What is patent infringement?

Patents grant their proprietor an exclusive right to prevent other parties from performing acts in relation to the product or process that the patent protects in a given jurisdiction. The justification for such a monopoly lies in the incentive that it inspires innovation. However, this monopoly is awarded with a trade-off, as patent protection lasts for a maximum duration, typically 20 years from filing of the patent application, allowing the innovation to be accessible to all once this term is over.

During the time in which a patent is in force, if another party infringes the exclusive rights awarded to the patent proprietor, it is possible for the proprietor to take action against that party in a number of ways.

What constitutes patent infringement?

The first step in such a situation is to determine what constitutes an infringing activity of the patent in question. There are two types of patent infringement to consider, ‘direct’ and ‘indirect’.

Direct patent infringement

Direct infringement occurs when a person who is not authorised to do so:

  • Makes, offers, disposes, uses, imports, or keeps a patented product;

  • Knowingly uses or offers to use a patented process;

  • Disposes of, offers to dispose of, uses or imports any product made by a patented process.

Indirect patent infringement

Indirect infringement occurs when a person who is not authorised to do so knowingly:

  • Supplies or offers to supply a means relating to an essential element of the invention, suitable for putting the invention into effect in the UK, provided that those means are not a staple commercial product.

What to do if you suspect patent infringement

Evidently, there are a number of ways in which a party can knowingly, or unknowingly, infringe a patent. If you suspect that the actions of a third party fall under any of the above definitions of patent infringement, or if you have been accused of infringement of a patent, please contact Bailey Walsh & Co. on +44 (0)113 208 9962 for advice.

How Bailey Walsh & Co. can help

Bailey Walsh & Co’s expertise and practice can help guide you through the steps of contesting an alleged infringer, or proving that your actions do not constitute infringement. This can include a number of considerations which we can advise on, such as:

  • Determining which type of infringement is being alleged, direct or indirect. This is instrumental in determining how to proceed;

  • Collecting dated evidence of the alleged infringing activity to put you in a stronger position if such evidence needs to relied upon during infringement proceedings;

  • In the case that you believe your patent is being infringed, we can advise on the best approach to contact the allegedly infringing party. Whether that be through an initial informal notice that the patent exists, or through the preparation of a cease-and-desist letter. The wording of communications with potential infringing parties has legal consequences, and it is always recommended to contact a qualified patent attorney when considering contacting a potential infringer;

  • Advising on potential licensing options or settlement offers between parties;

  • Opinions on the validity of a patent and whether there are any points of weakness that could be detrimental if validity was contested;

  • Strategic considerations in terms of timelines for action with respect to the prosecution and grant of the patent;

  • The requirements for submitting an opinion on validity and infringement with the UK Intellectual Property Office (UK IPO);

  • Advising whether an allegedly infringing party has any defences that they may be able to rely on which would make their use non-infringing such as that of prior use;

  • Obtaining a certificate of contested validity or a declaration of non-infringement;

  • Guidance on the process and requirements for infringement proceedings;

  • Advise on remedies available during and after infringement proceedings, such as injunctions, delivery up and the different forms of monetary relief intended to put the infringed party in a position as if the infringing activity had never occurred.

Get In Touch

It does not matter whether you have worked with us before, we can advise on the infringement and validity of a patent, and what the best steps are for enforcing your rights as a patent owner or if you have been alleged of patent infringement.

If you have any questions, or believe that your patent is being infringed or you have been accused of infringing a patent; please get in touch with the Bailey Walsh team via phone +44 (0)113 208 9962, or by email at mail@bailey-walsh.com.