9.5 Patent infringement
9.5.1 Acts of infringement
Section 60(1) of the Act provides that a person infringes71 a patent if they do any of the following acts in the United Kingdom without the consent of the patent proprietor while the patent is in force:
- (a) where the invention is a product, he makes, disposes of, offers to dispose of, uses or imports the product or keeps it whether for disposal or otherwise;
- (b) where the invention is a process, he uses the process or he offers it for use in the United Kingdom when he knows, or it is obvious to a reasonable person in the circumstances, that its use there without the consent of the proprietor would be an infringement of the patent;
- (c) where the invention is a process, he disposes of, offers to dispose of, uses or imports any product obtained directly by means of that process or keeps any such product whether for disposal or otherwise.
Section 60(2) provides that a person also infringes72 a patent if, while the patent is in force and without the consent of the patent proprietor:
he supplies or offers to supply in the United Kingdom a person other than a licensee or other person entitled to work the invention 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 United Kingdom.
These provisions are intended to reflect the corresponding provisions (Articles 25 and 26) of the Community Patent Convention (even though that convention never came into force).73 Accordingly, U.K. courts have had reference to the decisions of courts of other states that were parties to that convention in interpreting these provisions.74
English law also recognizes accessory liability of persons who either procure others to commit acts or have formed a common design with others to do acts, which amounts to infringement.75
Section 61 of the Act provides the right of a patent proprietor to bring proceedings in the court (e.g., the High Court in England and Wales)76 in respect of any act alleged to infringe the patent. An exclusive licensee77 of the patent also has the right to bring proceedings in respect of any infringement committed after the date of the license.78 The patent proprietor or an exclusive licensee also has the right to bring proceedings, after grant of the patent, in respect of acts committed after the publication of the application for the patent if they would have infringed the patent had it been granted.79
Claims may also be brought in respect of threats to commit acts of infringement when no act of infringement has yet been committed – so-called quia timet actions. Such claims will only succeed if, at the date proceedings are issued, there was a sufficiently strong probability – a concrete, strong and tangible risk – that an injunction would be required to prevent the defendant from infringing.80
9.5.2 Claim construction
The provisions of Section 60 of the Act refer to “the invention.” Section 125 defines an invention as follows:
(1) For the purposes of this Act an invention for a patent for which an application has been made or for which a patent has been granted shall, unless the context otherwise requires, be taken to be that specified in a claim of the specification of the application or patent, as the case may be, as interpreted by the description and any drawings contained in that specification, and the extent of the protection conferred by a patent or application for a patent shall be determined accordingly.
(3) The Protocol on the Interpretation of Article 69 of the European Patent Convention (which Article contains a provision corresponding to subsection (1) above) shall, as for the time being in force, apply for the purposes of subsection (1) above as it applies for the purposes of that Article.
The “Protocol on the Interpretation of Article 69 EPC” in the EPC provides as follows:
Article 69 should not be interpreted as meaning that the extent of the protection conferred by a European patent is to be understood as that defined by the strict, literal meaning of the wording used in the claims, the description and drawings being employed only for the purpose of resolving an ambiguity found in the claims. Nor should it be taken to mean that the claims serve only as a guideline and that the actual protection conferred may extend to what, from a consideration of the description and drawings by a person skilled in the art, the patent proprietor has contemplated. On the contrary, it is to be interpreted as defining a position between these extremes which combines a fair protection for the patent proprietor with a reasonable degree of legal certainty for third parties.
For the purpose of determining the extent of protection conferred by a European patent, due account shall be taken of any element which is equivalent to an element specified in the claims.81
Until 2017, U.K. courts did not recognize a doctrine of equivalents. Instead, U.K. courts have determined the extent of protection of a patent by applying “purposive construction.” This involved determining what the skilled person would have understood the patentee to be using the language of the claims to mean, and, in that process, account could be taken of equivalents. A person could only infringe a patent if the product or process fell within the claims on a purposive construction.82 In 2017, the Supreme Court held that the interpretation of the language of the claims was only the first stage in determining whether there was infringement. The court also held that a product or process that did not fall within the claims on a normal interpretation could nevertheless infringe if it differed in a way that was immaterial, and proposed questions to assist in determining whether the variation was immaterial.83
9.5.3 Remedies for infringement
Certain remedies for infringement that may be claimed are specified by Section 61 of the Act:
- (a) an injunction restraining the defendant from any apprehended act of infringement;
- (b) an order for him to deliver up or destroy any patented product in relation to which the patent is infringed or any article in which that product is inextricably comprised;
- (c) damages in respect of the infringement;
- (d) an account of the profits derived by him from the infringement;
- (e) a declaration that the patent is valid and has been infringed by him.84
However, these remedies are said in Section 61 to be “without prejudice to any other jurisdiction of the court.” Remedies are dealt with in more detail in Section 9.7 below.
9.5.4 Claims for declaratory relief
As mentioned above, Section 61 of the Act makes it clear that, on a claim by the patent proprietor or an exclusive licensee, the court has the power to grant a declaration that a patent is valid and has been infringed. Conversely, Section 71 provides a route by which a person can obtain a declaration that a patent is not, or would not be, infringed:
Without prejudice to the court’s jurisdiction to make a declaration apart from this section, a declaration that an act does not, or a proposed act would not, constitute an infringement of a patent may be made by the court or the comptroller in proceedings between the person doing or proposing to do the act and the proprietor of the patent, notwithstanding that no assertion to the contrary has been made by the proprietor, if it is shown –
- (a) that that person has applied in writing to the proprietor for a written acknowledgment to the effect of the declaration claimed, and has furnished him with full particulars in writing of the act in question; and
- (b) that the proprietor has refused or failed to give any such acknowledgment.85
A party seeking a declaration of noninfringement, prior to serving proceedings on the patentee, must first send a notice to the patentee containing a description of their product or process to give the patentee the opportunity before proceedings are issued to agree that that product or process is not an infringement.86
However, as both Sections 61 and 71 make clear, that is not the limit of the court’s declaratory jurisdiction. CPR 40.20 provides that “[t]he court may make binding declarations whether or not any other remedy is claimed.” This provides the court with a discretionary power to grant declaratory relief, which it will normally exercise only if there is a sufficiently well defined issue between the parties and if granting the declaration would serve a useful purpose. The court should also take into account justice to the parties and any other special reasons.87
This jurisdiction has been used to grant declarations that a specified product was old or obvious at a particular date.88 The practical effect of such a declaration is that the patent proprietor cannot then assert, against that product, any patents it obtained with that (or a later) priority date. This form of declaration (sometimes called an Arrow declaration, after the first case in which it was recognized)89 is of particular use where a patent proprietor has divisional applications in prosecution that a party justifiably fears may be asserted against it if and when they are granted. It allows such a party to gain commercial certainty without having to wait until the patents are granted and then apply to revoke them. However, it is always necessary to demonstrate that the declaration would serve a useful purpose.90
9.5.5 Threats actions
Threats to bring proceedings for infringement of a patent can have a chilling effect on trade, particularly when made to a trader’s customers or potential customers. The Act therefore makes provision to allow persons aggrieved by such threats to bring proceedings and seek relief. Such actions:
- can only be brought in respect of communications from which a reasonable person in the position of a recipient would understand that a patent exists and that a person intends to bring proceedings against another for infringement of the patent by an act done, or to be done, in the United Kingdom;91
- cannot be brought if the alleged infringement consists of making or importing a product for disposal or using a process, or consists of any other act in respect of that product or process by a person who has made or imported the product or used the process (or intends to do so);92
- cannot be brought if the threat is not express and is made in a “permitted communication” (in essence, one that contains only information necessary to give notice of a patent proprietor’s rights or to seek information about the manufacture or importation of a product or the use of a process);93 and
- cannot be brought against professional advisers acting on the instructions of another identified person.94
The relief that can be sought in threats actions is:
- a declaration that the threats are unjustified;
- an injunction against the continuance of the threats; or
- damages in respect of any loss sustained by the person aggrieved by reason of the threats.95
It is a defense for the person who made the threat to show that the act in respect of which proceedings were threatened constitutes (or, if done, would constitute) an infringement of the patent.96 Most threats actions will therefore lead to such a defense being raised, together with a counterclaim for infringement, to which the claimant will respond with a defense of invalidity and a counterclaim for revocation.