Patent infringement in the UK: a complete business guide
Whether you’re considering launching a new product into a market where patents exist, or you’re a patent holder yourself, it’s important to understand the infringement rules. Patent infringement litigation is costly and time-consuming, and best avoided!
This guide will set out the facts so you can avoid stepping on another business’s toes, or make sure your IP rights are fully enforced.
What is patent infringement?
Patent infringement is when someone uses, makes, sells, offers to sell, imports or keeps a patented product (or process) without the consent of the patent holder. A patent must be in force for it to be infringed. In the UK, there are broadly two types of patent infringement, so-called “direct” and “indirect” infringement.
Direct infringement
There are (broadly speaking) two types of patent claims- those for a product or apparatus, and those for a process (e.g. a manufacturing method). The way these claims are infringed differs.
Direct infringement of a patented product or apparatus is when an individual or business:
Makes, uses or imports a patented product
Disposes (puts on the market) or offers to dispose of a patented product
Keeps a patented product (for disposal or otherwise)
In contrast, direct infringement of a patented process involves:
Using or offering the use of it in the UK (when they have knowledge that, or it is obvious that, such use would be an infringement)
Disposing of or offering to dispose of a product directly obtained by the patented process
Importing or keeping any products directly obtained through the patented process
Indirect infringement
Indirect infringement occurs when all of the following are applicable:
There is a supply or an offer to supply, in the UK, a third party with any of the means relating to an essential element of the patented invention
The supplier knows, or it’s obvious to a reasonable person in the circumstances, that the means are suitable for putting, and intended to put, the invention into effect in the UK
Examples of indirect infringement could include a manufacturer offering to supply a component that could only be used in a patented product. Or a retailer could create a kit with all the components and instructions to build a patented product. If both are doing this without permission from the patent holder or licensee, then it’s likely to be infringement.
It is also worth noting what we call the “double jurisdictional requirement”- both the offer of supply and the eventual infringement have to be in the UK.
How to know if a patent has been infringed
A patented invention is defined by the claims of a patent. The claims are the most important part of a patent, and in order to determine whether there is infringement, the accused product or process needs to be compared to those claims.
A patent is infringed when a third party undertakes an infringing act without authorisation from the holder or exclusive licensee. In short, if your business has a patented product and someone else makes, uses, sells or supplies it (in whole or key components) without your permission or knowledge, then you could bring an infringement case against them.
It’s worth noting that an action can only be brought within six years of an infringement activity. After this, it’s barred by a statute of limitations.
Plus, there are some defences which a third party could use to fight their case, including:
the infringing act is for private or non-commercial purposes;
the infringing act is for experimental purposes relating to the field of the invention;
So it’s always worth getting expert advice if you suspect your patent is being infringed, or if you think you might be infringing yourself.
What to do if someone infringes your patent
You might spot a product or process that looks similar to your patented one while browsing, or infringing activities might be picked up during searches or through patent monitoring services. Either way, if you think someone is breaching your patent rights, then you need to take the following action.
Gather and analyse information
Once a potentially infringing activity is identified, it’s essential to gather as much information as possible. You need to be in a position to prove to a court, on the balance of probabilities, that an infringement took place. This means you need to have enough information to prove that at least one infringing act has taken place, and that the product or process falls within the scope of the patent claims.
This could involve purchasing and inspecting the particular product or process or taking details from publicly available sources such as the news or a company website.
This information will be used to conduct a patent infringement analysis. This will test the activities against your patent claims to see if an enforcement is a possible route forward. If there is enough evidence that this is the case, then a notice of patent infringement can be served on the suspected infringer.
Consider Alternative Dispute Resolution
If a business finds that someone is violating their patent, the ideal scenario is to resolve the action out of court. Alternative Dispute Resolution (ADR) is any way of resolving a legal dispute without resorting to full-blown legal proceedings. The UK courts are very keen on ADR, and any party that cannot shown that they have considered it is likely to be faced with an adverse costs order unless they have a very good reason.
There are many forms of ADR, and the most common is simply to talk to the other side and reach a reasonable commercial settlement.
For example, instead of suing your competitor for infringement and seeking damages and an injunction, you could offer them a licence. Alternatively, you could allow them to sell out existing stock (with a percentage royalty payment to you) and contractually agree to stop at that point.
Sometimes it is difficult to agree on a sensible commercial solution at first, and the parties need some help getting over the line. This is where other forms of ADR can help.
Mediation is a process whereby the parties are encouraged to reach an agreement using a neutral, third-party mediator. The mediator’s job is to facilitate discussion between the parties, and to offer solutions to seemingly difficult disagreements.
Arbitration is a more formal process whereby an arbitrator hears each side’s case and reaches a contractually binding decision.
Litigation
Litigation is best thought of as the last resort. Patent litigation is enormously draining on both sides of the dispute. We are fortunate in the UK to have access to a high-quality court system, and patent disputes are decided by highly knowledgeable, specialist judges. That said, such disputes often run into the hundreds of thousands of pounds in costs, and can take months, if not years, to be concluded.
The kind of relief the patent holder can expect at the outcome includes:
An injunction which stops the third party’s infringing activities
Damages or an account of profits
An order for the third party to deliver up or destroy any infringing product
A declaration that the patent is valid and has been infringed
Publication of the judgment
A costs order against the losing party
Whether you’re issuing or receiving the notice, getting legal advice early on will help you leverage the situation to your advantage. It’s also helpful to involve a patent attorney from the beginning to minimise the risks.
How to avoid infringing a patent
Conducting a freedom-to-operate or patentability search will help avoid the risk of infringement of someone else’s patent. Such a search should be completed before a product or process is brought to market. Otherwise, you could risk legal action or financial losses. In short, it helps you complete due diligence before bringing a new product or process to market.
Using online databases and other publicly available materials, these searches will check if there are any similar existing patents. They’ll also check their geographical scope and status to ensure they’re valid in the UK. If they’re not, or if there’s significant differentiation between your invention and existing patent claims, your invention is unlikely to infringe on others.
Again, getting your searches run and reviewed by a patent attorney will help you avoid any pitfalls and ensure you get maximum value from your IP protection.
Insurance
Patent litigation insurance is commonplace now. This insurance helps with the costs of pursuing or defending a patent litigation action. CIPA (the Chartered Institute of Patent Attorneys) provides a list of insurers here.
What to do next
Like everything in business, patent infringement is a manageable risk. The key thing is to go into any situation where infringement may take place (whether you are the patentee or the potential infringer) with your eyes open.
We have help numerous clients reduce their risks around patent infringement- and given that many of our clients are startups and SMEs it is vital to do so. If you are worried about infringement risk, or think a third party may be infringing your rights, get in touch for a free, no obligation chat.