A more recent version of these Patent Law Infringement And Scope Of Patent Monopoly notes – written by Oxford students – is available here.
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Scope of the monopoly
InfringementArticle 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 lawPatent 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 infringementTypes 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 
- 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  Court of Appeal and  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 invalidate the approach adopted by Floyd J"
- "Floyd J over-simplified the position" by saying that "the correct approach is to ask whether, when the part in question is removed, what is left embodies the whole of the inventive concept of the claim"
- It conflicts with the wordings of s60(1)(a) and s125(1) and the approach of the C of A and H of L in United Wire
BUT the C of A were too ready to accept that the outcome of this case was governed by United Wire They failed to recognise that the q of whether replacing a part of a patented article constitutes "making" is a matter of fact and degree Jacob LJ appears to have thought that replacing any part of a patented article would involve "making" it BUT "it is a matter of degree... whether replacing a worn or damaged part of a patented article amounts to "making"" When deciding whether, when Delta replaces a component of the article, it "makes" the article, "it is both helpful and legitimate to consider the question of whether the bottle is such a subsidiary part of the patented article that its replacement, when required, does not involve "making" a new article" Yes the bottle is more than subsidiary - it is a necessary part of the article But so is the lid of the bottle for example The question is one of degree and "the bottle is a much more substantial feature of the composite article described in the Claim than the lid of the bottle" "However, while undoubtedly an essential and physically large part of the patented article, it seems to me that, particularly in the context of the present issue, the bottle can fairly be said to be a relatively subsidiary part of the article, viewed as a whole" Significant factors:
? "The bottle has a significantly lower life expectancy than the cage"
? "the bottle does not include any aspect of the inventive concept of the Patent"
? The extent to which a part is subsidiary is a matter of degree
? It "must be legitimate" to consider whether the part replaced "includes the inventive concept, or has a function which is closely connected with that concept" Lord N - rejects Mr Meade QC's contention that the inventive concept is a "controversial issue" and that there would be problems if it were treated as relevant in determining whether an infringer makes a patented article
? "I am unconvinced by that contention"
? **(note the certainty of this approach if used for scope!!) "In almost all patents, the claimed inventive concept is clearly identified or identifiable from the patent, and if it is unclear or disputed, it will often be an issue in the proceedings anyway"
? The BGH appears to have no difficulty in accommodating the inventive concept in this exercise Note the distinction between this case and United Wire
? "Furthermore, there is a significant difference between the nature of Delta's operations in this case and that of the defendants' operations in United Wire, as described by Lord Hoffmann at para 64 of his opinion (quoted in para 31 above). In this case, a damaged free-standing plastic bottle is simply replaced within the metal cage, which contains the inventive concept, and the metal cage is repaired if necessary. In United Wire, unlike in this case, (i) the replaced part was integrally connected to the retained part, so the work included a significant element of demolition, (ii) the replaced part was subjected to significant improvement work, (iii) the inventive concept either largely resided in the replaced part (the first patent) or was closely connected to that part (the second patent), and (iv) the work involved could undoubtedly be described as manufacture. Merely replacing a damaged plastic bottle (albeit one of considerable size) with a new plastic bottle (even allowing for the fact that the replacement has to be made) appears to me to be an exercise of a very different order." Lord N - "there is nothing in the speeches of Lord Bingham or Lord Hoffmann in United Wire which suggests that it would be wrong to take these factors into account. The speeches appear to me to establish that the question to be determined in a case such as this is whether the alleged infringer "makes" the patented article, and that the answer to that question is
--often a matter of fact and degree. The speeches do not give much guidance as to what specific considerations can or cannot be taken into account when determining the question." Conclusion - that by replacing the bottle in the IBC, Delta does not "make" the article identified in the Claim "Deciding whether a particular activity involves "making" the patented article involves, as Lord Bingham said, an exercise in judgment, or, in Lord Hoffmann's words, it is a matter of fact and degree." "in this case, it appears to me that it is a classic example of identifying the various factors which apply on the particular facts, and, after weighing them all up, concluding, as a matter of judgment, whether the alleged infringer does or does not "make" the patented article. In the present case, given that (a) the bottle (i) is a freestanding, replaceable component of the patented article, (ii) has no connection with the claimed inventive concept, (iii) has a much shorter life expectancy than the other, inventive, component, (iv) cannot be described as the main component of the article, and (b) apart from replacing it, Delta does no additional work to the article beyond routine repairs, I am of the view that, in carrying out this work, Delta does not "make" the patented article." Lord Neuberger's approach - the boundary between making and repairing is a q of fact and degree that is influenced by various factors
Right to dispose of the product
? Includes right to sell the product
? Under the doctrine of exhaustion, a patentee is unable to use a patent to prevent further disposal of an article that has been placed on the market in the EEA with the patentee's consent Right to import the product
? A person will infringe where they deal with the product in the course of trade or for the purposes of profit Biotechnological inventions
? Concern about the nature of the protection granted to such inventions
? Problem - they give the patentee control over subsequent uses of the product, even for uses not known/envisaged
Patents for a process
- s60(1)(b) - the owner of a patent for a process if given the right to use the process/offer it for use in the UK
- In essence the owner has the right to practice the invention/put the invention into effect
- Liability is not absolute - the right will only be infringed if D knew or it would have been obvious to a reasonable person in the circumstances that the use of the process would be an infringement of the patents60(1)(c) - protection includes not only the process in question but also the products that flow from the process - a person infringes a process patent if they dispose of, offer to dispose of, use, import of keep any product derived from the process This protection is important when no claim has been made to a product as such It is also important where the process is carried on outside the UK and a product derived from that process is imported into the UK Wide protection for process patents - where a range of products flow from a single process, they are all protected ALSO the scope of protection includes not only the products that flow from the process, but also products that are based on those products (the derivatives of the derivative) BUT note the restriction - the products protected by process patents must be obtained directly from that process Q - what is meant by a 'direct' relationship?
Pioneer Electronics v Warner Music 
- C argued that their process patent for a method of manufacturing compact discs had been infringed after Ds imported into the UK optical discs that were a by-product of the patented process
- Yes the imported discs had been derived from the patented invention but was there a 'direct' relationship between the process patent and the imported discs?
- C of A concluded that "directly" meant "without intermediary"
- Nourse LJ - there must be no material or important steps that intervened between the process and product
- This case - the process patent was not infringed when the final discs were imported into the UK
? There were a number of important and material steps that separated the product from the process
? The production of the master discs was only an initial stage in the production of the final optical discs Novelty-of-purpose claims
- Mobil/Merrell Dow - pose problems for applying the traditional UK test of infringement
- It may be difficult to ascertain when a product is being used in the relevant way
- It seems that the patentee of an invention that consists of a new use must demonstrate that the infringer intended to produce the particular effect
- The recognition of novelty-of-use claims = incompatible with traditional test for infringement because the infringement of a patent turns exclusively on the physical conduct of the defendant
- Novelty-of-purpose patents - for infringement purposes the discovery that a known product used in a known way can be put to a new purpose is physically identical to the previous use (the only difference is in the mind of the user)
- There is no obvious way of telling whether they are using the substance to achieve the old purpose or the new one
- PROBLEM - the only way to distinguish a novelty-of-purpose patent and the previous purpose = the purpose (which exists in the mind of the user) and the purpose of the infringer is not taken into account when determining whether a patent has been infringed (all that matters is whether the physical act of infringement has taken place)
- SO a patent granted for a new purpose could prevent someone from doing what they had done before, denying the user their previous right to work
- CONFLICT between the physical nature of infringement and the mental nature of novelty-of purpose patents
- If novelty of purpose patents are not to impinge on the existing activities of others it may be nec to modify the defence of prior use Indirect infringement
- This is important where the maker/user is difficult to detect or they are not worth suing
- S60(2) - a person infringes a patent where they supply or offer to supply any means relating to an essential element of the invention for putting the invention into effect
- 3 criteria
? The patentee must establish that the means supplied by D relate to an essential element of the invention
? The supplier must know/it must be obvious to a reasonable person that the means are both "suitable" for and are "intended" to be used in putting the invention into effect
? In recognition that there may be legitimate reasons why a person supplies/offers to supply something that enables the means for putting the invention into effect, s60(3) says that the supply of a staple commercial product will not constitute an indirect infringement under s60(2) - this probably covers basic products that are readily available
Scope of the monopoly
- Once it is clear that D carried out one of the activities in s60, the q is whether the activities fell within the scope of the patent
- Formulating the claims is hard - they can't be too wide (otherwise patent may be declared invalid by the EPO) and they shouldn't be too narrow (easier to infringe the invention)
- Court is required to compare the patented invention with D's alleged infringing process/device
- D will infringe where they are identical and where he incorporates the patented invention into a larger process/product
- D will infringe where he supplies a patented product in parts or in kit form
? But D will not infringe if the consumer needs to exercise inventive skill in putting the kit together PROBLEMS
- Where D omits/alters part of the invention in their product/process
- Where D uses a different means to reach the same end result In these cases the Q of whether D infringes turns on the way the scope of protection is determined--
s125 PA corresponds to Art 69 EPC Article 69 EPC
? (1) The extent of protection conferred by a European patent "shall be determined by the claims. Nevertheless, the description and drawings shall be used to interpret the claims" Protocol in the Interpretation of Art 69 EPC
? Art 1 - Art 69 should not be interpreted as meaning that the extent of protection is defined by the "strict, literal meaning of the wording used in the claims, the description and drawings being employed only for the purpose of resolving an ambiguity found in the claims"
? "Nor should it be taken to mean that the claims serve only as a guideline and that the actual protection" is "what, from a consideration of the description and drawings by a person skilled in the art, the patent proprietor has contemplated"
? "It is to be interpreted as defining a position between these extremes which combines a fair protection for the patent proprietor with a reasonable degree of legal certainty for third parties"
? Art 2 - equivalents - in determining the extent of protection, "due account shall be taken of any element which is equivalent to an element specified in the claims" The patent document is read from the point of view of a person skilled in the art and is understood according to the common general knowledge Controversially, information exchanged between the applicant and the Patent Office during the grant of the patent has also been used to interpret the claims
? Kirin-Amgen  - Lord Hoffmann indicated that the British courts generally do not look at so called "prosecution history"
? Reasons - the meaning of the patent should not change according to whether or not the skilled person has access to the file
? Still, counter-examples exist A variety of factors are taken into account when determining the scope of protection provided by a patent BUT 4 things stand out
? Lord Diplock's judgment in Catnic
? The Protocol on the Interpretation of Art 69
? Hoffmann J's judgment in Improver
? House of Lords decision in Kirin-Amgen (the first decision to look at infringement under the 1977 Act)
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