Rights and Infringement of Patents

2022-10-05
Patent law
The exclusive right granted
Bundle of national rights. Since there are no harmonized

laws, the reinforcement of these rights has to be done in
National Courts
WHAT HAPPENS ONCE A PATENT IS

GRANTED?
Exclusive right
• Determined by national legislation (mostly)

• Α negative right (other legislation might be regulating sale etc)
• The validity of the patent right will not be tested by the court (if
invalidity not alleged by the other party)
• Looking into exceptions to the exclusive right
• Defining the scope
• Limited term of protection
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In order to determine the legal effect of a

patent
• What is included under the exclusive right?

• How is the patent right limited?
• How is the patent right framed?
WHAT IS INCLUDED UNDER THE

EXCLUSIVE RIGHT?
The exclusive right
• For a product: making, offering, placing on the market or using

the proct or importing or storing the product for those purposes
• For a method: using a method which is the subject-matter of the
patent or, where the third party knows, or should have known that
the use of the method is prohibited without the consent of the
proprietor of the patent from offering the method for use within
the territory
• For a product resulting directly from a protected method
See articles 25 and 26 of the UPC Agreement

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DIFFERENT TYPES OF
INFRINGEMENT
Direct infringement
For a product patent

• The right to make the product
• The right to dispose of the product
• The right to import the product
• The right to keep the product
For a process patent
• Direct products of patented processes
Indirect infringement
• When a party contributes to, but does not directly take part in the
infringement
• See, Menashe Business Mercantile Ltd. & Anor v William Hill
Organization Ltd. [2002] EWCA Civ 1702
• Glue produced by combining A and B, the person who supplies
either A or B to a person who then manufactures the glue
• Of course national law is key but (in general) 3 requirements:
1. The means supplied by the defendant essential element of the
invention
2. The defendant must knor or must be obvious to a reasonable
person that the means are both suitable and intended to be used unlike direct infringement, here the intention is relevant
for putting the invention into effect.
3. Supply of staple products will not constitute an indirect
infringement
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HOW IS THE PATENT RIGHT

LIMITED?
The limitations (Article 27 UPC Agreement)
• Acts done privately and for non-commercial purposes

• Acts done for experimental purposes relating to the subject-matter
of the invention on the invention. Not with the invention
• Acts for conducting tests necessary in order to obtain marketing
permission for medicaments or other substances for which
permission is required, and
• The use of an invention by farmers on their own holdings for
propagating purposes (farmers’ privilege)
• Also an important limitation: compulsory licenses (TRIPS
Agreement Article 31)
HOW IS THE PATENT RIGHT

FRAMED?
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National law rules, with some exceptions
• Article 64(2) EPC : patent protection conferred to a process shall

extend to the products directly obtained by the process
• Article 69 EPC concerning the scope of a patent
Article 69 EPC
1) The extent of the protection conferred by a European patent or a European

patent application shall be determined by the claims. Nevertheless, the
description and drawings shall be used to interpret the claims.
(2) For the period up to grant of the European patent, the extent of the
protection conferred by the European patent application shall be determined by
the claims contained in the application as published. However, the European
patent as granted or as amended in opposition, limitation or revocation
proceedings shall determine retroactively the protection conferred by the
application, in so far as such protection is not thereby extended.
Protocol on the interpretation of Article 69

Article 1
General principles
Article 69 should not be interpreted as meaning that the extent of the
protection conferred by a European patent is to be understood as that 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 conferred may extend to what,
from a consideration of the description and drawings by a person skilled in the
art, the patent proprietor has contemplated. On the contrary, 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.
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Protocol on the interpretation of Article 69
Article 2
Equivalents
For the purpose of determining the extent of protection conferred by a
European patent, due account shall be taken of any element which is
equivalent to an element specified in the claims.
HOW TO DETERMINE THE SCOPE

OF PROTECTION
How is the scope of protection determined?
• Claims are the starting point

• Interpreted in the light of the description and drawings
• Claim interpretation to adress ambiguities
• All parts of the claims have equal value
• The doctrine of equivalence may be applied if necessary
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How are claims interpreted?
• Literal interpretation: what the claim states

• If not literal, how far will the interpretation go? And
• Purposive interpretation: what did the patent applicant intend?
Catnic v. Hill and Smith
The role of the Protocol on the Interpretation of

Article 69 EPC
Infringement is a matter for national courts and for national
legislation, then why made an issue in the EPC?
- Different interpretation in different countries. (UK strict, Germany
very liberal)
- Three points to remember:
1. Claims should not be read literally and claims are not mere guides
(but something in-between)
2. Combination of fair protection for the patentee and reasonable
degree of security for third parties
3. Due account should be taken of any elements which is equivalent
to an element specified in the claims.
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Claim interpretation interesting cases
• Improver Corp v Remington Consumer Products Ltd [1990] F.S.R.

181
• Kirin-Amgen, Inc. v Hoechst Marion Roussel Ltd. [2004] UKHL
46 (21 October 2004)
• Actavis v. Eli Lilly (2017) UKSC 48
More harmonisation to come?
• UPC Agreement: additional relevant uniform substantive patent

law concerning infringement of European and EU unitary patents
• For instance the right to provent the direct and indirect use of the
protected invention as well as other limitations
• The role of article 69 and its Protocol to assist in case-law
converging in Europe.
On infringement…
• A European patent application from the date of publication enjoys

the protection of a granted patent. But, infringement claims are
possible only after grant of a patent
• What does the patent holder want?
- Stop infringement
- Receive damages
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On defences….
• Private non-commercial uses

• Experimental uses
• Prior use
• (special for biotechnological inventions)
Sanctions
• Injunctions (Final and Interim)

• Damages
• Corrective measures
• Alternative measures
• Publicity measures
• Provisional and precautionary measures
• (Directive 2004/48/EC on the enforcement
of intellectual property rights)
An exclusive right- what do you do with it?
• The patent holder exploits the invention

• The patent is assigned
• The patent is licensed
• The patent is under a compulsory-license
• Competition law
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Revocation of patent right
• Although a patent application goes through a stringent procedure,

there might be invalid patetns
• Usually counterclaim of the infringer in infringement proceedings
• In some countries (Germany, Austria, Portugal), it is not possible
to adress these issues in the same procedure: bifurcation
Revocation grounds
• Article 138 EPC

- Grounds of patentability which are required in order for protectio
to be granted
- Disclosure requirement
- Claims of the patent amended during procedure to cover a broader
scope than at the filing of the application
- Or if extended as part of opposition or revocation proceedings
- Filed by a person not entitled to
But also revocation of a patent under the

initiative of the patent holder
• If fees are not paid

• If the patent holder wishes to
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Rights close to patent law (they are not patent

rights, but very often complete the patent right
with layers of exclusivity)
• Plant Variety Rights

- Community Plant Variety Office and Community Plant Variety
Convention
• Supplementary Protection Certificates
• Trade secrets

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2022-10-05

Bundle of national rights. Since there are no harmonized

WHAT HAPPENS ONCE A PATENT IS

• Determined by national legislation (mostly)

In order to determine the legal effect of a

• What is included under the exclusive right?

WHAT IS INCLUDED UNDER THE

The exclusive right

• For a product: making, offering, placing on the market or using

See articles 25 and 26 of the UPC Agreement

For a product patent

HOW IS THE PATENT RIGHT

The limitations (Article 27 UPC Agreement)

• Acts done privately and for non-commercial purposes

HOW IS THE PATENT RIGHT

National law rules, with some exceptions

• Article 64(2) EPC : patent protection conferred to a process shall

1) The extent of the protection conferred by a European patent or a European

Protocol on the interpretation of Article 69

Protocol on the interpretation of Article 69

HOW TO DETERMINE THE SCOPE

How is the scope of protection determined?

• Claims are the starting point

How are claims interpreted?

• Literal interpretation: what the claim states

The role of the Protocol on the Interpretation of

Claim interpretation interesting cases

• Improver Corp v Remington Consumer Products Ltd [1990] F.S.R.

More harmonisation to come?

• UPC Agreement: additional relevant uniform substantive patent

• A European patent application from the date of publication enjoys

• Private non-commercial uses

• Injunctions (Final and Interim)

An exclusive right- what do you do with it?

• The patent holder exploits the invention

Revocation of patent right

• Although a patent application goes through a stringent procedure,

• Article 138 EPC

But also revocation of a patent under the

• If fees are not paid

Rights close to patent law (they are not patent

• Plant Variety Rights

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