Patents

Infringement

Jane Lambert

Last updated 5 March 2005

Art 64 (1) EPC provides that a European patent shall confer on its proprietor from the date of publication of the mention of its grant, in each contracting state in respect of which it is granted, the same rights as would be conferred by a national patent granted in that subject-matter of the European patent is a process, the protection conferred by the patent shall extend to the products directly obtained by such process. Any infringement of a European patent shall be dealt with by national law (art 64 (3) EPC). For the UK, it is therefore necessary to consider the provisions relating to infringement in the Patents Act 1977.

Patents Act 1977
The same provisions apply to infringement of a national patent granted for the UK by the Patent Office and European patents (UK) granted by the European Patent Office. S. 60 of the Patents Act 1977 provides for two kinds of infringement:

	direct or substantive infringement: direct use of the invention;
	indirect or contributory infringement: indirect use of the invention.

Each of these is considered in turn. In either case, a patent is infringed only if the patent is in force and the consent of the patentee or owner of the patent ("the proprietor") is not obtained.

Direct Infringement

Different provision is made for inventions that are products and those that are processes:

Product: s.60 (1) (a) provides that where the invention is a product a person infringes the patent, if but only if, while the patent is in force he makes, disposes of, offers to dispose of, uses, imports or keeps the invention whether for disposal or otherwise in the UK without the proprietor's consent.

Process: s.60 (1) (b) provides that where the invention is a process a person infringes the patent, if but only if, while the patent is in force he uses the processor offers it for use in the UK without the proprietor's consent when he knows, or when it would be obvious to a reasonable person in the circumstances, that the use of the process without the consent of the proprietor would infringe the patent. S. 60 (1) (c) further provides that where the invention is a process the patent is infringed by disposing of, offering to dispose of, using, importing or keeping (whether for disposal or otherwise) any product obtained directly by means of that process.

Indirect Infringement
S.60 (2) provides that a person also infringes a patent if while the patent is in force he supplies (or offers to supply) a person in the UK with any of the means relating to an essential element of the invention for putting the invention into effect, when he knows, or it is obvious to a reasonable person in the circumstances, that those means are suitable for putting and are intended to put the invention into effect, in the UK. There is no infringement under this sub-section where the person to whom the means are offered or supplied is a licensee or other person entitled to work the invention. Nor is there any infringement where the offer or supply is made with the proprietor's consent. Further, s.60 (2) does not apply to the supply or offer to supply a staple commercial product unless the offer is made for the purpose of inducing the person to whom the offer or supply is made to infringe the patent.

Meaning of "Invention"

S.125 (1) of the Patents Act 1977 provides that an invention shall be taken to be that specified in a claim of the specification of the patent or application for a or patent as the case may. In determining whether, for example, a patented product has been made or process used, the court must construe - that is to say, ascertain precisely what sort of product or process is specified by the claim. This process is carried out without any reference to the alleged infringement. For further information on how a claim is construed, read the article on "construction" and the cases referred to therein..