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  • Enforcing your patent: 3 top questions to ask first

    canstockphoto2071244Here are the top three questions to asked when your patent is infringed. If the answers suggest a strong case, you may feel confident to make demands or take legal action. If the answers suggest a week case, you may not want to make threats that are considered “unjustified”. Those receiving your unjustified threats can take legal action against you.

    Check that the patent is in force. This is easy to do but overlooked surprisingly often. A patent may have lapsed because its term has finished, or renewal fees have not been paid. Ask you patent attorney to check that the patent is in force.

    Check that there has actually been an infringement. Firstly, identify the infringing act, for example, making, hiring, selling, offering to make or hire or sell, use, import, or keeping for doing any of these things. Repairing a product protected by a patent may also be infringement in some circumstances.

    If the invention is a method or process, then in many countries including Australia, doing any of the above with the product of the method or process is also infringement.

    Secondly, confirm that the act falls within the scope of the patent. Confirming that the act falls within the scope of the patent requires an analysis of the patent’s claims, which are found at the back of the patent specification.

    Each claim is divided into a list of features and then an attempt is made to find each of those features in the alleged infringement. If all of the features are found (and provided that a court agrees) then infringement is established.

    If you first do the analysis and you are not a patent attorney, it is probably best to interpret the claims as broadly as possible – so that you determine possibilities – and then ask a patent attorney to make a more refined determination. The patent attorney can apply their understanding of this complex area of law and provide an opinion of patent infringement. Establishing the meaning of the claims (which is called “claim construction”) can be difficult. Many court cases turn on the court’s interpretation of the claims.

    The infringing acts are usually performed by a single party, in which case there is no issue identifying the infringing act. In some circumstances, however, the infringement is split between more than one party. In some circumstances, it is possible to argue the that the parties are each contributory infringers, even though no one party has infringed. For example, a supplier may be liable if the supplier provides a product that is incomplete and does not infringe, but gives instructions how to complete the infringing product.

    Check that your patent is valid. Look for any reasons that the patent may be invalid, for example there may of been a disclosure of the invention before a patent application was filed. Another reason a patent may be invalid is that there is a document predating your patent application (“prior art”), which disclosed the invention which, for some reason, did not come to the attention of the patent office during examination. It may be a good idea to have a prior art search performed to check the patent’s validity.

    The person or company that legal proceedings are commenced against will almost certainly cross claim that the patent is not valid. The patent will be heavily scrutinised by a team of lawyers, patent attorneys, patent searches and experts. Any weaknesses in the patent are likely to come out during court proceedings and may result in the patent being revoked, and the infringement action lost. Consequently, enforcing a patent that has not been drafted by a skilled patent attorney is a difficult proposition.

    For further information contact:
    Justin Blows
    Phoenix Intellectual Property
    j.blows@phoenixip.com.au