#10542 - Patent Law Infringement And Scope Of Patent Monopoly - Intellectual Property Law

Scope of the monopoly

Infringement

• Article 64 EPC

  • (1) A European patent confers on its proprietor from the date on which the mention of its grant is published in the European Patent Bulletin, in each Contracting states in respect of which it is granted, the same rights as would be conferred by a national patent granted in that State

  • (2) If the subject matter of the European patent is a process, the protection conferred by the patent shall extend to the products directly obtained by such process

  • (3) Any infringement of a European patent shall be dealt with by national law

• Patent infringement – evidential inquiry – difficult to generalise beyond a particular case

• It has been accepted that the scope of the patent monopoly should not be limited to situations where the infringing act takes place in relation to a product/process which is exactly the same as the patented invention

  • Extending the scope of the monopoly beyond a strict reading of the claims

  • BUT how broadly can a patent be read?

• Also, not all of an invention needs to be taken for a patent to be infringed

  • Q – how much does though?

• NOTE – EPC says that questions of infringement are better dealt with by national courts

  • But the close relationship between validity and infringement – means that the decision of the EPO have impacted on British law of infringement

Types of infringing activity

Whether the activity falls within the scope of the patent monopoly

Whether D has a defence

Types of infringing activity

• See s60 PA 1977

• Patent law – distinguishes between direct and indirect infringement

• Direct infringement – some immediate engagement with the patented product or process – s60(1)

• Indirect infringement – a person facilitates the act of infringement – s60(2)

• The activity must be carried out without the consent of the patentee (no licence), occur within the UK and take place during the duration of the patent

Direct infringement

• s60(1) – wide array of activities – making/using a product or process through to sale/import of the product

• Basically most of the commercially valuable activities are within the owner’s control

• Rights given to an owner depend on whether the patent is for a product, a process or a product obtained directly from a process

• S60(1)(a) and (c) - Liability is absolute in relation to a patent for a product or where a product has been obtained directly from a patented process - no need for the patentee to show that the defendants knew that they were infringing

• S60(1)(b) - Liability is not absolute in relation to a patent for a process when an infringer uses/offers a process for use – knowledge of the infringer is relevant

Patent for a product

• s60(1)(a) – the owner of a patent for a product has the right to make, dispose of (inc the right to sell), offer to dispose of, use, import of keep the product, whether for disposal or otherwise

• Absolute liability - intention to infringe is irrelevant to determination of liability but might play a role in relation to the remedy granted by the court

• Why is liability absolute?

  • So that patentees can fully enjoy their monopoly rights

    • Hmm but property rights are never absolute – limited in terms of duration, subject-matter and types of protected activity --- so there is no reason why infringement should be absolute?

  • The reverse-infringement test – based on a belief that the novelty examination is a mirror of the test for infringement

    • Court asks whether if the disclosure was made after the grant, would it have infringed the patent

    • When considering whether the info anticipates an invention, the intention of the person who made that information public is irrelevant

    • Novelty is decided objectively

    • On the basis that novelty and infringement are mirrors of each other, it is suggested that infringement should also be decided objectively

    • The reverse-infringement test was approved in the UK before 1977 in some decisions

    • BUT this is no longer the test to determine whether an invention is novel

    • The test has merely brought conceptual clarity to the novelty examination

  • The information function performed by the patent system generally

    • The potential harm that third parties endure as a result of infringement being absolute is mitigated by the fact that as part of the patent process, the invention is made available to the public

    • This means that third parties are able to access the info and alter their behaviour and thus avoid infringing

    • Hmm but consider biological inventions which are dynamic – the rationale for strict liability is based on an image of the invention as being static – if inventions are active then a defendant can do little to avoid infringing

United Wire [2001]

• Concerned the exclusive right to “make” the product

• Few problems have arisen in determining what is meant by right to make a product

• An exception – where D repairs/modifies the product

• Patent law has recognised that purchasers of patented products should be able to repair and modify those products

• Lord Hoffmann – “repair is one of the concepts (like modifying or adapting) which shares a boundary with “making” but does not trespass on its territory”

• “as a matter of ordinary language, the notions of making and repair may well overlap. But for the purposes of the statute, they are mutually exclusive”

• Before this case, the right to repair had sometimes been based on the idea of implied licence

• Lord Hoffmann – concluded that the totality of the work amounted to “making” a new article – because the removal of the meshes and the stripping down and repairing of the frame resulted merely in a component of the patented article “from which a new screen could be [and was] made”

Schutz v Werit [2011] Court of Appeal and [2013] Supreme Court

• The case concerned what was the appropriate test for deciding whether an act of reconditioning a patented product constitutes a non-infringing “genuine repair” or whether it constitutes an infringing act of “making the product”

• The patent – an intermediate bulk container (IBC) – a large two-part container including a plastic bottle within a metal cage that is used for transporting liquids

• Werit sell bottles for IBCs to another company, Delta, who buy used Schutz IBCs, remove and discard the original Schutz bottles, repair any damage to the cages, replace the original bottles with Werit bottles and offer the resulting IBCs for sale in competition with Schutz

• ISSUE – whether what Delta is doing constitutes “making” the patented IPC within the meaning of PA 1977 s60(1) or whether it was simply repairing the IBC

• If Delta infringes the patent, then so does Werit

High Court

• Floyd J held in Werit’s favour

• He reviewed the H of L decision in United Wire

• He proposed the test: “ask whether, when the part in question was removed, what was left embodied the whole of the inventive concept of the claim”

• Applying this test, he held that because the whole of the inventive concept was said to be in the Schutz cage, replacement of the bottle constituted a repair, rather than “making”

• Said that Delta’s activity of replacing the inner container of a Schutz IBC with a Werit bottle does not amount to making the patented product

• SO no infringement

C of A

• Schutz, the exclusive licensee of the patent, appeals Floyd J’s dismissal of its infringement claim against Werit

• Werit cross-appeals the judge’s finding that the patent is valid

• C of A rejected this interpretation of United Wire

• It said that in United Wire, infringement was found despite the fact that the whole inventive concept could be said to lie in a component of the product that was not replaced during the alleged infringing act

• SO it held that United Wire excludes a “whole inventive concept” test

• The test was held to be “fuzzy and uncertain” and without basis in the law of infringement

• Jacob LJ – the only test was whether the alleged infringer had made the product

• Applying this test, Jacob LJ held that Delta had made the IBCs when they replaced Schutz’s bottles with those manufactured by Werit and so infringed the patent

• This judgment rejected the “whole inventive concept” test but didn’t define a boundary between making and repair

Supreme Court

• Lord Neuberger

• Impeller Flow Meter (German case) – BGH referred to the distinction between permissible repair and prohibited making

  • “When the interests are weighed, increasing importance can be given to whether it would be customary to expect the relevant parts to be replaced during the service life of the device… But what is also relevant is the extent to which the technical effects of the invention are reflected by the replaced parts. Therefore, the replacement of a part subject to wear and tear that is usually replaced during the expected service life of the machine – sometimes repeatedly – does not usually constitute a new manufacture. The situation can be different, however, if this part in fact embodies essential elements of the inventive concept”

• “The mere fact that an activity involves replacing a constituent part of an article does not mean that the activity involves “making” of a new article rather than constituting a repair of the original article”

• The question – is whether either of the Courts adopted the right approach – “they did not”

• Floyd J – said that the difficult case is where the invention resides in the part retained and that this wasn’t the case in United Wire

  • Mr Meade QC challenged and said that the inventive concept lay in the frame in which D retained, and not in the wire meshes which it replaced

  • “I accept that contention, although, as explained below, it does not by any means wholly...