Patent Infringement Action – Stages 1 and 2

The advantage of a patent is that the owner has a monopoly right over the invention. On the other hand upon granting of this right the patentee consents to the publication of the details of the new patent which could potentially give a competitor a chance to create something around the design of the patent. If the owner of a patent believes that their patent has been infringed they may bring a patent infringement action to stop or avoid this the infringement from happening again.

There are 4 stages to consider in a Patent Infringement Action:

STAGE 1 – Has there been an infringing act?

According to s 60(1)-(3): Infringement occurs where (within UK), without the patentee’s consent, a person:

a) In the case of a patented Product:

i) makes, or

ii) disposes of (or offers to dispose of), or

iii) uses, or

iv) imports, or

v) keeps,

…the product, or

b) In the case of a patented process:

i) uses the process (or offers it for use), and

ii) knows (or ought reasonably to know) that its use would be infringing, or

c) In the case of any essential means for putting the invention into effect:

i) supplies (or offers to supply) those means, and

ii) knows (or ought reasonably to know) that those means are suitable for putting, and are intended to put, the invention into effect.

STAGE 2 – What is the correct procedure?

According to S61 and S67 only the owner or exclusive licensee of the patent may commence an infringement action.

Infringement actions may be brought in the Patent County Court which less formal and less expensive. On the other hand for maximum pressure on the infringer an action could be started in the High Court.

The correct procedure would always involve firstly seeking advice from a professional who deals with Patents.

If your Patent has been infringed and the grounds on which the infringing party have infringed are evident then a letter before action would be sent to the infringing party setting these out. This may force the infringer to enter into early settlement negotiations and litigation would be avoided.

If the infringer does not respond in the time given or denies the grounds on which you claim they have infringed, the next stage in the process would be to commence a claim.

According to the CPR 63.9 and practice direction 63 paragraph 11.1 – when commencing a claim the claimant should file a claim for and in addition to this file a statement of case, which must at least:

Evidence which claims in the Patent Specification are alleged to be infringed, and

Give at least one example if each type of infringement alleged.

If you think a person may have infringed a Patent you should seek legal advice immediately and certainly within the 2 year limitation period set out in S37(5) of the Patents Act 1977.

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