Patent litigation can be complex, often requiring technical expertise to understand the claims and evaluate the allegations. Below are key strategies and insights for handling patent infringement disputes effectively.
Assess the Scope of the Patent
A key defence is demonstrating that the accused product or process does not fall within the scope of the patent claims. This is consistent with the “all-elements rule,” which states that patent infringement occurs only when all technical features of the accused solution match those of the patent, either identically or equivalently.
The Doctrine of Equivalents allows for infringement if the accused product or process performs substantially the same function in substantially the same way to achieve substantially the same result, even with minor differences. This principle was notably applied in the 2017 Supreme Court case Actavis UK Ltd v. Eli Lilly and Co.
2. Prior Art Defence
In the UK, defending against infringement may involve comparing the accused technology with prior art, showing that the technology existed publicly before the patent.
Under Section 3 of the Patents Act 1977, prior art includes all information made available to the public before the patent’s priority date. A valid patent must be both novel and involve an inventive step. If the accused technology aligns with existing public knowledge, you can argue that the patent lacks novelty or inventiveness.
3. Good Faith and Legitimate Source Defence
Although the UK does not formally recognise a “legitimate source defence,” certain principles may mitigate financial consequences for those who acted without knowledge of the infringement:
- Innocent Infringement (Section 62 of the Patents Act 1977): If the infringer had no reasonable grounds to believe the patent existed, courts may reduce or waive damages, though cessation of infringing activity is still required.
- Good Faith Purchase for Resale: If a defendant demonstrates that they obtained goods through regular channels without knowledge of infringement, this may influence remedies. Evidence of standard market practices and due diligence in sourcing is critical.
- Reasonable Diligence: Courts may expect businesses to verify the legality of their supply chain, particularly in industries with frequent patent filings.
4. Prior User Rights Defence
Under Section 64 of the Patents Act 1977, those who, in good faith, were using or preparing to use an invention before the patent application date can continue their use without liability for infringement. However, this defense is limited to the scope of pre-application activities and does not permit expanded use or production.
5. Exhaustion of Rights (First Sale Doctrine)
Once a patented product is sold lawfully, the patent holder loses the right to control its resale, use, or distribution. This principle applies to specific products sold but does not grant rights to create new products based on the patented invention.
In the UK, the principle of exhaustion applies to sales within the UK following Brexit, though changes may emerge over time.
6. Patent Invalidity Challenges
Invalidating a patent can be a strong defence strategy. Typical approaches include:
- Prior Art and Lack of Novelty: Prove the invention was not new at the time of filing by presenting prior art that predates the patent.
- Obviousness or Lack of Inventive Step: Argue that the invention would have been obvious to a skilled person in the relevant field based on prior art.
- Insufficient Disclosure: Claim the patent does not provide enough detail for a skilled person to replicate the invention.
Other grounds include ambiguities in claims, lack of industrial applicability, procedural issues, unauthorised amendments, or priority date challenges.
In the UK, such challenges are pursued through the UK Intellectual Property Office (UKIPO) or courts, often requiring extensive documentation and expert testimony.
For expert legal advice on patent disputes, contact Lawdit Solicitors at info@lawdit.co.uk.
