Enforcing a granted patent

If you have gone to the effort and expense of securing a granted, chances are you want to ensure the patent will keep your competitors at bay until the end of the patent term. Once an infringer has been identified there are a number of legal requirements to be aware of, and processes you need to go through, to enforce your patent. Patent rights are territorial. The processes in Australia are outlined below. Similar processes apply in other jurisdictions.

How do I identify an infringer?

If you are the holder of a granted patent in it is your responsibility to identify any third parties that may potentially be infringing your patent rights. It is therefore important that you:

• Keep an eye on your competitors;
• Monitor trade channels where similar products may be marketed and sold; and
• Read relevant industry or scientific journals to maintain knowledge of new developments and products.

When are my rights actually infringed?

In order for your patent rights to be infringed, the potential infringer must be making or selling a product, or using a process, which is described by at least one of the claims of your granted patent. Certain indirect acts can also be an infringement, such as supplying a product made by a patenting process, or supplying a product that is intended to induce someone else to infringe a patent.

The claims are numbered paragraphs at the end of a patent that define the scope of the monopoly held by the patent owner. To be an infringement, the infringer must take every feature of a valid claim.

Who can initiate infringement proceedings?

Infringement proceedings can be initiated at any time after the patent has been granted by the registered owner or an exclusive licensee

What is the process?

Infringement proceedings are complicated and no action should be taken without legal advice and before deciding on an enforcement strategy. Importantly, someone you accuse of infringement can take action against you if the threat of infringement is unjustified.

Once an infringing party has been identified (and a legal opinion sought on whether there is patent infringement), a common first step is to issue a “cease and desist” letter. This letter will inform the infringer of your patent rights and give them the opportunity to stop their infringing action and meet other appropriate demands. If the infringing party does not stop, the next step is usually to issue infringement proceedings. The matter will then be set down before a judge who will set a timetable for the proceedings including deadlines for producing evidence that shows the infringement. Usually, the alleged infringer will counter-claim that the patent is invalid and this will be factored into the evidence process. Once all the evidence is filed, and assuming there is no settlement, the matter will be argued in court so that the judge can issue a judgement as to whether the patent has been infringed and is valid.

The question of costs/damages will also be decided by the judge – although frequently this is in a separate hearing after the hearing to determine whether the patent is infringed and the infringer liable to pay damages.

How do I avoid infringing another party’s patent?

Searching for patents owned by others early on can enable you to identify relevant patents owned by others. Once identified it is possible to obtain a legal as to the scope of the rights held by the patent owner and whether the patent is valid. Sometimes, it is possible to identify ways to design around a patent and avoid infringement.

If you are threatened with infringement proceedings, it is best to consult an intellectual property expert as soon as possible. Patent infringement is rarely clear cut and gaining a legal opinion on your position and the options available to you early on is essential as the infringement allegation may be contestable.