time within this period, subject to the possible application of doctrines such as acquiescence and laches which are applicable in particular circumstances.

Delay is an important factor when an application for an interlocutory injunction is made - that is, a temporary injunction prohibiting infringing activity which is made pending final determination of a proceeding. In this case it is important that the claimant act as quickly as possible after learning of the infringing activity, as failure to do so will be relevant to consideration of the balance of convenience. For example, in Interpharma Pty Ltd v Aventis Pharma SA [2011] FCA 32 the approximately 10-month delay of the applicant in requesting an interlocutory injunction was a material factor weighing against the grant of an interlocutory injunction. However much shorter delays than this could also be relevant to the granting of an interlocutory injunction. Action in this situation should thus be taken as a matter of urgency.

For more information about this answer please contact: Charles Tansey from Shelston IP
What are the pleading standards to initiate a suit?

Answer ... When initiating a suit, the applicant must and serve file two pleadings with the court. The first is an originating application that sets out the orders and relief that the applicant will seek in the proceeding. The second is a statement of claim which sets out all the material facts which are relied upon to establish infringement of the relevant patent. The statement of claim is intended to inform the respondent of the nature of the claims made against it and must contain the necessary particulars of each claim. Specifically, each claim of the patent that is alleged to have been infringed must be identified and at least one instance of each type of infringement alleged must be particularised. The applicant must also file a ‘genuine steps statement’ which sets out the steps which have been taken to try to resolve the issues in dispute with the respondent.

A respondent can request further and better particulars from an applicant where the statement of claim is not sufficiently clear or does not contain adequate detail. A respondent must file a defence responding to each allegation made in the statement of claim and identifying any positive defences that it intends to rely upon.

For more information about this answer please contact: Charles Tansey from Shelston IP
In which venues may a patent infringement action be brought?

Answer ... The usual forum for an action for patent infringement is the Federal Court of Australia. The Federal Court sits in the capital cities of each state and most territories in Australia, and has a number of registries throughout Australia. There are no jurisdictional rules with respect to the registry in which a proceeding is started. Proceedings are generally commenced in the most convenient registry to the applicant – usually, that closest to the applicant’s lawyers. A request can be made for a matter to be moved to a different registry in certain circumstances.

At first instance, patent infringement matters in the Federal Court are heard by a single judge.

An action for patent infringement can also be brought in the Supreme Court of each state or territory. However, in practice, it is rare for patent actions to be commenced in the Supreme Court.

For more information about this answer please contact: Charles Tansey from Shelston IP
What are the jurisdictional requirements for each venue?

Answer ... The Federal Court is a national court and applicants can file to commence proceedings in any of its registries located throughout Australia. Most patent infringement actions are filed in the New South Wales (Sydney) and Victoria (Melbourne) registries. There is no jurisdictional cap or minimum threshold on the level of monetary compensation which can be sought in actions commenced in the Federal Court.

As such, the issue of jurisdictional ‘forum shopping’ does not arise in Australia.

For more information about this answer please contact: Charles Tansey from Shelston IP
Who is the fact finder in an infringement action?

Answer ... In Australia, all aspects of a patent infringement action are heard and decided by a judge, who is responsible for making all findings of law and fact. Patent infringement cases in Australia are not heard by juries.

For more information about this answer please contact: Charles Tansey from Shelston IP
Does the fact finder change based on venue?

Answer ... No, patent infringement cases are always heard by a judge without a jury.

For more information about this answer please contact: Charles Tansey from Shelston IP
What are the steps leading up to a trial?

Answer ... Each patent infringement case will differ somewhat, depending on the particular circumstances, and the order in which various steps occur may vary. However, in most cases (in the Federal Court), at least the following primary steps will occur:

  • Each party will file the necessary pleadings. Typically, the respondent(s) will also file a cross-claim for revocation of the patent, which will be heard together with the infringement action.
  • Further particulars of the proceedings may be sought by either or both parties.
  • Either shortly before or after the defence is filed, the parties appear at a first directions hearing, at which the court will set a timetable for next steps in the proceedings.
  • Further directions hearings will take place throughout the proceedings, allowing the judge to case manage the proceedings. Interlocutory applications may be filed in relation to various procedural matters.
  • The parties may seek discovery of relevant documents. Often, discovery will be given before evidence is filed, but in some cases the court will require the evidence to be filed first. Subpoenas may be issued to third parties to obtain documents from them.
  • Each party will file its evidence on both infringement and validity. Usually, the applicant will file evidence in chief on infringement at the same time as the respondent files evidence in chief on validity, and then each party will file evidence in answer. This evidence will usually comprise both expert and factual evidence.
  • In the months before trial there will often be a joint expert witness process, whereby the expert witnesses engaged by each party will confer and generate a joint expert report which identifies points of agreement and disagreement.
  • Various pre-trial processes, including the identification of objections to evidence and preparation of court books, will take place in the run-up to the trial.
  • The parties will each serve an outline of opening submissions setting out the law and facts on which each party relies.
  • The trial takes place, at which witnesses give evidence and are cross-examined, and each party makes submissions on the facts and law.

For more information about this answer please contact: Charles Tansey from Shelston IP
What remedies are available for patent infringement?

Answer ... The primary remedies that are available upon final judgment include the following:

  • damages or an account of profits. If infringement is established, the applicant will usually be entitled to damages (compensation for the damage suffered) or an account of profits (an accounting of the profits made by the respondent). The applicant must elect which of these remedies it wishes to pursue. The basis for assessing damages will depend on the circumstances of the case. This may include damages based on lost sales and/or lost licence fees. Usually, the question of quantum will be separated from the question of liability. That is, issues of the appropriate quantum of monetary relief will not be considered at the first hearing; only if liability is established will a second hearing take place to determine quantum. In practice, issues of quantum are very often settled by the parties;
  • permanent injunction restraining the respondent from infringing conduct;
  • delivery up or disposal of infringing goods; and
  • declaration that the relevant conduct has infringed the applicant’s patent rights.

For more information about this answer please contact: Charles Tansey from Shelston IP
Is an appeal available and what are the grounds to appeal?

Answer ... Yes, decisions of the Federal Court in relation to patent infringement can be appealed to the Full Federal Court which consists of a bench of three or five judges of the Federal Court. In the case of interlocutory judgments, usually leave to appeal must first be obtained from the court (Section 24(1A) of the Federal Court of Australia Act 1976).

In the Federal Court, the grounds for appeal are that the presiding judge made an error of law or fact, or both, in the original judgment. Appeals are heard ‘on the papers’ filed in the original Federal Court proceedings. New evidence will not generally be admitted, other than in specific circumstances. The Full Federal Court will also consider the transcript of the oral evidence given in the first instance proceeding. The hearing before the Full Federal Court therefore consists of legal submissions made by each party.

A further appeal from the Full Federal Court to the High Court is available; however, special leave must be granted by the High Court. The High Court will usually hear an appeal only where an important question of legal principle is in contention.

For more information about this answer please contact: Charles Tansey from Shelston IP