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A Guide to Patent Infringement: A Global Perspective

Ideas and innovation are the cornerstones of any successful corporation. Given that modernisation and globalisation has had a significant impact on corporations, it is only fair that the ideas defining these businesses are given protection from being misused, manipulated or stolen. Stolen ideas is a modern-day problem playing on capitalism by generating revenue to the ‘thief’. With the view of preventing this, ideas and innovations are being granted patents now.

A patent, in simpler terms, is a right granted to an inventor over his invention by a sovereign authority providing the inventor with exclusive rights over the ownership of the process, design or invention. A patent granted to the investor is for a set period in return for disclosure of the invention. Infringing such a right gives the inventor a right to claim for remedies against the infringer. The claim includes and is not limited to injunctions, damages, account of profits, declarations and so much more depending on the jurisdiction of the disputed invention.

Infringement of patents reign in all industries, from Apple making a claim against Samsung over an infringing patent on their smartphones and tablets to the ‘Da Vin Ci Code’ book to movie rights disputed. This article aims to give a global perspective on patent infringement by analysing the different rules and regulations governing these jurisdictions and the various remedies available, respectively.

United Kingdom (UK)

Governing Law and Overview

Patent infringement is a statutory tort as per the common law. In the United Kingdom, there exist well-structured legislations to govern patent rights and infringement. The Patent Act 1977 (as amended) (PA 1977) sets out the various rights and remedies governing patents in the UK. The later legislation Patent Rules passed in 2007 deals with the procedure involved in filing a patent with the UK Patent Office (known as the Intellectual Property Office), filing a patent infringement lawsuit, challenging the validity of the patent, opposing the grant of a patent and other related matters. There are Civil Procedure Rules governing patent rights in the UK as well however these CPR apply exclusively to England and Wales and not to Scotland and Northern Ireland as they have their own rules and regulations in the local courts.

Overview

As with all jurisdictions, in the UK a patent is perceived to be infringed when the invention is put to use by someone who is not authorised. Section 60 of Patent Act 1977 states that a person/entity is said to have infringed a patent only if the patent is granted and in force.

Additionally, the person/entity in question should have done any of the following without the consent of the proprietor to have infringed a patent in the UK:

If the invention is a product: the person/entity disposes of, offers to dispose of, uses or imports the original product

the person/entity disposes of, offers to dispose of, uses or imports the original product If the invention is a process: the person/entity uses or offers the process of creation in the UK in addition to the point mentioned above

To understand how to apply for a patent in the UK, firstly, it is essential to note that patent right is a negative right granted to the applicant, which prohibits an action relating to his invention. However, for this act, there would be no infringement if the patent is used for non-commercial, research, anti-terrorism, experimental medicines and related purposes. The reason for this was explained in the case of Corvalve Inc v Edwards Lifesciences AG [2009] EWHC 6 (Pat) where the courts held that experiments with the patent are allowed to encourage scientific research while still protecting the legitimate interest of the patentee. However, there is some debate over this subject as experimentation often leads to commercial gain (case of Monsanto v Stauffer [1985] RPC 515.)

Procedure

Section 1 of PA 1977 states that for a patent to be valid and granted it needs to be new, should involve an inventive step, should be capable of industrial application and is not excluded from being protected as a patent. Once the validity of the patent is granted and is deemed valid, opposing parties can apply directly to the courts to revoke the patent or declare infringement of the patent, regardless of whether the inventor of the patent or the owner is threatened with litigation.

A patent awarded to the United Kingdom is through either the United Kingdom Intellectual Property Office (UKIPO) or the European Patent Office (EPO). Additionally, the possibility of joining either process under the Patent Cooperation Treaty (PCT) can be made through a foreign request. When issued, a patent provides an exclusive and absolute right to exploit what is protected by the patent and can provide coverage for 20 years as long as it is renewed (and the applicable fee paid) every year from the fourth anniversary of the filing date. A term of protection can be expanded by applying for a Supplementary Protection Certificate (SPC).

Infringement in the UK

It is an infringement to sell a patented process for use in the United Kingdom if the person making the offer understands, or it is apparent to a reasonable person, that using the method without the permission of the proprietor would be an infringement of the patent. Furthermore, Section 60(2) Patent Act 1977 also allows the patent proprietor to prevent an unauthorized person from supplying or offering to in the United Kingdom means relating to an essential element of the invention when they know, or a reasonable person would have known, that the element was suitable for and intended to be used in order to put the invention into effect in the United Kingdom. This is referred to as contributory infringement.

Section 60(3) Patents Act 1977 exempts commercial staple products from this provision: -a patent proprietor can not prohibit someone from selling standard commercial objects merely because they could be used to assemble an infringing device, or even if the manufacturer knows that they are intended for that reason. For instance, according to the precedent in Menashe Business Mercantile Ltd v William Hill Organisation Ltd [2002], computer software is a patented entity although the manual to use it would not be.

The nature of the various infringing acts in themselves is rarely ambiguous. Nonetheless, one issue that arises is whether fixing a copyrighted item can be infringed as a "making" operation. The response depends on the extent of the repair. Several factors such as the possible lifetime of different components, have to be considered. As per Schutz (UK) Ltd v Werit UK Ltd [2013], if the worn or damaged product continues to embody the entire claimed invention, excluding the component requiring replacement or repair, then it is likely that repair by replacing that component does not "make" the patented product.

Another question arises when the product supplied is a package of parts that helps the user to assemble the component. Since the consumer has protection under Section 60(5)(a) Patents Act (discussed below), it can be argued that the selling of the package does not result in an infringing act of "making’’. A similar argument occurs when the package is manufactured for sale so that there is no violation outside the jurisdiction. Nevertheless, these claims were not checked in case law. In any event, a supplier of such a kit might also be liable for contributory infringement. It is also essential to distinguish between direct and indirect patent infringement.

Court Proceedings

It is mainly in London that court proceedings involving UK and EP (UK) patents take place. They are heard either before the Patents Court (a High Court division) or before the Patents County Court, depending on the value and complexity of the case-more complicated cases or cases where the value of the case is more than £ 500,000 are heard before the Patents Court. The judges make their judgments; no jury exists. The procedure at the Patents Court is thorough and generally involves:

discovery of documents;

experiments (when necessary);

written facts and expert evidence (experts are appointed by a party, not appointed by a court); and

witness cross-examination at trial.

In the United Kingdom, copyright disputes and patent validity issues were resolved in one court. In comparison, in Germany, the two issues are addressed in separate trials (so-called 'bifurcation'). The Patents County Court provides a cheaper alternative to the Patents Court procedure. The level of complicated research information presented and the volume of cross-examination will be reviewed in the Patents County Court, providing small and medium-sized businesses and private individuals with a more open and generally cheaper process. If any party to a case at the Patents County Court thinks that the Patents Court is more suitable, a transfer request may be made.

Damages

In claims that proceed in the Enterprise Court of Intellectual Property, the court will make a summary assessment of the party's costs in favour of which any cost order is made. The extensive assessment is not valid. The court will not require a party to pay total costs in excess of:

£ 50,000 on the final determination of a negligence claim; and

£ 25,000 on a claim for damages or benefit account.

The maximum amount of scale costs imposed by the court is as specified for each point of the case.

Remedies

Remedies for the patent proprietor, in either case, include a temporary or permanent order, products being shipped or destroyed, damages being paid, or an account of the infringer's earnings, or legal costs being incurred. UK patent judges ' decisions are also taken into account and often carry persuasive weight in circumstances where the same patent is litigated in other European countries

European Union

Concerning the EU, Section 60 of the PA 1977 of the infringing acts stems from the Community Patent Convention (Articles 25 and 26), revised and replaced by the Community Patent Agreement (89/695/EEC) (OJ 1989 L 401/1) (CPC). Similar provisions are introduced by other European countries. Section 60 was framed in compliance with Section 130(7) of the PA 1977 to have the same consequences in the United Kingdom as almost as possible as the relevant provisions of the CPC. Section 130(7) stems from the Community Patent Joint Declaration Agreement (OJ 1989 L 401/57) which is further implemented by the EEC member states.

In Bristol Myers Squibb v Baker Norton Pharmaceuticals [ 1999 ] RPC 253, Jacob J held that since there was no distinction between Articles 25 and 26 of the CPC and the relevant provisions of section 60, it was easier to work based on the direct effect of the CPC provisions. Nevertheless, as section 60 has tended to focus mainly on that provision, this report is equally based on that provision as it represents the law in the UK and UK case law. Nonetheless, when interpreting the provision, the UK courts often turn to national European (mainly German) case law.

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