Patent Infringement

If you have a granted patent, and yet somebody is using your invention, then that person is infringing your patent and you are entitled to take Court action to stop them. Here, we explain exactly what constitutes infringement.

Firstly, it is important to understand that patents are territorial rights. A UK patent can be used to prevent infringement only in the United Kingdom. If you wish to protect your invention elsewhere, you will need to file corresponding applications for foreign patents – possibly including applications for regional rights such as a European patent.

Acts of Patent infringement

So, assuming that you have a UK patent, or a European patent which is in force in the UK, no other person in the UK may do any of the following without your consent:

make, dispose of, offer to dispose of, use, import or keep a patented product;
use a patented process;
offer a patented process for use; or
offer to dispose, dispose, use, import or keep a product obtained directly from a patented process.

This list covers essentially all commercial activities relating to a patented product. Obviously, it is an infringement to make or sell the patented product. Perhaps less obviously though, it is also an infringement simply to keep the patented product for a commercial purpose. A competitor cannot therefore stockpile infringing products for sale once a patent lapses.

There are a couple of caveats to the above list. Firstly, it is only an infringement to use or offer to use a patented process if the infringer knows that it is an infringement to do so. The infringer cannot however be wilfully blind – if it is obvious that they are infringing a patent then it is unnecessary to prove that the infringer actually knew. The requirement for knowledge does not apply to infringements relating to patented products.

For the acts of infringements involving dealing with products obtained directly from a patented process, the process need not have been carried out in the United Kingdom. The actual act of producing the products may not therefore infringe a UK patent, but it would be an infringement to import them into the UK, and it would be a further infringement to do anything else with them once they are there.

There are a number of exceptions to infringement, the most important of which is that anything done for private and non-commercial reasons does not infringe. Patents are designed as commercial tools, and are not intended to be enforced against private individuals who are not acting in the course of business. The other exceptions are less widely applicable, relating to, for example, use on ships or aircraft temporarily within the UK, experimental purposes, certain limited use on farms, and health trials.

Scope of a granted patent

In order to determine whether a particular act infringes upon a patent, it is of course necessary to consider what the patent actually covers. In many cases it may be very clear that a particular product is covered by a patent, but sometimes the scope of the patent may be more arguable. An attorney can determine whether a particular product falls within the scope of a claim.

Resellers and end users

If a patented product is obtained from a patentee or his licensee in an ordinary sale, there is an implied licence to use or re-sell the product.

Contributory infringement

A person who supplies means relating to an essential element of a patented invention is himself guilty of infringement, if he knows (or it is obvious) that the means he is supplying are going to be used to put the patented invention into effect in the UK.

For example, suppose a chair is patented, and the granted patent requires that the chair has, among other things, legs. A person selling the chair without the legs may be guilty of contributory infringement, because the chair without legs is obviously going to have legs added to it in order to make it usable. Even if the chairs do not get turned into infringing products (perhaps because the patentee intervenes before that can happen), the supplier is still liable as long as constructing infringing chairs was the intention of the recipient, and the supplier knew that. The only way that the supplier would not be liable is if the supplier honestly believed that the recipient planned to export the part-made chairs outside the UK, in which case their construction abroad would not be an infringement.

Generally speaking, if the product being supplied has at least one plausible use which does not infringe, the supplier will not be infringing by supplying that product. However, even supplying a staple product may infringe if the supplier induces infringement. For example, supplying some ordinary construction materials together with a set of instructions explaining how to turn the materials into a patented product may be an infringement.

For contributory infringement to occur, both the supplier and the recipient must be in the United Kingdom.

Remedies for infringement

A patentee suffering infringement is entitled to apply to the Court for any of the following:

An Injunction

An injunction is a Court Order preventing the infringer from committing further infringing acts. In recent years the Courts have become increasingly willing to award various types of interim injunctions, to protect patentees while the case is in the process of being decided. In Scotland, an interdict may be awarded, which is essentially the same as an injunction in England and Wales.

Delivery up

An order for delivery up requires the infringer to give up all infringing products to the patentee. Alternatively, an order for destruction of infringing products may be obtained.

Damages or an account of profits

Damages are calculated based on what the patentee has lost from the infringement. An account of profits on the other hand is calculated based on what the infringer has gained from his infringing acts. The patentee must choose to claim either damages or an account of profits – they cannot get both. Damages is the most usual choice, but an account of profits may be chosen where the infringer has gained much more than the patentee has lost. In addition, calculation of damages is in some cases difficult or impossible, so an account of profits may be a more convenient basis for a claim.

Unjustified Threats of Infringement

Note that making unjustified threats of proceedings for infringement may lead to the maker of the threats being sued. The right to sue for unjustified threats is not limited to the recipient of the threats. Rather, any person who has been damaged by those threats is entitled to relief. A threat made to a retailer could therefore lead to a claim for damages from the retailer’s supplier.

It is therefore very important that threats are only made when the nature of the infringer’s activities is fully understood, and after an analysis of the allegedly infringing product to ensure that it falls within the scope of the granted patent. You should always seek advice from a qualified patent attorney before contacting an alleged infringer.

The Art of Filing Bogus Algorithmic Patents Considered – A New Strategy?

Not long ago, I was talking to an individual who came out with a really good algorithm to solve a certain problem. He knows that he has to get a patent for the algorithm, but he is worried that once he puts out the algorithm that others will merely steal it, and not pay him the royalties or license that algorithm from him. In other words he won’t get paid for all the years of research in creating it, refining it, and making sure that it works. That’s too bad, but he reiterated to me that he has a strategy in mind. He wants to file several patents, some of them bogus, as to fool the individuals who might try to steal his algorithmic strategy.

He figures it will cost them a good amount of money and take them years to figure out which one he is actually using, and by then he will have modified it anyway. These mathematical strategies have to do with stock and commodity trading, amongst other things such as sports betting, or trend tracking graphical data. Indeed, I suppose it could be used for anything as long as you had the empirical factual data available in real-time. Perhaps you could even use it to track the weather, although I do realize that today’s artificial intelligent supercomputer weather prediction systems are quite robust.

Is it possible for him to file bogus algorithmic patents to sideline anyone who is trying to steal his information? Well, I got to thinking about this and I wonder if the answer is potentially no. Let me tell you why. You see, someone who goes through the old data in the stock market, using each of his algorithms could figure out which one he is using based on when he traded in or out of a particular stock. You can use these algorithms with historical data as to put forth “what if” scenarios to determine if you would have made money or not made money based on past stock performances and on certain charts at certain time intervals.

Someone trying to reverse engineer a trading algorithm might very well be able to come up with a similar mathematical model with just a few clues. If someone were to file five or six patents with bogus algorithms, you could easily dismiss them one by one by retracing old data to see if they would work or not.

Of course if you try to do it the hard way, you might you lose quite a bit of money, or it could take you six months to a year watching each of the filed algorithmic patents to figure out which one they were using. And like I said, he plans on continually upgrading his math and continually refine it to take into account a huge amount of data with unlimited filters. Please consider all this and think on it.

Proposed Tougher Approach to Examination for Utility Model and Design Patent Applications in China

Proposed tougher approach to substantive examination for Utility Model and Design Patent Applications in China.

In a bid to improve the quality of Utility Models and Design Patents granted in China, the Chinese State Intellectual Property Office (SIPO) has put forward proposals to impose tougher examination requirements for Chinese Utility Model and Design Patent applications.

Currently, a design patent (also known as a registered design in Europe) application in China does not undergo substantive examination. This means that, although the Chinese Patent Law requires a design to be new and distinctly different from any one of the existing designs known anywhere in the world, in practise, a Chinese Examiner does not conduct any searching during examination of the design application. Based on the current Examination Guidelines, the Examiner is only required to examine the application based on the application details and what is considered to be common knowledge of a general consumer.

Equally, although a Utility Model (also known as a petty patent in the US or innovation patent in Australia) application is required to be novel, creative and of practical use under the Chinese Patent Law, the level of examination requirement is similarly low.

Considering an Invention Patent application, which is the equivalent of a standard patent available in countries or regions such as the UK, Europe or the US, typically takes around 3 to 6 years to grant, grant of a Utility Model can be obtained relatively quickly, typically between 10 to 18 months. A Design Patent can be even quicker. As such, filing such applications in China has been a faster, cheaper and easier way to obtain patent protection for an invention, compared to an Invention Patent. Both forms of patent protections have been proving popular. In 2011, SIPO granted 408,000 Utility Models and 380,000 Design Patents.

However, this may all be about to change. In a public consultation issued in February 2013, SIPO has indicated that the lack of substantive examination for both types of applications have caused patents to be granted to inventions or designs that are already known, or caused patents to be granted to inventions or designs more than once, i.e. double patenting.

In order to improve the quality of Utility Models and Design Patents, SIPO is proposing to amend the Examination Guidelines such that Examiners are encouraged to conduct searches on existing technologies and designs when examining such applications. Furthermore, the Guidelines proposed to be amended such that Examiners are not restricted as to how such information are obtained.

It is envisaged that if SIPO is to implement its proposed changes to tighten examination procedures for both types of applications, the costs and time required to see such applications through to grant are also likely to increase.

Early indications suggest that SIPO may already be implementing changes and Examiners will be improving enforcement of the novelty requirement for such applications. However, even with tighter examination requirements, for an invention with a short commercial life and somewhat limited novelty, a Utility Model application should still be the favoured choice of patent protection in China.