An International Guide to
Patent Case Management for Judges

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2.8.1 Actions for declarations of non-infringement

A person who has done, is doing or is intending to do an act may apply to the court for a declaration that the doing of the act does not or would not infringe a patent.135 An application may be made whether or not the patentee has made any assertion to the effect that the doing of the act has or would infringe the claim.136

The court must not make a non-infringement declaration unless

  1. (a) the applicant for the declaration:

    1. (i) has asked the patentee in writing for a written admission that the doing of the act has not infringed, or would not infringe, the patent; and
    2. (ii) has given the patentee full written particulars of the act done, or proposed to be done; and
    3. (iii) has undertaken to pay a reasonable sum for the patentee’s expenses in obtaining advice about whether the act has infringed or would infringe the claim; and,
  2. (b) the patentee has refused to make the admission.137

Where a declaration has been made, and the patentee later obtains an injunction restraining the person from doing the act, or the declaration is revoked, the holder of the non-infringement declaration is not liable to account to the patentee for any profits made, or pay damages for any loss suffered, as a result of doing the act as specified in the declaration before the date on which the injunction was granted or the declaration was revoked.138 The same applies if an admission is made by the patentee.139