A patent litigation action can be brought by the patent proprietor or alternatively an exclusive licensee of the patent. If there has been an assignment of the patent then the assignment should be registered with the patent registry.
In the first instance it is necessary to determine whether there has been infringement. In order to do this it will be necessary to determine:
1. What the invention is protected by the patent, which is generally detailed in the patent specification and claims.
2. Whether the activities and conduct of the infringer fall within sections 60(1) or (2) of the Patent Act 1977 (which can be found online).
3. Whether there are any defences available.
There are fundamentally two types of infringement namely direct infringement and indirect infringement. Direct infringement means acts done directly in relation to patented products or processes. Indirect infringement includes acts done indirectly in relation to patented products or processes. Both only include activities conducted while the patent is in force and without the proprietor’s consent.
Section 60(1) of the Patent Act 1977 governs direct infringement. Direct infringement includes activities in the UK directly relating to patented products. Infringement of a patent in such circumstances includes where the infringer makes the patented product, disposes of the product or offers to dispose of the product. It also includes using the patented product by the infringer, keeping the product and also importing the product. The nature of the infringement will determine the level of damages or account of profits
Direct infringement also includes using patented processes, offering patented processes for use and also exploiting products obtained directly through patented processes. Clearly the merits of any claim will be determined by the specific facts of each case.
Indirect infringe occurs where all of the following apply:
1. The infringer supplies or offers to supply in the UK a person with any of the means relating to an essential element of the patented invention for putting the invention into effect.
2. Either he knows or it must be obvious to a reasonable person in the circumstances that the means are suitable for putting, and are intended to put, the invention into effect in the UK.
3. The person supplied or to whom the offer is made is not a licensee or another person entitled to work the invention.
In the event of a potential infringement, the patent owner should ensure that it has sufficient grounds for threatening a patent claim. If the patent proprietor does not have sufficient grounds, then it could be exposed to a risk of a claim for groundless threats by the potential defendant.
Any potential claimant will also need to ensure that it follows the CPR pre-action protocol in connection with pursuing the infringement. The pre-action protocol specifies certain rules and procedures that must be followed in relation to pre-action (pre-court) correspondence. In particular the claimant should clearly specify the patent claims that it is seeking to rely on, and which are being infringed, and also the evidential grounds to support the claim. It might be appropriate for the patent owner to get technical assistance with drafting these aspects of the letter before claim.
Summerfield Browne Solicitors have offices in London, Birmingham, Oxford, Cambridge, Northampton and Market Harborough, Leicester.
