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Law Notes Intellectual Property Law Notes

Patents Infringement Defences And Entitlement Notes

Updated Patents Infringement Defences And Entitlement Notes

Intellectual Property Law Notes

Intellectual Property Law

Approximately 1014 pages

IP law notes fully updated for recent exams at Oxford and Cambridge. These notes cover all the LLB Intellectual Property law cases and so are perfect for anyone doing an LLB in the UK or a great supplement for those doing LLBs abroad, whether that be in Ireland, Hong Kong or Malaysia (University of London).

These were the best IP Law notes the director of Oxbridge Notes (an Oxford law graduate) could find after combing through dozens of LLB samples from outstanding law students with the highes...

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Infringement

3-stage inquiry

  • Construction of the claims

    • To determine if D’s activities are within the scope of the monopoly

  • Identification of infringing acts

  • Consideration of exceptions

  • NOTE: D would usually file a counterclaim for invalidity

    • This disincentivises C from construing the claims widely, since that would increase the likelihood of the patent being anticipated by prior art, etc.

    • C might not only lose the infringement action but have its patent revoked

    • Helmers and McDonagh (2013): The most common outcome for patent litigation is revocation (even if it began as an infringement action)

      • Might this indicate that there are many invalid patents on the register?

Construction of claims

Chisum (2004): Claims are important in a patent system

  • 2 main purposes

    • Defines the invention (for examination of patentability)

    • Notifies the public of what the patent covers

      • So that members of the public (including businesses) can avoid infringing it

  • BUT claims cannot perform these roles if there isn’t “reasonably predictable certainty” as to how they will be interpreted

    • German approach: Language of the claim is only a guide

      • The true scope requires consideration of what is disclosed and the relationship with prior art (was that attribute necessary as an improvement?)

      • “sign post” approach: protection might extend beyond the claims

    • UK approach: Language of the claim is the exclusive definition

      • “fence post” approach: claims determine the boundaries

      • Aimed at achieving greater certainty

        • No infringement as long as some integers of the claim were omitted or replaced

      • BUT development of the “pith and marrow approach” reduces the strictness

        • Might still be infringing if the substance of the invention was taken

      • EMI v Lissen (1939): “What is not claimed is disclaimed”

      • Van der Lely v Bamfords (1963): Moving the back wheels forward is different from moving the front wheels backwards

EPC Approach Art 69

  • Art 69: Extent is “determined by the terms of the claim”

    • BUT “the description and drawings shall be used to interpret the claim”

  • Protocol to Article 69

    • Art 69 does not mean that the extent is defined by the “strict, literal meaning of the wording”, NOR does it mean that the “claims serve only as a guideline”

    • Seeks to strike a balance “between these extremes which combines a fair protection for the patentee with a reasonable degree of certainty for third parties

  • Both Art 69 and the Protocol were given effect in the UK via PA 1977 s125

  • EPC 2000

    • Amended Art 69 to replace “terms of the claims” with “the claims”

    • Art 2 of the Protocol introduced to ensure equivalent elements are taken into account when determining protection of a European patent

Catnic v Hill and Smith [1982] RPC 183

  • C invented a steel beam called a lintel

    • Used in construction for keeping open spaces above doors and windows

    • Previous lintels were much heavier

  • C’s claim referred to a back piece that extended vertically

    • D created a variant which had an angled back piece (6)

  • UKHL (Lord Diplock): D’s variant did infringe C’s patent

    • “A patent specification should be given a purposive construction rather than a purely literal one”

    • The key question is whether “persons with practical knowledge and experience of the kind of work … would understand that strict compliance with a particular descriptive word … was intended by the patentee to be an essential requirementeven though it could have no material effect upon the way the invention worked”

      • Not an issue if a variation WOULD have a material effect

    • Variation not an infringement if “apparent to any reader skilled in the art” that the words “cannot have been intended by a patentee … to exclude minor variant which … could have no material effect”

    • Would be obvious to a “builder familiar with ordinary building operations” that “the patentee did not intend to make exact verticality … an essential feature”

      • So “extending vertically” could include a range of similar angles

    • Suggested that there were no separate “textual infringement” and “pith and marrow” tests to be applied

Improver Corporation v Remington Consumer Products Limited [1990] FST 181

  • C had European patent for its shaver that made use of a “helical spring” mechanism to pluck hairs out (instead of shaving)

  • D’s product made use of a rubber tube which had slits in it to pluck the hairs out instead

  • Hoffmann J: No infringement of C’s patent

    • Affirmed Catnic as the right approach even under the Protocol to Art 69

    • 3 Improver questions

      • Does the variant have a material effect on the way the invention works?

        • Level of generality depends on the description in the claim

        • If yes, then the variant is outside the claim

        • If no, then ask the next question:

      • Would it have been “obvious at the date of publication of the patent to a reader skilled in the art” that the variant had no material effect?

        • If no, then the variant is outside the claim

        • If yes, then ask the next question:

      • Would “the reader skilled in the art nevertheless have understood from the language of the claim that the patentee intended that strict compliance with the primary meaning was an essential requirement”?

        • This is a question of construction

        • If yes, then the variant is outside the claim

        • If no, then the claim might also cover minor variations (so D might be infringing)

    • Here, although the variant didn’t have a material effect on the working of the invention and that was obvious, it wasn’t an infringement

      • “The rubber rod is not an approximation to a helical spring”, even though they can work the same way in “limited circumstances”

  • ISSUES (Bentley)

    • The 1st Improver question does not explain how to characterise the products

      • Need to characterise what each is before you can determine the variations

      • Easier for mechanical inventions but not for biotechnology or chemicals

    • Unclear what level of knowledge should be imputed to the skilled person

      • The more he knows, the more likely he is to conclude that it was...

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