Last week we looked at Trade Mark Infringements, what they were and what you should do to avoid them or deal with them. This week we are going to discuss Patent Infringement, to help you understand what is and how to avoid it.
Patent Infringement typically refers to the commission of a prohibited act in respect of a patented invention without the consent of the patent proprietor. Basically, there are two types of patent infringement, namely direct infringement and indirect infringement, which is also known as Secondary or Contributory Infringement.
How is Patent Infringement established?
European patents are granted by the European Patent Office (EPO). However, the EPO has no legal competence to deal with, and to decide on, patent infringement cases in the contracting states to the EPC, which includes Ireland and the United Kingdom. Article 64(3) of the EPC declares that “any infringement of a European patent shall be dealt with by national law” and therefore European patents are enforced at a national level.
Having said that, in order to ascertain what would amount to an infringement and to further distinguish between direct and indirect (or secondary or contributory) infringement, one must take into account the international minimum standards for patentability that must be applied in each jurisdiction as set out in Article 28(1) of the TRIPS Agreement, as well as the harmonized laws among the EU member states by an enactment of Article 26 of the Community Patent Convention (CPC).
According to Article 28(1) of the TRIPS Agreement “A patent shall confer on its owner the following exclusive rights:
(a) where the subject matter of a patent is a product, to prevent third parties not having the owner’s consent from the acts of: making, using, offering for sale, selling, or importing for these purposes that product; and
(b) where the subject matter of a patent is a process, to prevent third parties not having the owner’s consent from the act of using the process, and from the acts of: using, offering for sale, selling, or importing for these purposes at least the product obtained directly by that process.”
The different kinds of Patent Infringement
According to Article 26 of the CPC:
Direct infringement of a product claim requires that the infringer, in the country where the patent is in force, manufactures, sells or offers to sell, uses, imports or stores the claimed product, while direct infringement of a method claim requires, again in the country where the patent is in force, that the infringer offers or practices the claimed method.
Whereas the concept of indirect infringement provides a remedy for acts occurring prior to an act of direct infringement, and generally relates to supply of or offer to supply “a means relating to an essential element of the invention”, with the exception of where the essential means is a staple commercial product.
In this regard, generally the national laws of the EPC member states have a double territorial requirement, in that both the supply and the end use must occur in the same member state. However, various national courts have applied different standards on what is considered an essential element of the invention, as well as how the double territorial requirement should be interpreted.
The way forward
Owing to the charge of alleged patent infringement, the other person or party has a right to self-defence wherein certain acts, even if they fall within the scope of the claims of a valid patent are not considered as infringement. These acts again fall under the discretion of the national laws of the EPC contracting states, but the following provisions may broadly and generally be considered as key points for self-defence:
- There is no infringement if the act falls outside the patent claims.
- There is no infringement if the act is non-infringing like acts done privately and for non-commercial purposes, and acts done for experimental purposes.
- There is no infringement if the patent is invalid or expired.
The typical remedies offered to a patent proprietor if an infringement occurs are injunctions, damages and disposal outside the channels of trade and commerce.