Primary Infringement of a patent in the UK

Primary patent infringement in the UK arises where a third party engages in the acts prohibited under section 60 (1) of the Patents Act 1977.

Section 60 states that:

(1) Subject to the provisions of this section, a person infringes a patent for an invention if, but only if, while the patent is in force, he does any of the following things in the United Kingdom in relation to the invention without the consent of the proprietor of the patent that is to say –

(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, users or imports any product obtained directly by means of that process or keeps any such product whether for disposal or otherwise.

You will see that s 60 (1) (b) requires actual or imputed knowledge of infringement whereas s 60 (1) (a) and (c) do not.

So, where the invention is a product, the ‘right to make’ gives the holder the right to prevent others from making the product relating to the invention. The right to make also covers repairs or modifications made to the patented product; although case law suggests that a patent only covers the ‘essential element’ of the invention (and so may exclude major modifications to the product).

The ‘right to dispose’ is similar to the ‘right to offer’ as both relate to selling the product. The ‘right to dispose’ is the actual act of selling, and the ‘right to offer’ is the act of offering for sale. Both of these rights are exhausted upon the first legitimate sale of the patented product and so the rights do no extend to any subsequent resale of the product.

The ‘right to import’ allows the holder to prevent others from making the patented product in a country where they have no protection and then bringing it into the country where there is protection.

The ‘right to keep’ specifically states ‘for disposal or otherwise’. The ‘or otherwise’ must mean that even if a product protected by a patent is merely within a third party’s possession (without the permission of the proprietor of the patent) this will amount to infringement of that patent.

Where the patent is a process, there exists a ‘right to use’ which is the right to stop others performing the patented process or offering the process for use within the UK. There is also a requirement for another party to have knowledge of the patent in order to be actually infringing the ‘right to use’.

Further, if the invention is a process, the holder may prevent another party from disposing, using, importing, offering or keeping a product obtained by the process in the same manner as for product patent claims.

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