UK Law and Practice Contributed by: Nicola Dagg, Jin Ooi, Ray Cheng and Nevyn Fournel, Kirkland & Ellis
3.3 Process Patents A different test for infringement applies to pro- cess claims under English law compared to product claims. • Acts of using or offering a patented process for use must take place in the United King- dom and are subject to a knowledge require- ment that does not apply to product claims (see Section 60(1)(b)). • There is a separate provision that renders infringing the act of disposing, or offering to dispose of, using or importing any product obtained directly by means of a patented process (see Section 60(1)(c)). Since there is no restriction on where the process is car- ried out, it can be useful in cases where the infringing process is practised outside the United Kingdom so long as the products are dealt with in the jurisdiction. 3.4 Scope of Protection for an Intellectual Property Right English Courts adopt a “purposive” approach to construing patent claims to determine the scope of the claims. In particular, the English Court will consider the words of the claim as understood by a skilled person in the context of the pat- ent (Catnic Components Ltd v Hill & Smith Ltd [1982] RPC 183 (HL)). A patent’s prosecution history will ordinarily not be considered except in exceptional circumstances. More recently, the UK Supreme Court in Act- avis UK Ltd and others v Eli Lilly ([2017] UKSC 48) have developed and applied a “doctrine of equivalents” in infringement claims by applying a three-step test to determine whether there is infringement by an “immaterial” variant. • Does the variant achieve substantially the same result in substantially the same way
as the invention – ie, the inventive concept revealed by the patent? • Would it be obvious to a person skilled in the art, reading the patent at the priority date, but knowing that the variant achieves substan- tially the same result as the invention, that it does so in substantially the same way as the invention? • Would such a reader of the patent have concluded that the patentee nonetheless intended that strict compliance with the literal meaning of the relevant claim(s) of the patent was an essential requirement of the inven - tion? In order to establish infringement by equiva- lents, a patentee would have to establish that the answer to the first two questions was “yes”, and “no” to the third. 3.5 Defences Against Infringement Other than non-infringement arguments, there is a wide range of defences to an infringement claim under English law, including the following. Statutory Defences • Innocent infringement (see Section 62(1)). • Prior use (see Section 64). • Crown use (see Section 55). • Supply of staple commercial products (see Section 60(3)). • Private acts done for non-commercial pur- poses (see Section 60(5)(a)). • Acts done for experimental purposes and for certain studies, tests, or trials (the “Bolar” exemption) (see Section 60(5)(b)). Other Defences • Counterclaims for invalidity as you cannot infringe an invalid patent. These are dealt with alongside the infringement claim.
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