Patent infringement under United Kingdom law
Encyclopedia
In the United Kingdom
, a patent
provides its proprietor with the right to exclude others from utilizing the invention
claim
ed in that patent. Should a person utilize that invention, without the permission of the patent proprietor, they may infringe
that patent.
An action for infringement can only be brought after grant of the patent, but damages
can be recovered under Section 69 for infringing acts conducted after publication of the application, but before grant, provided those acts infringe the claims both as published and as granted, and provided the defendant can be shown to have been aware of the existence of the patent (or patent application). The protection conferred by publication of the application is known as provisional protection. Publication of European applications and Patent Cooperation Treaty
(PCT) applications confers provisional protection in the same manner, provided the application is published in English.
may be awarded to rectify financial harm suffered, an injunction
may be granted to prevent further action by the infringer, an account of profits
may be ordered, an order for the delivery up or destruction of infringing items may be made or a declaration that the patent is valid and infringed may be granted to the patentee. Both damages and an account of profits may not be ordered in respect of the same infringement. Limitations on damages or costs may apply under certain circumstances, for example if the defendant was unaware of the patent's existence or where the patent was subject to a transaction that was not registered at the Patent Office within 6 months .
United Kingdom
The United Kingdom of Great Britain and Northern IrelandIn the United Kingdom and Dependencies, other languages have been officially recognised as legitimate autochthonous languages under the European Charter for Regional or Minority Languages...
, a patent
Patent
A patent is a form of intellectual property. It consists of a set of exclusive rights granted by a sovereign state to an inventor or their assignee for a limited period of time in exchange for the public disclosure of an invention....
provides its proprietor with the right to exclude others from utilizing the invention
Invention
An invention is a novel composition, device, or process. An invention may be derived from a pre-existing model or idea, or it could be independently conceived, in which case it may be a radical breakthrough. In addition, there is cultural invention, which is an innovative set of useful social...
claim
Claim (patent)
Patent claims are the part of a patent or patent application that defines the scope of protection granted by the patent. The claims define, in technical terms, the extent of the protection conferred by a patent, or the protection sought in a patent application...
ed in that patent. Should a person utilize that invention, without the permission of the patent proprietor, they may infringe
Patent infringement
Patent infringement is the commission of a prohibited act with respect to a patented invention without permission from the patent holder. Permission may typically be granted in the form of a license. The definition of patent infringement may vary by jurisdiction, but it typically includes using or...
that patent.
Legislation
Infringement under United Kingdom patent law is defined by Section 60 of the UK Patents Act 1977 (as amended), which sets out the different types of infringement.Infringement
- Where the invention is a product, by the Making, Disposing of, Offering to dispose of, Using, Importing or Keeping a patented product.
- Where the invention is a process, by the use, or offer for use where it is known that the use of the process would be an infringement. Also, by the disposal of, offer to dispose of, use or import of a product obtained directly by means of that process, or the keeping of any such product whether for disposal or otherwise.
- By the supply, or offer to supply, in the United Kingdom, a person not 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 it is known (or it is reasonable to expect such knowledge) that those means are suitable for putting, and are intended to put, the invention into effect in the United Kingdom.
An action for infringement can only be brought after grant of the patent, but damages
Damages
In law, damages is an award, typically of money, to be paid to a person as compensation for loss or injury; grammatically, it is a singular noun, not plural.- Compensatory damages :...
can be recovered under Section 69 for infringing acts conducted after publication of the application, but before grant, provided those acts infringe the claims both as published and as granted, and provided the defendant can be shown to have been aware of the existence of the patent (or patent application). The protection conferred by publication of the application is known as provisional protection. Publication of European applications and Patent Cooperation Treaty
Patent Cooperation Treaty
The Patent Cooperation Treaty is an international patent law treaty, concluded in 1970. It provides a unified procedure for filing patent applications to protect inventions in each of its contracting states...
(PCT) applications confers provisional protection in the same manner, provided the application is published in English.
Remedies
A claimant for infringement may be awarded a range of remedies (under section 61), depending on the facts of the particular case. DamagesDamages
In law, damages is an award, typically of money, to be paid to a person as compensation for loss or injury; grammatically, it is a singular noun, not plural.- Compensatory damages :...
may be awarded to rectify financial harm suffered, an injunction
Injunction
An injunction is an equitable remedy in the form of a court order that requires a party to do or refrain from doing certain acts. A party that fails to comply with an injunction faces criminal or civil penalties and may have to pay damages or accept sanctions...
may be granted to prevent further action by the infringer, an account of profits
Account of profits
An account of profits is a type of equitable remedy most commonly used in cases of breach of fiduciary duty...
may be ordered, an order for the delivery up or destruction of infringing items may be made or a declaration that the patent is valid and infringed may be granted to the patentee. Both damages and an account of profits may not be ordered in respect of the same infringement. Limitations on damages or costs may apply under certain circumstances, for example if the defendant was unaware of the patent's existence or where the patent was subject to a transaction that was not registered at the Patent Office within 6 months .
See also
See List of patent legal concepts for articles on various legal aspects of patents, including special types of patents and patent applications.- Anton Piller orderAnton Piller orderIn English and English-derived legal systems, an Anton Piller order is a court order that provides the right to search premises and seize evidence without prior warning...
(common procedure in certain countries to obtain proofs of infringement) - Cease and desist orderCease and desistA cease and desist is an order or request to halt an activity and not to take it up again later or else face legal action. The recipient of the cease-and-desist may be an individual or an organization....
- Copyright infringementCopyright infringementCopyright infringement is the unauthorized or prohibited use of works under copyright, infringing the copyright holder's exclusive rights, such as the right to reproduce or perform the copyrighted work, or to make derivative works.- "Piracy" :...
- Industrial espionageIndustrial espionageIndustrial espionage, economic espionage or corporate espionage is a form of espionage conducted for commercial purposes instead of purely national security purposes...
- Inequitable conductInequitable conductIn United States patent law, inequitable conduct is a defense to allegations of patent infringement. Even in the instance that a patent is valid and infringed, the court ruling on infringement may exercise its equitable discretion not to enforce the patent if the patentee has engaged in inequitable...
- Patent retaliation (clause)
- Patent prosecutionPatent prosecutionPatent prosecution describes the interaction between applicants and their representatives, and a patent office with regard to a patent, or an application for a patent...
- Patent trollPatent trollPatent troll is a pejorative but questioned term used for a person or company who is a non-practicing inventor, and buys and enforces patents against one or more alleged infringers in a manner considered by the target or observers as unduly aggressive or opportunistic, often with no intention to...
- Software hoarding
- Trademark infringementTrademark infringementTrademark infringement is a violation of the exclusive rights attaching to a trademark without the authorization of the trademark owner or any licensees...
External links
- Patent law on the UK Intellectual Property Office (UKIPO) web site