A patentee may sue for infringement of a standard patent as soon as the patent has been granted. If there is an existing or threatened infringement of a standard patent that is occurring before grant, infringement proceedings cannot be commenced until the patent has gone to grant. There are ways of expediting the grant of a standard patent. Once the standard patent goes to grant, infringement proceedings can be commenced in respect of an infringement occurring at any time after the day the patent application was published.

In order to establish infringement, a patentee must show that the alleged infringer has exploited an invention as defined in a claim of a valid patent. In Australia, the term ‘exploitation’ is defined as follows:

(a)    where the invention is a product — to make, hire, sell or otherwise dispose of the product, offer to make, sell, hire or otherwise dispose of it, use or import it, or keep it for the purpose of doing any of those things, or

(b)    where the invention is a method or process — use the method or process or do any act mentioned in paragraph (a) in respect of a product resulting from such use.

It is usual to send to an infringer a letter before action is taken, giving to the alleged infringer the opportunity to provide appropriately worded undertakings that the infringing activity will immediately be terminated. If appropriate undertakings are not given, proceedings would normally then be commenced expeditiously.

Rights given by a patent

Once a patent is granted, the patent owner has the power to sue those who infringe the patent in a court of law to stop the infringement and receive monetary compensation (damages). More specifically, a patent gives its owner the right to stop others from making, using or selling the invention in that country while the patent is in force. Thus, by way of example, a patent may protect against others from manufacturing in that country or from importing into that country. It is not necessary that there be actual copying of a patented invention: if someone else independently employs a patented invention, that person may still infringe the patent.

Prior to grant, a patent applicant cannot sue for infringement, but monetary damages may be counted from the time the complete specification is published and the competitor is able to review the published specification. Additionally, there are ways of accelerating the grant of a patent on an application, should the need arise.

How do I tell if someone is infringing my patent?

To tell whether a patent is infringed, reference is made to the claims of the granted patent. The claims usually appear at the end of a patent specification in the form of numbered paragraphs. If an unauthorised person makes a product which falls within the words of at least one claim of the patent then that person will infringe the patent. Assessment of infringement can be a highly skilled process and FPA Patent Attorneys are able to advise should the need arise.

What happens in an infringement action?

The patentee is required to act on their patent rights within the latest of 6 years from the infringement occurring or, for an infringement occurring prior to grant, within 3 years from grant of the patent.

It is usual to send a warning letter to the alleged infringer before commencing any court action. If a satisfactory response is not received then a decision must be made whether or not to proceed with court action. Patent infringement actions are typically commenced in the Australian Federal Court. Infringement actions require the court to consider the patent claims to determine precisely the monopoly claimed by the patent and then determine whether the conduct of the alleged infringer infringes the patent.

The alleged infringer typically defends patent infringement proceedings by not only stating that they do not infringe the patent, but also by filing a cross-claim in the court for revocation of the patent on the basis that the patent is invalid.

Patent infringement actions can be expensive. Litigation enforcement insurance is available from specialist insurance brokers to offset the high cost. Another type of insurance available is litigation defence insurance to protect against the cost of being sued for patent infringement.

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