What to do if your Patent is Infringed

Patents Court and Intellectual Property Enterprise Court 

Author Judicial Office Licence CC BY-SA 4.0 Source Wikimedia Commons

 

Jane Lambert

1. What do I do if my Patent is infringed?

The first thing to do is to take some specialist legal advice.  Do not take matters into your own hands unless and until you have done so. Intellectual property law differs from other types of law in that sending a letter before claim that would be perfectly acceptable in most circumstances can sometimes be actionable.  That is because s.70A (1) of the Patents Act 1977 provides:

"Subject to subsections (2) to (5), a threat of infringement proceedings made by any person is actionable by any person aggrieved by the threat."

The law on groundless threats has recently been reformed.  It used to be far more draconian. There are now a number of exceptions and defences that did not exist before. But the provision can still land you in big trouble if you fall foul of it.   And one further point!  Not every solicitor or barrister in general civil or commercial practice has heard of s.70A (1) so make sure that you go to an IP specialist for advice on how to deal with suspected patent infringement.

2.  Where will I find Specialist Advice?

Barristers specializing in intellectual property law are eligible to join the Intellectual Property Bar Association, I am a member of that Association and so are most of my colleagues.  There are a lot of barristers who know about IP law who are not members but it is not always easy to identify them.

Many specialist law firms and law firms with expertise in IP law belong to the Intellectual Property Lawyers Association. There are however many law firms with expertise in IP law that do not.  Firms with such expertise tend to publish a lot of articles and give lots of talks on the topic. 

All Chartered Patent Attorneys will have acquired a thorough knowledge of patent law.  Many but not all will also have qualified as "patent attorney litigators" or "patent attorney advocates."  Some attorneys' firms have litigation departments. Others have arrangements with specialist law firms some of which practise from the same premises and under the same names.  The patent attorneys' professional association is the Chartered Institute of Patent Attorneys ("CIPA").

3.   How do I know if my Patent has Been Infringed?

Patents are granted for inventions that may be products or processes.  

S.60 (1) (a) of the Patents Act 1977 says that where the invention is a product a person infringes the patent if he or she makes, disposes of, offers to dispose of, uses or imports the product or keeps it whether for disposal or otherwise in the UK without the consent of the owner of the patent.

Where the invention is a process, s.60 (1) (b) says that a person infringes the patent if he or she uses the process or offers the process for use in the UK when he or she knows, or it would be obvious to a reasonable person in the circumstances, that its use there without the consent of the owner would be an infringement of the patent.

Where the invention is a process s.60 (1) (c) further provides that a person infringes a patent if he or she disposes of, offers to dispose of, uses or imports any product obtained directly by means of that process or keeps any such product whether for disposal or otherwise.

4.  Yes but how do I identify that "Product" or"Process"?

When you or your patent attorney applied for a patent for your invention you will have filed a document called a "specification".   The specification will have contained a description of the invention and several numbered paragraphs known as "the claims"

S.125 (1) of the Act provides:

"For the purposes of this Act an invention for a patent for which an application has been made or for which a patent has been granted shall, unless the context otherwise requires, be taken to be that specified in a claim of the specification of the application or patent, as the case may be, as interpreted by the description and any drawings contained in that specification, and the extent of the protection conferred by a patent or application for a patent shall be determined accordingly."

Your invention is therefore set out in those claims.   

Thus, anyone who disposes of offers to dispose of uses or imports a product that is described in any of those claims infringes the patent for that product.  Similarly, anyone who uses a process that is described in any of those claims infringes the patent for that process.  Anyone who disposes of offers to dispose of uses or imports any product obtained directly by means of that process also infringes the patent for that process. 

5.   So  How does it work exactly?

The court works out what the claim means.  Often it breaks the claim into its "integers" or "features" as in the following example:

“1A An apparatus for automatically controlling a ventilator comprising:
1B first means for processing data indicative of at least a measured oxygen level of a patient, and for providing output data indicative of:
1C required concentration of oxygen in inspiratory gas of the patient (FiO2) and positive end-expiratory pressure (PEEP) for a next breath of the patient;
1D wherein FiO2 is determined to reduce the difference between the measured oxygen level of the patient and a desired value;
1E wherein PEEP is determined to keep a ratio of PEEP/FiO2 within a prescribed range and, while keeping the ratio within the prescribed range, to keep the measured oxygen level of the patient above a predefined value; and
1F second means, operatively coupled to the first means, for providing control signals, based on the output data provided by the first means, to the ventilator;
1G wherein the control signals provided to the ventilator automatically control PEEP, and FiO2, for a next breath of the patient.”

(see para [8] of Tehrani v Hamilton Bonaduz AG and others [2021] EWHC 3457 (IPEC) (22 Dec 2021).

As the exclusive right to exploit an invention for up to 20 years is a reward for teaching the world how to make or use it, the court reads the claim in the way that it would be understood by a "person skilled in the art".   He or she is the person to whom the specification is addressed.  He or she is often referred to as"the skilled addressee". Any special terminology or conventions that might be used by such skilled addressee are applied by the court.  Usually, the court requires experts in the technology to explain the terminology or conventions.

Once the court has decided what the claim means it looks at the defendant's product or process to see whether it has the claimed integers.   If the defendant's product or process does have those integers, then the claim is infringed.

6.    So Everything hangs on the Interpretation of the Claim?

Not quite!   The patent is infringed only if the claim is valid.    The first thing that a defendant does when he or she is accused of patent infringement is to investigate the validity of the claim.   There are all sorts of reasons why a claim might not be valid.   The claim may be for something that has already been invented.   That is called "anticipation". Alternatively, it may claim something that would be obvious to a person skilled in the art.  In that case, it would lack an inventive step. 

7.     Wouldn't that be picked up by the Examiners when an Application is made for a Patent?

Not necessarily!  Examiners do their best but they have only so much time and only so many resources.  They will read the patents, patent applications and technical literature in English.  Possibly they may know some other European language and they will consult patent databases or journals in those languages.  But much of the world's technical literature is now published in Mandarin, Japanese and Korean and not many examiners in this country or even at the European Patent Office in Munich speak those languages.  A prior disclosure may be a previous patent application but it may equally be an article in a scientific or technical journal.  If the information is available to the public then it is already known. 

8.     Phew!  So how often are Patents found to be invalid?

I don't have any statistics but quite often as you can see from looking at previous decisions of the Patents Court or Intellectual Property Enterprise Court.

9,.    Are they the Courts that decide Patent Infringement Cases?

Yes. They are the courts for patent infringement disputes in England and Wales.   

The Intellectual Property Enterprise Court ("IPEC") entertains claims that are worth £500,000 or less that can be tried in no more than 2 days.  Cases are very tightly managed in that court.   The costs that can be recovered by a successful party from the unsuccessful one are limited to £50,000 on the determination of liability and £25,000 for the determination of the damages or other financial remedy that is due to the successful party.

The Patents Court hears all other patent cases.   There are no time limits or limits on recoverable costs in cases before the Patents Court.   The judges of that court do their best to control costs but expert witnesses and specialist counsel and solicitors are expensive.

The Patents Court and IPEC are headquartered in the Rolls Building off Fetter Lane in London.  The judges of both courts have said that they will travel outside London for the convenience of the parties and witnesses or to save costs. To the best of my knowledge and belief, the Patents Court has only once sat in Birmingham.  I think that is also true of IPEC.   

There is a patents court in  Edinburgh which is part of the Outer House of the Court of Session.   The Chancery Division of the High Court of Justice of Northern Ireland hears patent infringement cases in Belfast.

If you have a foreign patent you have to go to the courts of the country for which the patent was granted.  Some countries like Germany, Switzerland and the Netherlands have specialist patent tribunals. Other countries do not.   TahylorWessing has a website called the Patent Map which has lots of useful information about patent litigation throughout Europe.

10.   So how much is that likely to cost me?

A lot of money even in IPEC.   A Patents Court dispute over the use of standard-essential patents can cost many millions of pounds.   That is because there are several technical trials to decide whether each patent is valid, essential to the standard and infringed and then a final trial to decide the terms of licences to use the patents.   If you run a start-up or indeed any other small or medium enterprise I strongly advise you to take out patent litigation insurance. I have written quite a lot about patent insurance in this blog over the years and can commend CIPA's work on the topic.

11.   Further Information

This article barely scratches the surface of a huge topic and I am aware that I have left out lots of crucial information.  If you have a specific enquiry call me on 020 7404 5252 during office hours or send me a message through my contact form. 

So You've Got A Patent!

Jane Lambert

Congratulations! It probably took a little longer to get than you expected. It almost certainly cost you more money than you had bargained for.  But so long as you pay the renewal fees you have an asset that is bound to make your fortune. Right?

Well, not exactly. You have a right to stop other people from making, marketing, importing or selling something that you have invented but a patent is not a meal ticket. It exists to give you an opportunity to recoup the time and money you spent in devising the invention and perhaps a little extra on the side either by working the patent yourself or by licensing it to others. Whether you can do that or not will depend on whether anybody wants to buy your invention.

If there is a market for the invention, there is always a possibility that somebody will want to muscle in. Such a person may want to do it fairly by seeking a licence from you or by using a technology that does not infringe your patent, but there are also those who would try to sweep your patent out of the way in revocation or declaration of non-infringement proceedings or simply ignore your patent if they don't think you can afford to enforce it.  Unlike some other intellectual property rights such as copyright, trade marks, rights in performances or, nowadays, registered designs, it is not an offence to infringe a patent in this country even if it is done quite blatantly, cynically and on an industrial scale.

If anyone infringes your patent you have to sue and patent litigation is not cheap. You can't use the small claims track of the Intellectual Property Enterprise Court ("IPEC") because the rules specifically exclude patents, registered and registered Community designs, semiconductor topography and plant variety claims from that tribunal.  You can use the IPEC multitrack but you have to be prepared to pay up to £50,000 if you lose the case and probably a great deal more than that to your own legal team. That is a lot better than the Patents Court where the costs that can be awarded against you are unlimited and can run into millions.

So unless you are a millionaire, your company is really coining it or you have some other source of funding you should consider before-the-event insurance cover against IP disputes before a dispute arises (see my article It is never enough to get a patent, trade mark or registered design 19 Aug 2019 and my links to other articles). It is unrealistic to expect a lawyer specializing in IP to represent you on a no-win no-fee basis because the risks, costs and wait for payment are too great however strong your case. IP insurance is not cheap but it is a lot better than bankruptcy or watching a competitor ride roughshod over your rights.

So, what should you do if you think that someone is infringing your patent? Well, one thing you should not do is take matters in your own hands and write a stroppy letter to the other side. S.70 of the Patents Act 1977 and subsequent sections prohibit threats of patent infringement proceedings that cannot be made out. If you make such a threat (however politely) you risk an action for an injunction, declaration and costs that could cost you plenty. Any lawyer or patent attorney with any experience of patent litigation will be aware of this section but many non-specialist lawyers aren't. If they make a groundless threat on your behalf it is you who will have to carry the can.

Where do you find a specialist lawyer? Any firm that belongs to the Intellectual Property Lawyers Association should be able to help you. There are good solicitors in other firms but you have to be careful because not every solicitor who claims experience of IP has actually done a patent case.  Another possible option is a patent attorney litigator.  Not every patent attorney has expertise in civil litigation but there is a growing number who have. The CIPA and IPReg websites should help you find one. Yet another option is to consult a member of the IP Bar. We are advocates and not litigators but we are probably in a better position than most to recommend a good litigator.

Civil proceedings begin with the service or delivery of a claim form on the alleged wrongdoer.  The claim form is usually accompanied by another document known as particulars of claim. Those particulars must state the facts on which you base your claim and the remedy that you want precisely. In a patent infringement claim, your particulars of claim must state which of the claims of your patent is alleged to have been infringed and give at least one example of at least one alleged infringement.  The "claims" are the numbered paragraphs at the end of your patent specification setting out the features of your invention.  The reason they are set out in numbered paragraphs is that if one of them is too broad you may still be able to rely on one of the others. If your invention is a product the patent is infringed by making, marketing, importing or using a product that has all the features of at least one of the claims.

It is possible that the alleged infringer will accept the strength of your case and seek a settlement or simply throw in the towel but you cannot bank on that. He or she may challenge your interpretation of the claim and argue that his or her product falls outside its wording,  It is likely that he or she will dispute the validity of the patent on one of several grounds.  If your opponent can show that someone else invented exactly the same thing before you applied for your patent can be revoked (taken away) on the grounds that your invention was not new. Another possible ground for revocation is that your invention would have been obvious to anyone with the appropriate skills and knowledge having regard to everything that was known at the time of your application.  You might think that all this would have been considered by the examiner when you applied for your patent but the sad fact is that the time and resources that are available to an examiner are nothing like the time and resources that your opponent will expend in order to knock out your patent.  A surprisingly large number of patents are revoked in whole or in part when patentees bring infringement claims.

If you win your action you will be awarded an injunction and a contribution to your legal fees which will be limited to £50,000 if you brought your claim in IPEC.  You would probably get more if you sue in the Patents Court but even the awards in that court are unlikely to cover everything you spent. An injunction is an order by a judge to do or not to do something. If it is disobeyed the court may punish the defendant with a fine or even imprisonment.  What you will not get at this stage is damages or accountable profits.  That will require another hearing known as an account or inquiry which may take place several months or even a year or so in the future. That will also cost a lot of money,

There is obviously a lot more to patent enforcement than I can mention in a short note.  The important thing is to think about enforcement and arrange to fund it whether by insurance or otherwise well before a dispute arises. If you want to discuss this article or anything relating to it, call me on 020 7404 5252 or send me a message through my contact form.

Trade Marks for Inventors

Jane Lambert

Inventors are most interested in protecting their inventions for which they require patents but some set up businesses to manufacture or market their inventions. Such businesses need to identify themselves and their products in the market place and for that they need brands. Brands are built up by sales and marketing and the common or judge made law of England and Wales gives a measure of protection for established brands by the law of passing off, But if you are new to the market or are about to launch a new product or service you can't rely on that law. You need to register a trade mark first.

What are trade marks?
S.1 (1) of the Trade Marks Act 1994 defines a trade mark as

"any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings."

The following paragraph helpfully adds:

"A trade mark may, in particular, consist of words (including personal names), designs, letters, numerals or the shape of goods or their packaging."

The Trade Marks Act 1994 applies only to the United Kingdom but our trade marks law has been harmonized for over 20 years with the laws of the rest of the European Union by an EU Directive and a string of decisions of the Court of Justice of the European Union. As all the EU member states are members of the World Trade Organization EU trade mark law and the trade mark laws of each of its member states have to comply with Annex 1C to the World Trade Organization Agreement which is better known as TRIPS (Trade-Related Aspects of Intellectual Property Rights). Art 15 (1) of TRIPS contains a definition that is very similar to s.1 (1) of our Trade Marks Act 1994.

A word on spelling
You will have noted that trade mark is spelt as two words in our statute but as one word in the TRIPs. Both spellings are correct but we tend to use the two word spelling in the UK, the EU and most of the Commonwealth whereas Americans use one word. As I am British I shall stick to spelling it as two words but you may find your spell check prefers the American spelling.

Specified goods
Trade marks are registered for goods or services and when you apply for a trade mark you have to specify the goods or services to which it is to apply.

It is still sometimes possible for two different trade mark owners to register the same sign for different goods. We were once familiar with Mazda card and Mazda light bulbs. But that has become more difficult since s.5 (3) of the Trade Marks Act 1994 now provides that a trade mark shall not be registered if it is

"identical with or similar to an earlier trade mark, shall not be registered if, or to the extent that, the earlier trade mark has a reputation in the United Kingdom (or, in the case of a Community trade mark or international trade mark (EC) in the European Community) and the use of the later mark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark."

Goods and services are divided into a number of classes by an international agreement called the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks or Nice Agreement for short.  Our Intellectual Property Office has very helpfully published Guidance Trade mark classification list of goods and services 2 May 2014 which you can consult on its website.

When you apply to register a trade mark you have to state the class or classes of goods and services for which you wish the mark to be registered. You should bear in mind that one class of goods or services is included in your application fee and that you have to pay extra for each additional class of goods or services.

What is the point of a trade mark?
The rights conferred by the registration of a trade mark are set out most succinctly in art 16 (1) of TRIPS:

"The owner of a registered trademark shall have the exclusive right to prevent all third parties not having the owner’s consent from using in the course of trade identical or similar signs for goods or services which are identical or similar to those in respect of which the trademark is registered where such use would result in a likelihood of confusion. In case of the use of an identical sign for identical goods or services, a likelihood of confusion shall be presumed"

That is echoed by s.9 (1) of our Trade Marks Act 1994:

"The proprietor of a registered trade mark has exclusive rights in the trade mark which are infringed by use of the trade mark in the United Kingdom without his consent."

The acts that constitute infringement are set out at some length in the first three sub-sections of s.10 of the 1994 Act.

UK and Community Trade Marks
Applicants for trade marks in the UK has the choice of registering a trade mark for the UK alone or for the whole of the EU. Trade marks for the whole EU are known as "Community trade marks" or "CTM" and I shall refer to them as CTM for the rest of this article.

If you want a trade mark for the UK alone you apply to the Intellectual Property Office or "IPO" in Newport. The department that looks after trade marks is known as the Trade Marks Registry which us usually referred to as "the Registry".  Confusingly the head of the IPO is called "the Comptroller" in relation to patents and unregistered design rights but "the Registrar" in relation to trade marks and registered designs, However, he or she is the same person.

If you want a CTM you have to apply to the curiously named Office for Harmonization in the Internal Market Trade Marks and Designs ("OHIM") in Alicante in Spain. Applications for CTM are governed by the CTM Regulation (Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark OJ 24.3.2009 L78/1) but its provisions are very similar to those of the Directive and hence our Trade Marks Act 1994.

Guidance on applying for trade marks
The IPO contains a useful step by step guide to registering a UK trade mark that begins with the section "Trade marks: protect your brand". The next sections are "What you can and can't register", "Apply" and "After you apply". Most of the information in those pages would also be of use if you are applying for a CTM or a trade mark in any other country's trade marks registry.

If you want a CTM, OHIM also gives you some useful information. I recommend starting at the Trade Marks Basics page and working your way from there. There is an amusing little animated video called "It's all about trade marks" which you shouldn't miss.

There is also useful stuff on the British Library's Business and IP and World Intellectual Property Office websites and there is lots more from law firms, patent offices, trade mark and patent agencies and universities around the world but for now I would be content with the publications that the IPO and OHIM put out otherwise you will never get started.

Should you get professional advice?
It is perfectly possible for a reasonably well educated and intelligent individual to apply for a UK trade mark or CTM without the assistance of a trade mark or patent attorney or lawyer and many business owners do just that but unless you have a lot of experience of IP and trade marks you can easily come unstuck if you try to do it yourself. For instance, you may miss something on a search, you may fill out the form incorrectly, you may apply for a mark that can't be registered or a third party may oppose your mark after it has been advertised if he thinks that you are unrepresented in circumstances that he wouldn't try if he knew you were professionally represented. The cheapest you can register a UK mark is £170 if you make the application on-line and there are many attorneys who will do all the searches, draft the application, pay the Registry fees for £500 or less. To me that seems a no-brainer.

If you don't have an attorney and you would like me to suggest one, call me on 020 7404 5252 during normal office hours or message me through my contact form.

On-line or paper
Both the IPO and OHIM encourage on-line applications by offering slight discounts for on-line applications.

Searches
Regardless of whether you apply for a UK mark or a CTM it is imperative that you carry out a thorough search for you will probably not be allowed to register a mark that is the same or similar to an existing one for the same or similar goods or services. Even if your application does somehow slip through the owner of the earlier mark can apply to invalidate it on the grounds that it should never have been registered.

You can search the IPO or OHIM databases yourself (see Search for a Trade Mark on the IPO website and eSearch plus on OHIM's) but you will get a better result if you instruct an attorney for he or she knows what to look for. You can also get a good search from Leeds Business and IP Centre if you call Ged or Steff on 0113 247 8266.

Making the application
As there is excellent information from the IPO and OHIM on trade mark applications I am not going to repeat it here.

If you are doing it yourself and encounter a problem you can contact me on 020 7404 5252 or use my contact form. In most cases my advice will be go find an attorney and I will tell you how to get one but there may be a point of law which requires professional advice in which case I will see you in conference or advise you in writing (see "What happens if the examiner says no?" below).

IP insurance
Another thing you should consider when you apply for a trade mark is enforcement. Although some trade mark infringements are crimes which can be prosecuted by trading standards officers in the magistrates or Crown Court it is generally down to you to enforce your trade mark. You do that by issuing proceedings in the civil courts. Though you can't start proceedings until your mark has been registered your rights and hence your claim to damages can be backdated to the date of application. IP litigation in the UK has always been more expensive than on the Continent and the costs of issuing proceedings for claims over £10,000 have recently sky rocketed (see How to enforce your IP claim after court fees sky rocket 7 March 2015). Unless you have lots of money I would advise your taking out before-the-event IP insurance at the earliest possible opportunity (see Intellectual Property Litigation - the Funding Options 10 April 2013 NIPC Law) which is when in the case of trade marks is when you make your application.

What if the examiner says no?
Here's where I come in. Any decision of the hearing officer can be appealed but appeals are be expensive and you will want to make sure that you are on firm ground. You could ask your trade mark or patent attorney or your solicitor but at the end of the day they may well suggest your taking counsel's opinion. "Counsel" is another word for barrister or someone like me and if you want to know what IP barristers such as I can offer read my article IP Services from Barristers 6 April 2013 4-5 IP). I will advise you on your options and if you decide to appeal I will represent you all for a fixed fee that will be agreed in advance. Again, if you want to consult me call me on 020 7404 5252 during normal office hours or message me through my contact form.

In the IPO appeals from examiners are made to an official known  as a hearing officer who sits on behalf of the Registrar. The IPO has published two useful articles on Options following an objection to a trade mark examination and Trade mark disputes resolution: hearings which I advise you to read.

Appeals in OHIM are made to Boards of Appeal and the procedure is set out in the Appeal page.

What if someone else says no?
if the examiner finds no objection  to your application it will be advertised on the web and elsewhere. If anyone objects to your application he or she may get a trade mark or patent attorney to write to you to explain the objection and ask you to withdraw your application.  Again, this is where I could come in either at your request or the request of your attorneys or lawyers. I can advise you whether the objection is justified and if it is not represent you in opposition proceedings again for an agreed fee.

There are basically two grounds upon which an opponent can object to your application. The first is that he or she has an earlier trade mark with which your mark conflicts. The second is that he or she could bring an action for passing off, copyright infringement or some other cause of action that would prevent your using your mark.

Appeals in the IPO are heard by hearing officers and appeals in OHIM by Boards of Appeal, Much of what I have written under the previous heading applies to opposition proceedings.

Registration
If nobody objects to your application or if all objections are resolved in your favour your application will proceed to grant and you will receive a certificate of registration and your mark will be entered on the register.  However, that is not necessarily the end of the story because it is still open to a third party to apply for invalidation of your mark on the ground that it should never have been granted. You also have to make sure that you use your mark within 5 years of registration otherwise someone may seek its revocation for non-use. Invalidity proceedings can be made in the Trade Marks Registry or as the case may be OHIM or by way of counterclaim in any proceedings you may bring for infringement of its mark.

Watch service
You need to make sure that another business does not apply to register the same or similar mark for the same or similar goods. As it is impractical for most businesses to scour the intellectual property offices or trade mark journals it is a good idea to instruct someone to do that for you. That is known as a "watch service". Your attorney ought to be able to arrange that for you but if not call Ged or Steff at Leeds Business and IP Centre on 0113 247 8266.

If you want to discuss this article or trade marks generally call me on 020 7404 5252 or use my contact form.

How the IP Bill affects Inventors

Source Wikipedia

The Intellectual Property Bill has completed its passage through Parliament and will shortly become law. Although most attention focused on HM government's proposal to criminalize registered design infringement the Bill makes a number of changes to British patent law which will affect inventors.

Overview 
This is a very short legislative instrument consisting of 24 clauses in 4 Parts and one Schedule.  Part I which consists of 14 clauses relates to registered design, registered Community design and unregistered design right law. Part 2 is concerned with patents, Part 3 with amendments to the Freedom of Information Act 2000 which will prevent premature disclosure of sensitive technical or commercial information relating to research and a new duty upon the Secretary of State for Business Innovation and Skills to deliver an annual report to Parliament on how the Intellectual Property Office and IP legislation generally have facilitated innovation and growth in the UK and Part 4 with the implementation of the Bill once it becomes law. The Schedule contains minor amendments to the Patents Act 1977.

Part 2: Provisions relating to Patents
These are as follows:

Clause	Provision
15	Infringement: marking product with internet link
16	Opinions service
17	Unified Patent Court
18	Sharing information with overseas patent offices
19	Minor amendments to the Patents Act 1977

Infringement: marking product with internet link

At present s.62 of the Patents Act 1977 protects an infringer from an award of damages or other pecuniary relief if he or she can prove that that at the date of the infringement he was not aware, and had no reasonable grounds for supposing, that the patent existed. The appearance of the word "patent", "patented" or any other word or words expressing or implying that a patent had been obtained shall not suffice unless the number of the patent accompanies the word or words in question.

Clause 15 inserts the words “or a relevant internet link” after "the number of the patent" in s.62. The words "relevant internet link" are defined by a new sub-section (1A) to s.62:

"The reference in subsection (1) to a relevant internet link is a reference to an address of a posting on the internet—
(a) which is accessible to the public free of charge, and
(b) which clearly associates the product with the number of the patent.”

It is still necessary to notify the public of the number of the patent but it is no longer necessary to engrave, emboss or otherwise mark it on the product itself. That concession should make for cost savings and improve the appearance of the product concerned.

Opinions Service
S.13 of the Patents Act 1974 inserted a new s.74A and s,74B into the Patents Act 1977 which enabled the Intellectual Property Office to deliver an opinion as to whether:
(a)   a particular act constitutes, or (if done) would constitute, an infringement of a patent; or
(b)   whether, or to what extent, an invention is not patentable because it was not new or obvious.

This is a very inexpensive form of alternative dispute resolution ("ADR") for disputes over infirngement and validity which has proved to be very popular since it was introduced in 2005 (see the "Requests for Opinions" page of the IPO website).  Clause 16 (1) will give the Secretary of State power to extend this ADR service to other types of patent disputes by substituting the words “an opinion on a prescribed matter in relation to the patent” for the present paragraphs (a) and (b) of s.74 (1). 

Clause 16 (4) will give the Comptroller power to revoke a patent if he finds that it is invalid for want of novelty or obviousness.  Clause 16 (2) will limit the rule making powers of the Secretary of State in relation to reviews of decisions and and clause 16 (3) applies s.74A and s.74B to the legislation relating to supplemental protection certificates.

Unified Patent Court

Probably the most important provision of the Bill so far as inventors are concerned is clause 17 which allows the UK to implement regulations for a European patent for most of the member states of the EU including the UK (the "Unitary Patent") and an agreement for a Unified Patent Court to resolve disputes relating to such patent.  The clause inserts a new s.88A and s.88B into the Patents Act 1977. S.88A will enable the Secretary of State to make regulations relating to the Court and s.88B to designate the Court as an international organization of which the UK is a member. To understand why the Unitary Patent is important see my article "Unitary Patents: Good News from Europe" 27 Dec 2012.

Other Reforms

Clause 18 allows the IPO to share information relating to unpublished patent applications with other patent offices and clause 19 and the Schedule make minor amendments to the Patents Act 1977.  Clause 20 inserts a new research exemption into the Freedom of Information Act 2000 which could assist inventors who have disclosed information about their inventions to public authorities in support of grant applications or for some other purposes. Inventors could also be helped in the long term by the new reporting obligation under clause 21 on the activities of the IPO and the operation of IP legislation in promoting innovation and growth.

Further Information
If you want to learn more about the Bill you can attend our seminar The Intellectual Property Bill at 4-5 Gray's Inn Square between 16:00 and 18:00 on 19 May 2014. Admission is free but you have to book in advance either by calling George Scanlan on 020 7404 5252 or through this website.