Patent litigation can be an expensive, messy, and time-consuming business, and one that you will inevitably want to avoid wherever possible. Here’s our guide on how to avoid patent infringement in the first place, and some options to consider if you do find yourself on the wrong side of a patent infringement claim.
What constitutes patent infringement?
A patent grants the patent owner a monopoly right over their invention (as it is described by them in the patent specification).
What constitutes patent infringement in the UK is set out in section 60 of the Patents Act 1977 (PA 1977). There are two types of patent infringement in the UK: direct infringement and indirect infringement.
Direct infringement occurs when an infringing act is carried out directly in relation to patented products or processes. Section 60(1) of the PA 1977 states that 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 to 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.
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. Section 60(2) of the PA 1977 states that, subject to certain exceptions, 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 specialist IP solicitors should be sought to help you undertake an analysis of your activities in relation to the invention.
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 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 (more on this below).
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.
Received 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
- 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 IP lawyers.
You could also ask the patent owner if they are willing to grant you a licence to enable your continued use of the patented invention. Alternatively, you may be able to apply to the UK’s Comptroller General for a compulsory licence under the PA 1977. 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 (i.e. used for non-commercial purposes)
- Experimental use (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)
- Studies, tests, or trials
- Prior use (if, before the patent’s priority date, a person did, in good faith, an act which would constitute 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 (NB – this may change post-Brexit)
- 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 and therefore is not infringing the patent.