Patent Infringement Action - Stages 1 and 2
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12 May 2011
The advantage of a patent is that the
owner has a monopoly right over the invention. On the other hand upon
granting of this right the patentee consents to the publication of the
details of the new patent which could potentially give a competitor a
chance to create something around the design of the patent. If the
owner of a patent believes that their patent has been infringed they
may bring a patent infringement action to stop or avoid this the
infringement from happening again.
There are 4 stages to consider in a Patent Infringement Action:
STAGE 1 - Has there been an infringing act?
According to s 60(1)-(3): Infringement occurs where (within UK),
without the patentee's consent, a person:
a) In the case of a patented Product:
i) makes, or
ii) disposes of (or offers to dispose of), or
iii) uses, or
iv) imports, or
...the product, or
b) In the case of a patented process:
i) uses the process (or offers it for use), and
ii) knows (or ought reasonably to know) that its use would be
c) In the case of any essential means for putting the invention into
i) supplies (or offers to supply) those means, and
ii) knows (or ought reasonably to know) that those means are suitable
for putting, and are intended to put, the invention into effect.
STAGE 2 - What is the correct procedure?
According to S61 and S67 only the owner or exclusive licensee
of the patent may commence an infringement action.
Infringement actions may be brought in the Patent County Court which
less formal and less expensive. On the other hand for maximum pressure
on the infringer an action could be started in the High Court.
The correct procedure would always involve firstly seeking advice from
a professional who deals with Patents.
If your Patent has been infringed and the grounds on which the
infringing party have infringed are evident then a letter before action
would be sent to the infringing party setting these out. This may force
the infringer to enter into early settlement negotiations and
litigation would be avoided.
If the infringer does not respond in the time given or denies the
grounds on which you claim they have infringed, the next stage in the
process would be to commence a claim.
According to the CPR 63.9 and practice direction 63 paragraph 11.1 -
when commencing a claim the claimant should file a claim for and in
addition to this file a statement of case, which must at least:
Evidence which claims in the Patent Specification are alleged to be
Give at least one example if each type of infringement alleged.
If you think a person may have infringed a Patent you should seek legal
advice immediately and certainly within the 2 year limitation period
set out in S37(5) of the Patents Act 1977.
Aneela Akbar is a legal assistant to Izaz Ali
(email@example.com). Izaz is a commercial solicitor who specialises
in information technology law and intellectual property law with an
emphasis on IT, escrow, online and off-line contracts and the buying
and selling of online businesses.
About the Author
Lawdit Solicitors offer services and
advice for litigation, commercial contracts, Intellectual Property and IT legal
agreements. We are experts in commercial law with a heavy emphasis on
Intellectual Property, Internet and e-commerce law. Lawdit is a member of the
International Trademark Association, the Solicitors' Association of Higher Court
Advocates and we are the appointed Solicitors to the largest webdesign
association in the world, the United Kingdom Website Designers Association.
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Article Published/Sorted/Amended on Scopulus 2011-06-02 12:11:27 in Legal Articles