Flashcards in Infringment Deck (61)
What section deals with infringment
What does S60 deal with?
conditions for infringment
A patent must be in force and an infringing act must have taken place without the proprietor's consent
what are infringing acts
if a patent is for a product:
O ffer for disposal
D ispose of by sale or any other method
If a patent is for a process:
use or offer to use the process in the UK when it is KNOWN or it would be OBVIOUS given the circumstances that a patent would be infringed to do so.
If a patent is for a process:
ODUKI any product obtained DIRECTLY from the process.
What conditions need to be fulfilled for indirect infringement to have occurred?
The patent must be in force
a person must supply or offer to supply
in the UK a person other than the patentee or licensee
with a means relating to an essential element of the invention
he knows or it would be obvious in the circumstances that the meas are suitable for and intended to put the invention into effect IN THE UK
the means is a staple commercial product available at the priority date of the application unless the supply or offer is made to induce infringement.
What is excluded from acts that would otherwise infringe a granted patent?
a) private non commercial
c) Pharmacist fulfilling a prescription from a doctor for an individual
d) use of a product or process exclusively for the needs of a ship in the body, equipment, tackle or accessories of the ship temporarily in UK waters or territory - must be registered in a foreign country
e) Use of a product or process in the body of an aircraft, hovercraft or vehicle temporarily or accidentally entered or crossing UK territory - must be registered in a foreign country
f) The use of an exempted aircraft that has lawfully entered the UK - or the import, use, keeping of parts or accessories for the aircraft
What court can patent infringement proceedings be brought?
IPEC or the High Court
the proprietor of the patent
What can be requested in proceedings for infringement?
D elivery up or destruction of infringing items
A ccout of profits
D eclaration of validity and infringment
c O sts
If both parties choose to allow the comptroler to decide a case of infingement what is allowable
Declaration of validity and infringement.
The proceedings can still pass to the court
what is the time limit for claiming damages from infringement?
6 years in England and wales
5 years Scotland
What does S69 deal with?
Rights arising from a published application
What section deals with rights arising from a published application?
What rights arise from a published application under S69?
If the patent is GRANTED and IN FORCE
the act infringes the claims as published and the claims as granted damages will be due from publication if the infinger would have been aware
it would have been reasonable to expect that a patent would be granted from the published application
What does S62 deal with
Restrictions on the recovery of damages
What section deals with restrictions on the recovery of damages?
What defence might a defendant have against damages and an account of profits
If the defendant can prove that they were unaware adn had no reasonable grounds to suppose that the patent existed and was in force at the time of infringement.
if the patent was in the grace period for renewals award of damages is discretionary -
What are considered when awarding damages
Whether the defendant was aware of the patent (not that he was infringing
If the patent was prepared in good faith i.e. is valid
what might limit damages available to a claimant
S46(3) If a patent is registered for licences of right damages are limited to 2x the cost of the license for the infringing period.
What effect does reigistration of a transaction have on infringement proceedings.
Registration of a transfer using PF21 ensures that a claimant can be awarded costs in infringment proceedings
If a transaction is not registered within six months or as soon as practically possible if thereafter. The comptroller/court will not award costs to the claimant in infringment proceedings.
What does section 63 apply to?
Relief from infringment of a partially valid patent
What is section 64
Prior use Rights
What section deals with prior use rights
What rights arrise from prior use?
If a third party before the priortity date of a granted patent did in good faith an act that would infringe the patent if it had been in force or made serious and effective preparations to do so - They may continue but cannot license others to do so.
The right can only be transfered if the right resides in a company and the whole or part of the company in which the right resides is sold
this prior use could easily be a prior art if in the public domain
Section 65 deals with what?
Certificate of contested validity
What section deals with a certificate of contested valididty
What effect does certification under S65 bring
If the validity of a patent is contested in court and found to be valid. A certificate of contested validity may be issued
If in further proceedings for infringement or revocations, the validity is contested and the patent is found to be valid the proprietor is entitled to costs on an indemnity basis not a standard basis
(he will be entitled to the costs between himself and his solicitor)
Waht does section 66 deal with?
Proceedings for infringement by a co-owner
What section deals with infringement by a co-owner
if a patent is co-owned who my bring infringment proceedings?
Any one of the joint proprietors my bring proceedings against infringment without the concurrence of the others.
The co-owners must be made party to the proceedings, but will not be liable for costs unless they enter an appearance and take part in proceedings.