Patent litigation can be an expensive, messy, and time-consuming business and one that you will inevitably want to avoid wherever possible. In this guide, our intellectual property solicitors discuss how you can avoid patent infringement and share some options to consider if you do find yourself on the wrong side of a patent infringement claim.
Jump to:
- What constitutes patent infringement?
- Direct infringement
- Indirect infringement
- How to know if you are infringing a patent
- Should you conduct a patent infringement analysis?
- How much differentiation is needed to avoid patent infringement?
- What should I do if I receive a notice of patent infringement?
- What steps should I take to avoid patent infringement?
- Statute of limitations for patent infringement
- What are the potential consequences of patent infringement for the infringer?
- Summary
What constitutes patent infringement?
There are two types of patent infringement in the UK: direct infringement and indirect infringement.
Direct infringement
Direct infringement occurs when an infringing act is carried out directly in relation to patented products or processes. A patent is infringed when a person carries out one of the following activities.
Where the invention is a product, they:
- Make the product
- Dispose of it
- Offer to dispose of it
- Use it
- Import it, or
- Keep it, whether for disposal or otherwise
Where the invention is a process, they:
- Use the process
- Offer it for use in the UK when they know, or it should have been obvious to a reasonable person in the circumstances, that its use without consent would amount to an infringement
- Dispose of it
- Offer to dispose of it
- Use it
- Import any product obtained directly by means of that process, or
- Keep any such product whether for disposal or otherwise
The courts have also ruled that it is possible to directly infringe a patent using a variant of a patented product or process. The court will consider a number of issues when deciding whether a variant infringes, including:
- Whether the variant achieves substantially the same result in substantially the same way as the patented invention.
- And whether it would be obvious to a skilled person reading the patent, knowing that the variant achieves substantially the same result as the invention, that it does so in substantially the same way as the invention.
Indirect infringement
An indirect infringement is an act which may not directly infringe patented products or processes (as described above) but would still be considered to be an infringing act. A person infringes a patent if they supply (or offer to supply) any of the means relating to an essential element of the invention, for putting the invention into effect, when they know (or it is obvious to a reasonable person) that those means are suitable for putting, and are intended to put, the invention into effect.
Regardless of whether the infringement is direct or indirect, an act will only amount to an infringement if the acts are carried out whilst the patent is in force and without the owner’s (or exclusive licensee's) consent.
How to know if you are infringing a patent
To determine whether you are infringing a patent, you will need to establish:
- Whether the invention is protected by the patent (or patent application)
- Whether your activities fall within those set out in section 60 of the PA 1977 (as described above)
- Whether your activities are permitted as an exception or whether other defences are available.
Establishing the above will be a complex matter, and expert legal advice from our intellectual property solicitors should be sought to help you understand if you have infringed.
Should you conduct a patent infringement analysis?
A patent infringement analysis is a method to determine if a product or process is covered by the ‘claims’ of a patent owned by a third party, which could potentially result in an infringement if appropriate consents are not obtained. Claims are precise statements about the invention, which define what aspects of the invention are protected by the patent. The product or process is compared to the claims of a patent.
Undertaking a patent infringement analysis will help to reduce the risk of facing an infringement action which would result in a lot of wasted time and money. If a potential infringement is found, you could consider obtaining a patent licence, redesigning the product or process outside of the patent claims or even challenging the validity of the patent to allow you to continue to develop and use your product or process.
How much differentiation is needed to avoid patent infringement?
Unfortunately, there is no magic formula for how much differentiation is required – it will very much depend on what the claims of the relevant patent say. To avoid infringement, the new product or process must omit what is included in the patent’s claims.
What should I do if I receive a notice of patent infringement?
If you receive a notice of patent infringement, seek legal advice straight away. If proceedings are brought, the patent owner (or exclusive licensee) may seek:
- An injunction to stop production and sales
- Delivery up or destruction of your products
- Damages
- An account of the profits derived from the infringement
- A declaration that the patent is valid and has been infringed by you.
There are several options you can explore with your intellectual property lawyers.
You could also ask the patent owner if they are willing to grant you a licence to allow you to continue to use the patented invention. Alternatively, you may be able to apply to the UK’s Comptroller General for a compulsory licence. In certain circumstances, you may be able to obtain a licence or request that an entry be made on the register stating that licences under the patent are to be available as of right.
You could also attempt to settle the matter prior to it reaching court, by stopping production and sales and paying the patent owner damages. This would help avoid the more significant costs that would be incurred if the matter progressed to the courts.
Finally, you may be able to rely on a number of defences that are available. These include statutory defences, such as:
- Private use: eg: used for non-commercial purposes.
- Experimental use: eg: to further scientific knowledge and development
- Preparation of medical prescription
- Vessels and aircraft (if the product is being used in airspace or waters outside the UK)
- Agricultural
- Studies, tests, or trials
- Prior use (if, before the patent’s priority date, a person did, in good faith, an act which would constitute an infringement of the patent if it were in force, or makes serious preparations to do such an act, that person has the right to continue to do so. Although they may not grant a licence to anyone else.)
There are also several non-statutory defences available to defend claims of patent infringement, including:
- Invalidity (more on this below)
- Exhaustion – once a patent owner has dealt in or consented to dealings in goods within the EEA that otherwise would infringe their patent rights, those rights are deemed to be exhausted, meaning they cannot prevent further circulation of those goods within the EEA
- Abuse of a dominant position (the way in which the patent right is exercised by the owner could be considered abusive)
- The ‘Gillette defence’ – in a historic case involving Gillette, the defendant argued that the infringing act had already been disclosed in a prior art document.
A common approach is to challenge the validity of the patent by issuing a counterclaim seeking to have the patent revoked for invalidity – you cannot be found guilty of infringing a patent that is not valid. You may also argue that your product or process falls outside of the claims of the patent.
What steps should I take to avoid patent infringement?
There are a few simple steps you can take to avoid infringing others’ patents, and to make sure you can defend yourself if they accuse you of infringing.
- Document the development processes. Make sure that your record-keeping is watertight, so that you have evidence that you could present in court to show that you weren’t doing anything to infringe someone else’s patent. Unfortunately, there is no 'independent creation' defence in patent law (as there is in copyright), as patents are true monopoly rights: but you do have the right to continue doing something that you started before the other person’s patent was applied for.
- File your own patent. You can’t infringe someone else’s patent if what you are doing is patented itself. Two patents cannot be granted for the same invention, so if you have a patent, you can’t be infringing someone else’s patent for the same invention.
- Monitor for newly published patents. The patent literature – written specifications that form part of patent applications, published by the Patent Office as part of the application process – is a rich source of technical information. It alerts interested parties to what their competitors, or those in other fields, are up to. Not only can readers then try to find new applications for the technology, perhaps in a completely different field, but they also learn what they won’t be able to do in future. Newly published patents and applications show where there might be a danger of infringing and allow businesses to work around the obstacles.
- Understand the patent landscape. Your business operates in the space defined by other businesses’ patents, and you need to understand your place in that area. Sometimes you will need to take a licence, perhaps from your main competitor, and doing so is part of the process of ensuring you don’t infringe. We offer clients 'freedom to operate' investigations, to survey the patent landscape and guide you on what you can and can’t do.
- Protect yourself with intellectual property insurance. Having an insurer behind you can make a huge difference in how you can react to a threat of legal action. Beware: many legal expenses insurance policies do not cover intellectual property claims, so check your existing policies and fill any gaps in your cover.
Statute of limitations for patent infringement
An action for infringement of a patent must be brought within six years after the date on which the cause of action accrued. After that the claim is statute-barred, and if you fear being sued for infringement you can breathe more easily. But an infringement is a continuing tort, so a fresh right of action accrues each day while the infringing activity continues.
What are the potential consequences of patent infringement for the infringer?
In a successful patent infringement action, you can expect to see the judge order that the infringement stop, and make a financial order designed to compensate the patent owner. The financial remedy is usually damages reflecting the loss to the claimant, alternatively the claimant may ask for an account of profits, aiming to recover the profits made by the defendant from the infringement. In exceptional circumstances, the patentee may persuade the judge to grant an interim injunction, to stop the infringement pending trial.
The judge might also make orders to secure evidence and to prevent the defendant from moving assets outside the court’s reach, to thwart any money judgment. At the end of the case, delivery or destruction of infringing articles is likely to be ordered, as the items themselves cannot be left in the defendant’s hands.
A losing defendant will have to find a new, non-infringing, way to run their business, as well as finding what might be a very substantial sum of money.
Summary
Patent infringement claims pose a significant risk to business owners. If you receive an infringement notice, promptly seek legal advice to explore options such as negotiating a license, redesigning your product, or challenging the patent's validity.
