Patent infringement is a statutory tort and the actions that make up the tort are set out in section 60 of the Patents Act 1977.
An infringement action can be brought by either the patent proprietor or alternatively an exclusive licensee of the patent.
To determine whether there has been infringement, it is necessary to consider:
1. The scope of the invention which is protected by the patent (or patent application).
2. Whether the activities of the potential infringer in relation to the invention fall within sections 60(1) or (2) of the PA 1977.
3. Whether any statutory exceptions or other defences are available.
There are two types of infringement:
1. Direct infringement, meaning acts done directly in relation to patented products or processes (section 60(1), PA 1977). It covers activities in the UK relating to: (I) Patented products; (ii) Use of patented processes; (iii) Offering patented processes for use; and (iv) Products obtained directly through patented processes.
Where the patented invention is a product, a person infringes the patent (Section 60(1)(a), PA 1977) where they either: (I) Make the product; (ii) Dispose of the product; (iii) Offer to dispose of the product; (iv) Use the product; (v) Import the product; or (vi) Keep the product (whether for disposal or otherwise).
2. Indirect Infringement, meaning acts done indirectly in relation to patented products or processes. A person indirectly infringes a patent (Section 60(2), PA 1977) where all of the following apply:
a. He supplies or offers to supply in the UK a person with any of the means relating to an essential element of the patented invention for putting the invention into effect.
b. Either he knows or it must be obvious to a reasonable person in the circumstances that the means are suitable for putting, and are intended to put, the invention into effect in the UK.
c. The person supplied or to whom the offer is made is not a licensee or another person entitled to work the invention.
Section 60(5) of the PA 1977 sets out a number of exceptions to infringement under sections 60(1) and (2) of the PA 1977.
In addition to the exceptions to infringement it is also possible to defend a patent infringement claim by challenging the validity of the patent/ patent registration on the grounds that:
1. The invention does not satisfy the statutory criteria applicable for patent registration;
2. There is prior art and the invention was not novel at the time of registration and therefore should not have been granted in the first place.
Alternatively it is also possible to defend a patent infringement claim by undertaking a technical analysis of the patent specification of the patent and proving that your product falls outside the ambit of the patent specification.