How to Deal with Patent Infringement

Dealing with Patent Infringement


Available Remedies

If you suspect that infringement has taken place, immediate legal advice is essential. You will generally wish to prevent infringement or its continuation. This may be achieved by an injunction but only if you have acted promptly. You may also, or alternatively (if the damage has already been done) seek compensation i.e. damages, an account of profits or an order for delivery-up of infringing items.

However, financial compensation may not be available if the infringement was innocent (the infringer had no reason to know the patent was in existence) hence the importance of using appropriate wording: 'Patent Pending' or 'Patented' and the patent number on patented products.

If you fear that vital documents might be destroyed, or which would be used to pay compensation may disappear, urgent legal advice should be taken as specific remedies could be available.

Anticipating Defences

When you attack an infringer you may need to anticipate any of a number of defences. These could include; that the infringement was innocent (see above); that the act was done for private or experimental purposes; or that you, acquiesced in the infringing use. Alternatively you may face a challenge to the validity of your patent (revocation proceedings), by way of a counter claim to your claim of patent infringement.

Threats/Actions

Infringement action must be taken with care. If your claim amounts to a threat which is unjustified, then you yourself could face a threats action. However, mere notification of the existence of a patent and the commencement of proceedings would not in law constitute a threat for these purposes.

Infringement Proceedings and the Registration of Interests

If you are the licensee or assignee of a patent or if you are licensing or assigning a patent, ensure that the interest in the patent is registered with the Patent Office within six months of the transaction, otherwise the licensee's or assignee's rights to recover damages from infringers may be lost.

Parallel Trade

There are special problems relating to parallel trade (parallel imports and exports of products incorporating your patent within the EU when you have already consented to use by another of the right anywhere within the EU). EU free movement principles restrict use of intellectual property rights to prevent cross-border trade within the EU under such circumstances.

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