An International Guide to
Patent Case Management for Judges

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of doing the act as specified in the declaration before the date on which the injunction was granted or the declaration was revoked.¹³⁸ The same applies if an admission is made by the patentee.¹³⁹