SCOPE OF PROTECTION

AND INFRINGEMENT
SCOPE OF PROTECTION
The basics
• The rules of construction are national rules:
T 1279/04 Modular charging device for imaging system/XEROX
(unpublished*) 25 September 2007
‘On the issue of claim interpretation, the board does not share the appellant
proprietor’s view that for the purposes of assessing novelty in opposition
proceedings, claims should be interpreted in accordance with Article 69(1)
EPC and the Protocol on its interpretation.
Article 69(1) EPC and the Protocol on its interpretation relate to the extent of
protection conferred by the patent or patent application, primarily of concern
in infringement proceedings. They serve to determine a fair protection – inter
alia by reference to the description and drawings – in the context of an actual
alleged infringer in circumstances where the claim wording is set in stone. In
accordance with Article 69(1) EPC and the Protocol on its interpretation, this
fair protection is a balance struck between a strict literal definitional approach
to the claims – legally certain but potentially unfair to the proprietor, because
of the inherent problems of claim drafting without a crystal ball – and a loose
guidelines approach – potentially unfair, because of its uncertainty, to the
alleged infringer.
THE STATUTE
European Patent Convention
Article 69
(1) The extent of the protection conferred by a European
patent or a European patent application shall be
determined by the claims. Nevertheless, the description
and drawings shall be used to interpret the claims.
(2) For the period up to grant of the European patent, the
extent of the protection conferred by the European patent
application shall be determined by the claims contained in
the application as published. However, the European
patent as granted or as amended in opposition, limitation
or revocation proceedings shall determine retroactively
the protection conferred by the application, in so far as
such protection is not thereby extended.’
European Patent Convention, Protocol
Article 1 (General Principles)
Article 69 should not be interpreted in the sense that the extent of the
protection conferred by a European patent is to be understood as that defined
by the strict, literal meaning of the wording used in the claims, the description
and drawings being employed only for the purpose of resolving an ambiguity
found in the claims. Neither should it be interpreted in the sense that the
claims serve only as a guideline and that the actual protection conferred may
extend to what, from a consideration of the description and drawings by a
person skilled in the art, the patentee has contemplated. On the contrary, it is
to be interpreted as defining a position between these extremes which
combines a fair protection for the patentee with a reasonable degree of
certainty for third parties.
Article 2 (Equivalents)
For the purpose of determining the extent of protection conferred by a
European patent, due account shall be taken of any element which is
equivalent to an element specified in the claims.’
Patents Act 1977, s 125
125 Extent of invention
(1)For the purposes of this Act an invention for a patent for which an
application has been made or for which a patent has been granted
shall, unless the context otherwise requires, be taken to be that
specified in a claim of the specification of the application or patent, as
the case may be, as interpreted by the description and any drawings
contained in that specification, and the extent of the protection
conferred by a patent or application for a patent shall be determined
accordingly.
(2)…
(3)The Protocol on the Interpretation of Article 69 of the European
Patent Convention (which Article contains a provision corresponding
to subsection (1) above) shall, as for the time being in force, apply for
the purposes of subsection (1) above as it applies for the purposes of
that Article.
TWO STAGES OF
DETERMINING SCOPE
OF PROTECTION
Eli Lilly v Actavis UK [2017] UKSC
48
[54]…a problem of infringement is best approached by addressing two
issues, each of which is to be considered through the eyes of the
notional addressee of the patent in suit, ie the person skilled in the
relevant art. Those issues are:
(i) does the variant infringe any of the claims as a matter of normal
interpretation; and, if not,
(ii) does the variant nonetheless infringe because it varies from the invention
in a way or ways which is or are immaterial? If the answer to either issue is
“yes”, there is an infringement; otherwise, there is not.
….
In my view, issue (i) self-evidently raises a question of interpretation,
whereas issue (ii) raises a question which would normally have to be
answered by reference to the facts and expert evidence
QUESTION OF
INTERPRETATION
Eli Lilly v Actavis UK [2017] UKSC
48
• [58]…. issue (i), as already mentioned, involves solving a problem of
interpretation, which is familiar to all lawyers concerned with
construing documents. While the answer in a particular case is by no
means always easy to work out, the applicable principles are
tolerably clear, and were recently affirmed by Lord Hodge in Wood v
Capita Insurance Services Ltd [2017] 2 WLR 1095, paras 8 to 15.

• Wood v Capita Insurance Services [2017] 2 WLR 1095 is the end of a

series of cases which applied an approach to interpretation similar to
that which had previously applied to patent cases alone under Kirin
Amgen v HMR [2004] UKHL 46.
Kirin Amgen v HMR [2004] UKHL
46
It seems to me clear that the Protocol [to Article 69 EPC] with its reference to
“resolving an ambiguity”, was intended to reject these artificial English rules
for the construction of patent claims. As it happens, though, by the time the
Protocol was signed, the English courts had already begun to abandon them,
not only for patent claims, but for commercial documents generally. The
speeches of Lord Wilberforce in Prenn v Simmonds and Reardon Smith Line
Ltd v Yngvar Hansen-Tangen are milestones along this road. It came to be
recognised that the author of a document such as a contract or patent
specification is using language to make a communication for a practical
purpose and that a rule of construction which gives his language a meaning
different from the way it would have been understood by the people to whom
it was actually addressed is liable to defeat his intentions. It is against that
background that one must read the well known passage in the speech of Lord
Diplock in Catnic Components Ltd v Hill & Smith Ltd when he said that the
new approach should also be applied to the construction of patent claims:
Kirin Amgen v HMR [2004] UKHL
46
“A patent specification should be given a purposive construction rather than a purely
literal one derived from applying to it the kind of meticulous verbal analysis in which
lawyers are too often tempted by their training to indulge.”
This was all of a piece with Lord Diplock’s approach a few years later in The
Antaios to the construction of a charterparty:
“I take this opportunity of re-stating that if detailed semantic and syntactical analysis
of words in a commercial contract is going to lead to a conclusion that flouts
business commonsense, it must be made to yield to business commonsense.”
Construction, whether of a patent or any other document, is of course
not directly concerned with what the author meant to say. There is no
window into the mind of the patentee or the author of any other
document. Construction is objective in the sense that it is concerned
with what a reasonable person to whom the utterance was addressed
would have understood the author to be using the words to mean.
Kirin Amgen v HMR [2004] UKHL
46
Notice, however, that it is not, as is sometimes said, “the meaning
of the words the author used”, but rather what the notional
addressee would have understood the author to mean by using
those words. The meaning of words is a matter of convention,
governed by rules, which can be found in dictionaries and
grammars. What the author would have been understood to mean
by using those words is not simply a matter of rules. It is highly
sensitive to the context of and background to the particular
utterance. It depends not only upon the words the author has
chosen but also upon the identity of the audience he is taken to
have been addressing and the knowledge and assumptions which
one attributes to that audience. I have discussed these questions at
some length in Mannai Investment Co Ltd v Eagle Star Life
Assurance Co Ltd and Investors Compensation Scheme Ltd v West
Bromwich Building Society.
Kirin Amgen v HMR [2004] UKHL
46In the case of a patent specification, the notional addressee is the person
skilled in the art. He (or, I say once and for all, she) comes to a reading of
the specification with common general knowledge of the art. And he reads
the specification on the assumption that its purpose is both to describe and
to demarcate an invention – a practical idea which the patentee has had for
a new product or process – and not to be a textbook in mathematics or
chemistry or a shopping list of chemicals or hardware. It is this insight which
lies at the heart of “purposive construction”. If Lord Diplock did not invent
the expression, he certainly gave it wide currency in the law. But there is, I
think, a tendency to regard it as a vague description of some kind of
divination which mysteriously penetrates beneath the language of the
specification. Lord Diplock was in my opinion being much more specific and
his intention was to point out that a person may be taken to mean
something different when he uses words for one purpose from what he
would be taken to mean if he was using them for another. The example in
the Catnic case was the difference between what a person would
reasonably be taken to mean by using the word “vertical” in a mathematical
theorem and by using it in a claimed definition of a lintel for use in the
building trade …There is no presumption about the width of the claims. A
patent may, for one reason or another, claim less than it teaches or
enables.
Kirin Amgen v HMR [2004] UKHL
46
“Purposive construction” does not mean that one is extending or going beyond
the definition of the technical matter for which the patentee seeks protection in the
claims. The question is always what the person skilled in the art would have
understood the patentee to be using the language of the claim to mean. And for
this purpose, the language he has chosen is usually of critical importance. The
conventions of word meaning and syntax enable us to express our meanings with
great accuracy and subtlety and the skilled man will ordinarily assume that the
patentee has chosen his language accordingly. As a number of judges have
pointed out, the specification is a unilateral document in words of the patentee’s
own choosing. Furthermore, the words will usually have been chosen upon skilled
advice. The specification is not a document inter rusticos for which broad
allowances must be made. On the other hand, it must be recognised that the
patentee is trying to describe something which, at any rate in his opinion, is new;
which has not existed before and of which there may be no generally accepted
definition. There will be occasions upon which it will be obvious to the skilled man
that the patentee must in some respect have departed from the conventional use
of language or included in his description of the invention some element which he
did not mean to be essential. But one would not expect that to happen very often.
Kirin Amgen v HMR [2004] UKHL
46
One of the reasons why it will be unusual for the notional skilled man to conclude, after
construing the claim purposively in the context of the specification and drawings, that the
patentee must nevertheless have meant something different from what he appears to have
meant, is that there are necessarily gaps in our knowledge of the background which led him
to express himself in that particular way. The courts of the United Kingdom, the Netherlands
and Germany certainly discourage, if they do not actually prohibit, use of the patent office
file in aid of construction. There are good reasons: the meaning of the patent should not
change according to whether or not the person skilled in the art has access to the file and in
any case life is too short for the limited assistance which it can provide. It is however
frequently impossible to know without access, not merely to the file but to the private
thoughts of the patentee and his advisors as well, what the reason was for some apparently
inexplicable limitation in the extent of the monopoly claimed. One possible explanation is
that it does not represent what the patentee really meant to say. But another is that he did
mean it, for reasons of his own; such as wanting to avoid arguments with the examiners
over enablement or prior art and have his patent granted as soon as possible. This feature
of the practical life of a patent agent reduces the scope for a conclusion that the patentee
could not have meant what the words appear to be saying. It has been suggested that in
the absence of any explanation for a restriction in the extent of protection claimed, it should
be presumed that there was some good reason between the patentee and the patent office.
I do not think that it is sensible to have presumptions about what people must be taken to
have meant but a conclusion that they have departed from conventional usage obviously
needs some rational basis.’
A summary of the principles (pre-Eli
Lilly)
• The Court of Appeal in Virgin Atlantic Airways v Premier
Aircraft [2009] EWCA Civ 1062
‘(i) The first overarching principle is that contained in Article 69 of the
European Patent Convention;
(ii) Article 69 says that the extent of protection is determined by the
claims. It goes on to say that the description and drawings shall be
used to interpret the claims. In short the claims are to be construed in
context.
(iii) It follows that the claims are to be construed purposively—the
inventor’s purpose being ascertained from the description and
drawings.
(iv) It further follows that the claims must not be construed as if they
stood alone—the drawings and description only being used to resolve
any ambiguity. Purpose is vital to the construction of claims.
Virgin Atlantic Airways v Premier Aircraft
[2009] EWCA Civ 1062
(v) When ascertaining the inventor’s purpose, it must be remembered
that he may have several purposes depending on the level of
generality of his invention. Typically, for instance, an inventor may
have one, generally more than one, specific embodiment as well as a
generalised concept. But there is no presumption that the patentee
necessarily intended the widest possible meaning consistent with his
purpose be given to the words that he used: purpose and meaning
are different.
(vi) Thus purpose is not the be-all and end-all. One is still at the end
of the day concerned with the meaning of the language used. Hence
the other extreme of the Protocol—a mere guideline—is also ruled
out by Article 69 itself. It is the terms of the claims which delineate the
patentee’s territory.
(vii) It follows that if the patentee has included what is obviously a
deliberate limitation in his claims, it must have a meaning. One
cannot disregard obviously intentional elements.
Virgin Atlantic Airways v Premier Aircraft
[2009] EWCA Civ 1062
(viii) It also follows that where a patentee has used a word or phrase
which, acontextually, might have a particular meaning (narrow or
wide) it does not necessarily have that meaning in context.
[(ix) It further follows that there is no general “doctrine of equivalents”
- superseded by Eli Lilly
(x) On the other hand purposive construction can lead to the
conclusion that a technically trivial or minor difference between an
element of a claim and the corresponding element of the alleged
infringement nonetheless falls within the meaning of the element
when read purposively. This is not because there is a doctrine of
equivalents: it is because that is the fair way to read the claim in
context - superseded by Eli Lilly]
(xi) Finally purposive construction leads one to eschew the kind of
meticulous verbal analysis which lawyers are too often tempted by
their training to indulge.’
General Principles
• The construction of a patent is a question of law.
• Evidence is not admissible as to the meaning of the patent
(although evidence on meaning of technical terms is admissible)
• Behaviour of patent proprietor is irrelevant

Glaverbel v British Coal Corp [1995] RPC 255

• The intention of the drafter is irrelevant to construction as
the document must be construed objectively.
Glaverbel v British Coal Corp [1995] RPC 255
General Principles
• The factual matrix (the surrounding
circumstances) is relevant to the construction of
the patent.
Glaverbel v British Coal Corp [1995] RPC 255
• The patent is construed at potentially different
dates. Sufficiency would be judged at the date of
filing, but it may be the priority date is more
appropriate.
Biogen v Medeva [1997] RPC 1
The “skilled reader”
• The patent is read by the person skilled in the art (which
could be a team).
• This person will be the same as that for inventive step
(novelty and sufficiency).
Prior art
• A patent should not be construed with an eye to the prior
art (unless, maybe, where it has been cited);
Ultraframe v Eurocell Building [2005] EWCA 761
• It is probably a matter for looking at each individual patent
to determine whether the prior art is relevant.
Examples are not limiting
• A number of BT's arguments on this appeal involve reading limitations into the claim
which are not there as a matter of language, on the grounds that to do so would follow
more closely that which is disclosed by way of example in the body of the specification.
It must be remembered, however, that the specification and claims of the patent serve
different purposes. The specification describes and illustrates the invention, the claims
set out the limits of the monopoly which the patentee claims. As with the interpretation
of any document, it is conceivable that a certain, limited, meaning may be implicit in the
language of a claim, if that is the meaning that it would convey to a skilled person, even
if that meaning is not spelled out expressly in the language. However it is not
appropriate to read limitations into the claim solely on the ground that examples in the
body of the specification have this or that feature. The reason is that the patentee may
have deliberately chosen to claim more broadly than the specific examples, as he is
fully entitled to do.
Adaptive Spectrum and Signal Alignment Inc v British Telecommunications Plc [2014]
EWCA Civ 1462
The whole claim must be considered as
written
• Société Technique de Pulverisation Step v Emson Europe
Ltd [1993] RPC 513:
‘does not mean that an integer can be treated as struck out if it
does not appear to make any difference to the inventive concept. It
may have some other purpose buried in the prior art and even if
this is not discernible, the patentee may have had some reason of
his own for introducing it.’
• The claim cannot be re-written to make it easier to
construe.
Brugger v Medic-Aid [1996] RPC 635
ELI LILLY/IMPROVER
QUESTIONS
Strict compliance: Catnic v Hill
‘The question in each case is: whether persons with practical knowledge and experience
of the kind of work in which the invention was intended to be used would understand that
strict compliance with a particular descriptive word or phrase appearing in a claim was
intended by the patentee to be an essential requirement of the invention so that any
variant would fall outside the monopoly claimed, even though it could have no material
effect upon the way the invention worked.
The question, of course, does not arise where the variant would in fact have a material
effect upon the way the invention worked. Nor does it arise unless at the date of
publication of the specification it would be obvious to the informed reader that this was
so. Where it is not obvious, in the light of then-existing knowledge, the reader is entitled
to assume that the patentee thought at the time of the specification that he had good
reason for limiting his monopoly so strictly and had intended to do so, even though
subsequent work by him or others in the field of the invention might show the limitation to
have been unnecessary. It is to be answered in the negative only when it would be
apparent to any reader skilled in the art that a particular descriptive word or phrase used
in a claim cannot have been intended by a patentee, who was also skilled in the art, to
exclude minor variants which, to the knowledge of both him and the readers to whom the
patent was addressed, could have no material effect upon the way in which the invention
worked’.
Improver v Remington [1990] FSR 181
‘If the issue was whether a feature embodied in an alleged infringement which fell outside the
primary literary or acontextual meaning of a descriptive word or phrase in the claim (“a variant”)
was nevertheless within its language as properly interpreted, the court should ask itself the
following three questions:
(1) Does the variant have a material effect upon the way the invention works? If yes, the
variant is outside the claim. If no?
(2) Would this (i e that the variant had no material effect) have been obvious at the date of
publication of the patent to a reader skilled in the art? If no, the variant is outside the claim. If
yes?
(3) Would the reader skilled in the art nevertheless have understood from the language of the
claim that the patentee intended that strict compliance with the primary meaning was an
essential requirement of the invention? If yes, the variant is outside the claim.
On the other hand, a negative answer to the last question would lead to the conclusion that the
patentee was intending the word or phrase to have not a literal but a figurative meaning (the
figure being a form of synecdoche or metonymy)denoting a class of things which included the
variant and the literal meaning, that latter being perhaps the most perfect, best known or
striking example of the class.’

[Is a “coiled helical spring” equivalent to a “slotted rubber tube”]

Eli Lilly (reformulated) questions
[66]…. While the language of some or all of the questions may sometimes have to be
adapted to apply more aptly to the specific facts of a particular case, the three
reformulated questions are as follows:
i) Notwithstanding that it is not within the literal meaning of the relevant claim(s) of the
patent, does the variant achieve substantially the same result in substantially the
same way as the invention, ie the inventive concept revealed by the patent?
ii) Would it be obvious to the person skilled in the art, reading the patent at the priority
date, but knowing that the variant achieves substantially the same result as the
invention, that it does so in substantially the same way as the invention?
iii) 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 invention?
In order to establish infringement in a case where there is no literal infringement, a
patentee would have to establish that the answer to the first two questions was “yes” and
that the answer to the third question was “no”.
First Question
• The first question is one of fact.
• Eli Lilly v Actavis [2017] UKSC 48, [60]
“…In effect, the question is whether the variant achieves the same result
in substantially the same way as the invention. If the answer to that
question is no, then it would plainly be inappropriate to conclude that it
could infringe. If, by contrast, the answer is yes, then it provides a sound
initial basis for concluding that the variant may infringe, but the answer
should not be the end of the matter.”
• The invention should be taken at the same level of generality as that
defined in the claims:
Kirin-Amgen v HMR [2004] UKHL 46
• Just because a variant has advantages over the patent invention
does not preclude it from infringing.
Insituform Technical Services v Inliner [1992] RPC 83
Second question
Eli Lilly v Actavis [2017] UKSC 48
[62] In my opinion, the second question is better expressed as asking whether, on
being told what the variant does, the notional addressee would consider it obvious that
it achieved substantially the same result in substantially the same way as the
invention. In other words, it seems to me that the second Improver question should be
asked on the assumption that the notional addressee knows that the variant works to
the extent that it actually does work….
[63] This reformulated second question should also apply to variants which rely on, or
are based on, developments which have occurred since the priority date, even though
the notional addressee is treated as considering the second question as at the priority
date. Such an approach is supported by the desirability of both consistency of
approach and pragmatic justice. It seems right in principle to have the same question,
including the same assumption (ie that the variant works) for all cases. As to
pragmatism…: while the notional addressee may answer the reformulated second
question affirmatively even where the variant was unforeseeable at the priority date,
he is less likely to do so than in relation to a variant which was unforeseeable as at
that date.
Second question
• “Would it be obvious to the skilled person reading the
Patent at the priority date, but knowing that the variant
achieves substantially the same result as the invention,
that it does so in substantially the same way as the
invention? There are likely to be few cases in which this
question will be answered in the negative. In the present
case the answer must be yes.”
Eli Lilly v Genentech, Inc [2019] EWHC 387 (Pat)
Third question
Eli Lilly v Actavis [2017] UKSC 48
[65] The third Improver question as expressed by Hoffmann J is whether the notional addressee
would have understood from the language of the claim that the patentee intended that strict
compliance with the primary meaning was an essential requirement of the invention. That is in my
view an acceptable test, provided that it is properly applied. In that connection, I would make four
points….First, although “the language of the claim” is important, consideration of the third question
certainly does not exclude the specification of the patent and all the knowledge and expertise
which the notional addressee is assumed to have….Secondly, the fact that the language of the
claim does not on any sensible reading cover the variant is certainly not enough to justify holding
that the patentee does not satisfy the third question. …Thirdly, when considering the third
question, it is appropriate to ask whether the component at issue is an “essential” part of the
invention, but that is not the same thing as asking if it is an “essential” part of the overall product
or process of which the inventive concept is part.…Fourthly, when one is considering a variant
which would have been obvious at the date of infringement rather than at the priority date, it is,…
necessary to imbue the notional addressee with rather more information than he might have had
at the priority date.
Eli Lilly/ Improver Questions
• These questions are optional – Kirin-Amgen v HMR
[2004] UKHL 46; Eli Lilly v Actavis [2017] UKSC 48
PROSECUTION HISTORY
Eli Lilly v Actavis [2017] UKSC 48
[87] In my judgment, it is appropriate for the UK courts to adopt a sceptical, but not absolutist, attitude
to a suggestion that the contents of the prosecution file of a patent should be referred to when
considering a question of interpretation or infringement, along substantially the same lines as the
German and Dutch courts. It is tempting to exclude the file on the basis that anyone concerned about,
or affected by, a patent should be entitled to rely on its contents without searching other records such
as the prosecution file, as a matter of both principle and practicality. However, given that the contents
of the file are publicly available (by virtue of article 128 EPC 2000) and (at least according to what we
were told) are unlikely to be extensive, there will be occasions when justice may fairly be said to
require reference to be made to the contents of the file. However, not least in the light of the wording
of article 69 EPC 2000, which is discussed above, the circumstances in which a court can rely on the
prosecution history to determine the extent of protection or scope of a patent must be limited.
[88]. While it would be arrogant to exclude the existence of any other circumstances, my current view
is that reference to the file would only be appropriate where (i) the point at issue is truly unclear if one
confines oneself to the specification and claims of the patent, and the contents of the file
unambiguously resolve the point, or (ii) it would be contrary to the public interest for the contents of
the file to be ignored. The first type of circumstance is, I hope, self-explanatory; the second would be
exemplified by a case where the patentee had made it clear to the EPO that he was not seeking to
contend that his patent, if granted, would extend its scope to the sort of variant which he now claims
infringes.
Prosecution history
• Observations on certain experiments in the
Patent Office files can be useful
Rohm & Haas v Collag [2001] EWCA Civ 1589
• An admission by a patent proprietor during
prosecution may be used against him or her
Furr v CD Truline [1985] FSR 553
Biotechnology
“the legal protection of biotechnological inventions is to be
interpreted as not conferring patent right protection in
circumstances such as those of the case in the main
proceedings, in which the patented product is contained in
[a product], where it does not perform the function for which
it is patented, but did perform that function previously in the
[product]…or would possibly again be able to perform that
function after it had been extracted from the [product] and
inserted into the cell of a living organism.”
C-428/08 Monsanto Technology v Cefetra (6th July 2010)
PARTICULAR
PHRASES
Numbers and ranges
• …the approach to be adopted to the interpretation of claims containing a numerical
range is no different from that to be adopted in relation to any other claim. But certain
points of particular relevance to claims of this kind do emerge from the authorities to
which I have referred and which are worth emphasising. First, the scope of any such
claim must be exactly the same whether one is considering infringement or validity.
Secondly, there can be no justification for using rounding or any other kind of
approximation to change the disclosure of the prior art or to modify the alleged
infringement. Thirdly, the meaning and scope of a numerical range in a patent claim
must be ascertained in light of the common general knowledge and in the context of the
specification as a whole. Fourthly, it may be the case that, in light of the common
general knowledge and the teaching of the specification, the skilled person would
understand that the patentee has chosen to express the numerals in the claim to a
particular but limited degree of precision and so intends the claim to include all values
which fall within the claimed range when stated with the same degree of precision.
Fifthly, whether that is so or not will depend upon all the circumstances including the
number of decimal places or significant figures to which the numerals in the claim
appear to have been expressed.
Smith & Nephew plc v ConvaTec Technologies Inc [2015] EWCA Civ 607
‘For’ and ‘suitable for’
• The word ‘for’ in a claim means ‘suitable for’ rather than
‘for the purpose of’.
• The use is therefore exemplary and its actual use need not be
shown
FNM Corp v Drammock International [2009] EWHC 1294 (Pat)
Adhesive Dry Mounting v Trapp & Co (1910) 27 RPC 341
• But it must be possible to use it for that purpose
Visx v Nidek [1999] FSR 405
‘Comprise’ vs ‘consists’
• The word ‘comprise’ means include, contain or
comprehend;
• The word ‘consists’ is exclusive and so the substance
cannot contain anything else.
Astellas Pharma v Comptroller-General [2009] EWHC 1916 (Pat)
‘Pre-set’ and ‘Pre-determined’
• ‘Pre-determined” or ‘pre-set’ by whom?
Nikken K v Pioneer Trading [2005] EWCA Civ 906
• But allowable as long as it is clear from the
context who pre-set or pre-determined the
variable.
Folding Attic v Loft Stairs [2009] EWHC 1221 (Pat)
About
• Words such as “about”, approximately” or “substantially”
can be used where the meaning is sufficiently clear in the
context.
[based on Guidelines for Examinatioon]
Relative terms
• Vague terms should be avoided but:
• “large” would usually mean large compared to the industry;
British Thomson-Houston Co Ltd v Corona Lamp Works Ltd (1922) 39 RPC 49
• “thin” would be thin compared with existing products on the market.
Cleveland Graphite Bronze Co v Glacier Metal Co Ltd (1950) 67 RPC 149
BREAKING DOWN
CLAIMS INTO
INTEGERS
FNM Corporation’s Patent
A non-flammable composition for providing a supply of water-based cooling
mixture, the temperature of which when utilised is lower than the ambient
temperature and higher than the freezing point of water, which composition
essentially consists of a mixture of water and a chemical compound selected
from one or more of dimethyl ether, a homologue of dimethyl ether and a
chemical derivative of diethyl ether.
FNM Corporation’s Patent
[1] A non-flammable composition
[2] for providing a supply of water-based cooling mixture,
[3] the temperature of which when utilised is lower than the ambient
temperature and higher than the freezing point of water,
[4] which composition essentially consists of a mixture of
[a] water and
[b] a chemical compound selected from one or more of dimethyl ether, a
homologue of dimethyl ether and a chemical derivative of diethyl ether.

A non-flammable composition for providing a supply of water-based cooling

mixture, the temperature of which when utilised is lower than the ambient
temperature and higher than the freezing point of water, which composition
essentially consists of a mixture of water and a chemical compound
selected from one or more of dimethyl ether, a homologue of dimethyl ether
and a chemical derivative of diethyl ether.
RIM’s Patent
A method of operating a messaging gateway system operable to receive
messages from a remote messaging system, and to construct transmittable
messages including portions of the messages received from the remote
messaging system, the method characterised by the messaging gateway
system : receiving a set of commands from a wireless subscriber device
using an RF transmission system; translating the set of commands into a
protocol understood by the remote messaging system; and transmitting the
translated commands to the remote messaging system such that a user of
the subscriber device can control the operation of the remote messaging
system utilizing commands transmitted to the remote messaging system.
RIM’s Patent
[1] A method of operating a messaging gateway system
[2] operable to receive messages from a remote messaging system,
[3] and to construct transmittable messages including portions of the messages received
from the remote messaging system, the method characterised by the messaging
gateway system:
[4] receiving a set of commands from a wireless subscriber device using an RF
transmission system;
[5] translating the set of commands into a protocol understood by the remote messaging
system; and
[6] transmitting the translated commands to the remote messaging system such that a
user of the subscriber device can control the operation of the remote messaging system
utilizing commands transmitted to the remote messaging system.
A method of operating a messaging gateway system operable to receive messages from a remote
messaging system, and to construct transmittable messages including portions of the messages
received from the remote messaging system, the method characterised by the messaging gateway
system : receiving a set of commands from a wireless subscriber device using an RF transmission
system; translating the set of commands into a protocol understood by the remote messaging
system; and transmitting the translated commands to the remote messaging system such that a
user of the subscriber device can control the operation of the remote messaging system utilizing
commands transmitted to the remote messaging system.
Wake Forest’s Patent
An apparatus for facilitating the healing of a wound, comprising vacuum means for creating
a negative pressure on the area of the skin including and surrounding the wound and
sealing means operatively associated with said vacuum means for maintaining said
negative pressure on said wound by contacting the skin surrounding said wound,
characterised in that said negative pressure is between about 1.01 and 100.3 kPa and in
that said apparatus comprises screen means for positioning at the wound within the sealing
means for preventing overgrowth of tissue at the wound in which said screen means
comprises an open-cell polymer foam.
Wake Forest’s Patent
(1) An apparatus for facilitating the healing of a wound, comprising
(2) vacuum means for creating a negative pressure on the area of the skin
including and surrounding the wound and
(3) sealing means operatively associated with said vacuum means for
maintaining said negative pressure on said wound by contacting the skin
surrounding said wound, characterised in that
(4) said negative pressure is between about 1.01 and 100.3 kPa and
(5) in that said apparatus comprises screen means for positioning at the
wound within the sealing means for preventing overgrowth of tissue at the
wound
(6) in which said screen means comprises an open-cell polymer foam

An apparatus for facilitating the healing of a wound, comprising vacuum means for
creating a negative pressure on the area of the skin including and surrounding the
wound and sealing means operatively associated with said vacuum means for
maintaining said negative pressure on said wound by contacting the skin surrounding
said wound, characterised in that said negative pressure is between about 1.01 and
100.3 kPa and in that said apparatus comprises screen means for positioning at the
wound within the sealing means for preventing overgrowth of tissue at the wound in
which said screen means comprises an open-cell polymer foam.
Novartis’s Patent
An ophthalmic lens having ophthalmically compatible inner and outer surfaces, wherein said
ophthalmic lens is selected from the group consisting of contact lenses for vision correction, contact
lenses for eye colour modification, ophthalmic drug delivery devices and ophthalmic wound healing
devices, said lens being suited to extended periods of wear in continuous, intimate contact with ocular
tissue and ocular fluids, said lens comprising a polymeric material, which has high oxygen
permeability and high ion permeability, said polymeric material being formed from polymerizable
materials comprising: (a) at least one oxyperm polymerizable material as defined in section I of the
description, and (b) at least one ionoperm polymerizable material, as defined in section I of the
description, wherein said lens allows oxygen permeation in an amount sufficient to maintain corneal
health and wearer comfort during a period of extended continuous contact with ocular tissues and
ocular fluids, and wherein said lens allows ion or water permeation in an amount sufficient to enable
the lens to move on the eye such that corneal health is not substantially harmed and wearer comfort
is acceptable during a period of extended, continuous contact with ocular tissue and ocular fluids,
wherein said ophthalmic lens has an oxygen transmissibility as defined in section I of the description
of at least about 70 barrers/mm and an ion permeability characterized either by (1) an Ionoton Ion
Permeability Coefficient of greater than about 0.2 x 10 -6 cm²/sec, or (2) an Ionoflux Diffusion
Coefficient of greater than about 1.5 x 10 -6 mm²/min, wherein said coefficients are measured with
respect to sodium ions, and according to the measurement techniques described in sections II.F.1
and II.F.2 of the description respectively.
Novartis’s Patent
An ophthalmic lens having ophthalmically compatible inner and outer surfaces, wherein
said ophthalmic lens is selected from the group consisting of contact lenses for vision
correction, contact lenses for eye colour modification, ophthalmic drug delivery devices and
ophthalmic wound healing devices, said lens being suited to extended periods of wear in
continuous, intimate contact with ocular tissue and ocular fluids, said lens comprising a
polymeric material, which has high oxygen permeability and high ion permeability, said
polymeric material being formed from polymerizable materials comprising: (a) at least one
oxyperm polymerizable material as defined in section I of the description, and (b) at least
one ionoperm polymerizable material, as defined in section I of the description, wherein
said lens allows oxygen permeation in an amount sufficient to maintain corneal health and
wearer comfort during a period of extended continuous contact with ocular tissues and
ocular fluids, and wherein said lens allows ion or water permeation in an amount sufficient
to enable the lens to move on the eye such that corneal health is not substantially harmed
and wearer comfort is acceptable during a period of extended, continuous contact with
ocular tissue and ocular fluids, wherein said ophthalmic lens has an oxygen transmissibility
as defined in section I of the description of at least about 70 barrers/mm and an ion
permeability characterized either by (1) an Ionoton Ion Permeability Coefficient of greater
than about 0.2 x 10-6 cm²/sec, or (2) an Ionoflux Diffusion Coefficient of greater than about
1.5 x 10-6 mm²/min, wherein said coefficients are measured with respect to sodium ions,
and according to the measurement techniques described in sections II.F.1 and II.F.2 of the
description respectively.
Example
• Claim 1:
A nail pulling tool comprising a pair of jaws engageable with the
shank of a nail to be extracted, the tool having a support foot
engangable with a surface in which the nail is situated and on which
the tool is rollable and rotatable to pull the nail from the surface
Integers
• Nail pulling tool
• Comprising
• A pair of jaws
• engageable with the shank of a nail to be extracted
• the tool having a support foot
• and on which the tool is rollable and rotatable
• To pull the nail from the surface
An construction table
Patent Crowbar Carpenters Pincers
Nail pulling tool
comprising
A pair of jaws
Engageable with the
shank of a nail to be
extracted
the tool having a support
foot
and on which the tool is
rollable and rotatable
to pull the nail from the
surface
INFRINGEMENT
DIRECT INFRINGEMENT
Direct infringement
60 Meaning of infringement
(1) Subject to the provisions of this section, a person
infringes a patent for an invention if, but only if, while the
patent is in force, he does any of the following things in
the United Kingdom in relation to the invention without
the consent of the proprietor of the patent, that is to say—
(a)where the invention is a product, he makes, disposes of,
offers to dispose of, uses or imports the product or keeps
it whether for disposal or otherwise;
….
Knowledge
• ‘The right of the patentee does not depend on the
defendant having notice that what he is doing is an
infringement. If what he is doing is in fact an infringement,
even although the defendant acts in the way which …was
bona fide or honest …’
Proctor v Bennis (1887) 4 RPC 333
No obligation to warn
• As there is no knowledge requirement there is no
obligation to warn a person he or she is infringing:
Proctor v Bennis (1887) 4 RPC 333
• But if you do warn it might give rise to an estoppel
or a threats action
Makes
• Makes is an ordinary English word and must be
contextually construed – whether something is a making
(or a repair) is a matter of degree.
Schutz (UK) Ltd v Werit (UK) Ltd [2013] UKSC 16
• Whether the addition of a modular part consitute making
the machine is also a matter of degree and fact
dependent
• Nestec v Dualit [2013] EWHC 923 (Pat)
Disposes of
• It does not extend to throwing away an object (or
simply losing possession).
Kalman v PCL Packaging [1982] FSR 406
• It includes selling and probably hire of the product
Kalman v PCL Packaging [1982] FSR 406
• It does not include deliver or despatch of a
product by a warehouseperson.
Smith Kline & French v R D Harbottle [1980] RPC 363
Disposes of
• The location of the property passing might be
determinative of where the disposal takes place.
Sabaf SpA v MFI Furniture [2004] UKHL 45

• So if the manufacturer is in Italy and the goods

and then transported to the United Kingdom by a
carrier there is no importation or disposal in the
UK.
Export
• There is no infringing act of “exporting” as such;
American Cyanamid (Fenbufen) Patent [1990] RPC 309
• An export is likely to involve another infringing act
(such as keeping or disposals).
Smith Kline & French Laboratories [1990] RPC 203
Offer to dispose of
• An offer to dispose includes offering to do anything which
amounts to a disposal of the product within the
jurisdiction.
Kalman v PCL Packaging [1982] FSR 406

• The meaning of the term ‘offer’ should not be

given an unduly legalistic meaning, merely
requires a willingness to supply a product even if
terms are to be agreed.
Gerber v Lectra [1995] RPC 383
Offer to dispose of
• It is not an infringing offer where the supply is to take
place after the expiry of the patent.
Gerber v Lectra [1995] RPC 383

• An offer to supply a patented product on the

internet from outside the UK is only infringing
where the intention is to solicit customers from
within the UK
Euromarket Designs Inc v Peters [2001] FSR 20
Boegli-Gravures SA v Darsail-ASP Ltd [2009] EWHC 2690 (Pat)
‘Uses’
• Use in this context is not restricted to commercial use
(but see Upjohn Co v T Kerfoot & Co Ltd [1988] FSR 1)

• In relation to the internet, a use take place in the

United Kingdom where a person who makes
inputs on a computer is located there.
MBM v William Hill [2002] EWCA Civ 1702
Imports
• The person who makes the arrangements for the
importation will be treated as an importer.
Sabaf SpA v MFI Furniture [2004] UKHL 45
Keeps…whether for disposal or
otherwise
• Keeping means ‘keeping in stock’
Smith Kline & French v RD Harbottle [1980] RPC 363

• “keeping [the product] in stock for the purposes of

his business in order to make use of them as and
when it would be beneficial to him to do so”
McDonald v Graham [1994] RPC 407
Direct infringement of a process
60 Meaning of infringement
(1)Subject to the provisions of this section, a person infringes a patent
for an invention if, but only if, while the patent is in force, he does any
of the following things in the United Kingdom in relation to the
invention without the consent of the proprietor of the patent, that is to
say—
(b)where the invention is a process, he uses the process or he
offers it for use in the United Kingdom when he knows, or it is
obvious to a reasonable person in the circumstances, that its use
there without the consent of the proprietor would be an infringement
of the patent;
(c)where the invention is a process, he disposes of, offers to
dispose of, uses or imports any product obtained directly by means
of that process or keeps any such product whether for disposal or
otherwise.
Use of process
• Where a process is contained within a computer program
then running a computer program will be using the
process.
RIM v Inpro Licensing [2006] EWHC 70 (Pat)

• The burden of proof in PA 1977, s. 100 may

assist
Offering a process for use
(a) an offer to work the process for a person (who takes
the products to the factory to be processed);
(b) an offer to sell a person a machine which uses the
process; or
(c) selling a person the information to work the process
him or herself (akin to a sale of confidential information).
(a) an offer to work the process for a person (who
takes the products to the factory to be processed);
• This is unlikely to arise in practice unless it proves
impossible to find evidence that the process was
subsequently used (the knowledge element making it less
desirable to prove an offer to use, rather than use);
(b) an offer to sell a person a machine which uses
the process
• the offering of a machine for sale which when working
uses a patented process might amount to ‘offering a
process for use’ for the purposes of infringement.
Research in Motion UK Ltd v Inpro Licensing SARL [2006] RPC 517

• But a genuine disclaimer may avoid infringement

Knowledge element
• The knowledge requirement in relation to every aspect of
infringement. So if that person reasonably believes:
(a) he or she has consent;
(b) that he or she is not offering the process for use or
(c) he or she believes that the activities fall outside the
scope of the monopoly
there is no infringement.
The offer
• The word “offer” should not be given a too legalistic
meaning.
Gerber v Lectra [1995] RPC 383

• The offer has to be made within the UK and so

does the offer of the use (so if either outside the
UK then no offer).
(c) selling a person the information to work the
process him or herself
• This is unlikely to occur by reason of the fact that the
information about the process would be otherwise
available (in the published patent).
Product obtained by process
A product obtained by a process infringes in relation to a
product for its:
(a) disposal;
(b) offer to dispose;
(c) uses;
(d) imports; or
(e) keeps for disposal or otherwise.
Obtained directly
• The words mean “without intermediary”
Pioneer vWarner [1997] RPC 757

• The further processing of a product obtained by a process

where the essential characteristics are maintained does
not stop being obtained directly.
Halliburton Energy v Smith [2005] EWHC 1623 (Pat)

• The test is are the essential characteristics produced by

the patented process, rather the essential characteristics
of the patented product come from that process.
Pioneer Electronics v Warner Music [1997] RPC 757
INDIRECT
INFRINGEMENT
Indirect infringement
60 Meaning of infringement
(2) Subject to the following provisions of this section, a person (other than
the proprietor of the patent) also infringes a patent for an invention if,
while the patent is in force and without the consent of the proprietor, he
supplies or offers to supply in the United Kingdom a person other than a
licensee or other person entitled to work the invention with any of the
means, relating to an essential element of the invention, for putting the
invention into effect when he knows, or it is obvious to a reasonable
person in the circumstances, that those means are suitable for putting,
and are intended to put, the invention into effect in the United Kingdom.
(3)Subsection (2) above shall not apply to the supply or offer of a staple
commercial product unless the supply or the offer is made for the purpose
of inducing the person supplied or, as the case may be, the person to
whom the offer is made to do an act which constitutes an infringement of
the patent by virtue of subsection (1) above.
 Knowledge
• The person must know that
(a) the ‘means’ supplied to put the invention into effect are suitable
for putting the invention into effect; and
(b) those means are intended to put the invention into effect.
Qualcomm Inc v Nokia Corpn [2008] EWHC 329 (Pat)
• it is enough if (at the time of supply or offer to supply) the
supplier knows (or it is obvious to a reasonable person in
the circumstances) that some ultimate users will intend to
put the invention into effect in the UK using the “means
essential.
KCI Licensing v Smith & Nephew [2010] EWCA Civ 1260
Knowledge of what.
• The knowledge relates to putting the invention into effect,
not infringement.
• The seller does not need to have knowledge that a patent
is in force or that the activity itself is infringing.
Ward Building Systems v Hodgson Steel (unreported) 3 June 1997
Person entitled to work the
invention
• Does not include those able to work the invention by
reason of an exception
Menashe Business Mercantile v William Hill [2002] EWHC 397 (Pat)

• But Crown users and those with third party rights are
persons entitled
“Means” relating to an essential
element
• It is unlikely that something as abstract as instructions will be
sufficient to be ‘means’.
Agilent Technologies v Waters [2004] EWHC 2992 (Ch)
• is not required that the means supplied is the same
thing as is used to work the invention
Cranway v Playtech [2009] EWHC 1588 (Pat)

• An essential element, the court adopted the

approach of construing the scope of the relevant
claim and seeing whether the use was an ‘immaterial
variation’ from that claimed.
Anchor Building v Redland Rood [1990] RPC 283
To put the invention into effect
• This stage of the test is objective and requires it to be
proved that in fact the means can be used to put the
invention into effect.
Cranway v Playtech [2009] EWHC 1588 (Pat)
• The invention must therefore be put into effect, it is
not enough that the effects of the invention are felt
within the United Kingdom
Menashe Business Mercantile v William Hill [2002] EWCA Civ 1702
• The existence of non-infringing uses of the ‘means’
is usually not going to be relevant because of the
underlying requirement of knowledge.
Staple commercial product
• A product which has been custom made cannot be a
staple commercial product; even if it is of a general type of
product which is widely sold.
DI BV v HS [2000] ENPR 194
• A staple commercial product is something which is of the
kind ‘needed every day and generally obtainable’
Pavel v Sony (unreported), 13 January 1993
Time when patent can be infringed
• Rights conferred by publication, s. 69
• An act will only infringe the rights conferred by publication if the relevant
act would infringe the patent as granted and any claim in the patent
application in the form immediately before the preparations for the
application’s publication were completed
• The claim itself does not need to be in the same form in
both publications.
Unilever v Chefaro [1994] RPC 567
• The limitation period runs from when the
infringing act occurs and not from the publication.
Sevcon Ltd v Lucas CAV Ltd [1986] RPC 609
Consent
• Consent can be express, implied, limited by time or
otherwise restricted.
De minimis
• Where the incidents of infringement are so small they are
considered de minimis the courts will not make a finding
of infringement:
NAPP v Dr Reddy's Laboratories [2016] EWHC 1517 (Pat)
[1 in 25,600 products would infringe due to process would be de minimis]
PERMITTED ACT
Private and non-commercial use
• An act is not an infringement of the patent provided it is
done privately and for purposes which are non-
commercial.

• ‘… the word “privately” includes commercial and non-

commercial situations. This word is not, in my view,
synonymous with “secret” or “confidential” and would
include acts which were secret or confidential or were not.
This word appears to me to be used as the opposite of
“publicly” and to be used in the sense of denoting that the
act was done for the person’s own use …’
Smith Kline & French Laboratories v Evans Medical [1989] 1 FSR 513
Private and non-commercial
• The test is, therefore, subjective and so where there is a
dual purpose, one purpose being commercial the other
being non-commercial, it falls outside the exception.
Smith Kline & French v Evans Medical [1989] 1 FSR 513
• A person with information which might have a
commercial benefit does not turn otherwise non-
commercial use into infringing commercial use
Smith Kline & French v Evans Medical [1989] 1 FSR 513
Experimental purposes
• It is not an infringement to carry out an act for
experimental purposes relating to the subject matter of the
invention.
PA 1977, s 60(5)(b)
• ‘Experimental’ which is not a term of art and has its
normal meaning.
Monsanto Co v Stauffer Chemical Co [1985] RPC 515
• Such experiments can have a commercial motive
but cannot be for the immediate generation of
revenue.
Corevalve Inc v Edwards Lifesciences AG [2009] EWHC 6 (Pat)
Experiments
• Experiments undertaken solely to demonstrate to
a third party that a product works or to provide
information to a third party, which can include a
regulatory authority, are not experimental use
Corevalve Inc v Edwards Lifesciences AG [2009] EWHC 6 (Pat)
• Where the experiment is conducted to exploit and sell
technology this cannot be experimental use
Inhale Therapeutic v Quandrant Healthcare plc [2002] RPC 419
‘Subject matter’ of the invention
• ‘section 60(5)(b) not only requires the act to be done for experimental purposes, but
also that the purposes relate to the subject matter of the invention …the real difficulty
arises as to what nexus is required by the words “relating to”. Can it be an indirect
relationship, or must it be a direct relationship? The difficulty is best illustrated by an
example which was canvassed before me in argument. Supposing a company seeking
to investigate a chemical patent either for the purposes of challenging its validity or for
the purposes of improving upon the invention of that patent, carries out the process of
the patent, using a reagent which is made and marketed by a third party who has
patented that reagent. In such circumstances, can the experimenter, relying on sub-
section (5)(b), manufacture the reagent without the consent of the patentee of the
reagent patent, thereby depriving him of the sale. In my view he cannot. I believe that in
the circumstances outlined the experimental purposes relate to the chemical patent and
not to the reagent patent. A contrary conclusion would, in practice, deprive the words
“relating to the subject matter of the invention” of any meaning as sub-section (5)(b)
would apply in all cases where the experiments were carried out which involve the use
of an invention’.
• Smith Kline & French v Evans Medical Ltd [1989] 1 FSR 513
‘Subject matter’ of the invention
• The English approach that the subject matter of the patent
should be ascertained from examining the patent as a
whole.
Auchinloss v Agricultural and Veterinary Supplies Ltd [1999] RPC 397
• . The German courts have adopted a more subjective
approach suggesting that the subject matter of the
invention is the object of the experimental act. In other
words, the subject matter of the invention is determined
by the invention experimented on, rather than the patent
itselt.
Clinical trials I [1997] RPC 623
Deemed research
…anything done in or for the purposes of a medicinal
product assessment which would otherwise constitute an
infringement of a patent for an invention is to be regarded
as done for experimental purposes relating to the subject-
matter of the invention.
Patents Act 1977, s 60(6D)
Meter-Tech Llc & Anor v British Gas Trading Ltd
[2016] EWHC 2278 (Pat)
Although it is tempting to place a gloss on the statutory wording, in my judgment that
would not be appropriate. The evaluation in each case involves consideration of a range
of factors of which the following are some:
a. Whether the acts in question are properly characterized as trials and whether those
trials can be described as undertaking scientific or development research;
b. Whether the trials were carried out in order to discover something technically
unknown or to test a technical hypothesis or whether they were carried out to discover
whether the product was commercially acceptable to the market;
c. Whether the trials were intended to find out whether something which was known to
work in specific conditions would work in different conditions and, in the case of a
system intended to operate on a large scale, whether it was capable of operating on
such a scale;
d. Whether the trials were carried out mainly in order to demonstrate or collect
information to demonstrate to a third party customer or regulator that a product works
– which points away;
e. Whether the purpose of the trial was mainly directly or indirectly to generate
revenue as a result of the use of the invention in the trial itself – which points away.
Extemporaneous preparation on
prescription
• An act which consists of the extemporaneous preparation
in a pharmacy of a medicine for an individual in
accordance with a prescription given by a registered
medical or dental practitioner or consists of dealing with
medicines so prepared is not infringing.
PA 1977, s. 60(5)(c)
Visiting ships, aircraft etc
• A ship, aircraft, hovercraft or other vehicle is ‘relevant’
where it is registered in, or belongs to, a country (other
than the UK) which is a party to the Paris Convention or
the World Trade Organization (PA 1977, s. 60(5)(e))
• Additional protection for aircraft where they are entitled
under Article 27 of the Chicago Convention (PA 1977, s.
60(5)(f)).
• Potentially, the right of innocent passage may also have
an effect: see JOHNNY ROCKETS [2016] ETMR 37
(trade marks case)
 Relevant aircraft etc
• Temporary entry includes periodical entries and that accidental entry
may be caused inadvertently or by shipwreck – Bodenhausen

• Temporarily does not mean occasionally and so a ship making a

regular crossing between Ireland and Great Britain three to four
times a day can still have temporary entry; the frequency of such
visits is irrelevant.
Stena Rederi AB v Irish Ferries Ltd [2003] EWCA Civ 66
Plant reproductive material
• An act which consists of the use by a farmer of the
product of his harvest for propagation or multiplication by
him on his own holding, where there has been a sale of
plant propagating material to the farmer by the proprietor
of the patent or with his consent for agricultural use does
not infringe.
• There is an equitable remuneration scheme in place.

Patents Act 1977, s 60(1)(g)

Bolar exemption
(i) it consists of –
(i) an act done in conducting a study, test or trial which is necessary for
and is conducted with a view to the application of paragraphs 1 to 5
of article 13 of Directive 2001/82/EC or paragraphs 1 to 4 of article 10
of Directive 2001/83/EC, or
(ii) any other act which is required for the purpose of the application of
those paragraphs..
Patents Act 1977, s 60(5)(i)
THIRD PARTY RIGHTS
Prior user rights
Right to continue use begun before priority date
64.-(1) Where a patent is granted for an invention, a person who in the
United Kingdom before the priority date of the invention -
(a) does in good faith an act which would constitute an infringement of the
patent if it were in force, or
(b) makes in good faith effective and serious preparations to do such an act,
has the right to continue to do the act or, as the case may be, to do
the act, notwithstanding the grant of the patent; but this right does not
extend to granting a licence to another person to do the act.
(2) If the act was done, or the preparations were made, in the course
of a business, the person entitled to the right conferred by subsection
(1) may -
(a) authorise the doing of that act by any partners of his for the time being in
that business, and
(b) assign that right, or transmit it on death (or in the case of a body corporate
on its dissolution), to any person who acquires that part of the business in the
course of which the act was done or the preparations were made.
Prior use
• The use has to be in the UK;
• The act would have to constitute an infringement;
• The act needs to be in good faith;
Effective and serious preparations
• ‘The word “effective” qualifies the word “preparations”. It follows that
there must be something more than preparations to do an infringing
act. What more will depend upon the nature of the product and all the
surrounding circumstances, but in all cases the preparations must be
so advanced as to be about to result in the infringing act being done’.

• ‘The primary meanings of the word “effective” are “having an effect”

or “powerful in effect”. It will of course be a matter for a court to
determine in any given case whether the serious preparations in
question properly warrant the additional epithet “effective”. I reject …
[the] submission that it is sufficient to show that the serious
preparations, if pursued to finality, will have the requisite effect. Their
effectiveness must be measured immediately before the priority date
…’
Lubrizol v Esso Petroleum [1998] RPC 727
Effective and serious preparations
• Producing prototypes, but not having sold any by the
priority date, was not sufficient preparation as the
defendant was actually trying to produce a different non-
infringing product.
Helitune Ltd v Stewart Hughes Ltd [1991] FSR 171
• Where there have been full scale trials and a
company was preparing to go into full scale
commercial production then this is probably
sufficient to be serious and effective preparation.
Forticrete Ltd v Lafarge Roofing Ltd [2005] EWHC 3024 (Pat)
Right of prior use
• It only extends to the act that you were doing before the
priority date (so if importing cannot make).
Helitune v Stewart Hughes [1991] FSR 171
• Previous acts of importing to not extend to
disposal unless there was serious and effective
preparations to do so.
Forticrete Ltd v Lafarge Roofing Ltd [2005] EWHC 3024 (Pat)
• The right probably does not extend to making
improvements to the patented products.
Lubrizol Corpn v Esso Petroleum Co Ltd [1998] RPC 727
Innocent infringement
62 Restrictions on recovery of damages for infringement.
(1) In proceedings for infringement of a patent damages shall not be awarded,
and no order shall be made for an account of profits, against a defendant or
defender who proves that at the date of the infringement he was not aware, and
had no reasonable grounds for supposing, that the patent existed; and a person
shall not be taken to have been so aware or to have had reasonable grounds
for so supposing by reason only of the application to a product of the word
“patent” or “patented”, or any word or words expressing or implying that a
patent has been obtained for the product, unless the number of the patent or a
relevant internet link accompanied the word or words in question.
(1A)The reference in subsection (1) to a relevant internet link is a reference to
an address of a posting on the internet—
(a) which is accessible to the public free of charge, and
(b) which clearly associates the product with the number of the patent.
Other third party rights
• Reinstatement applications – s 20B
• Restored patents – s. 28A
• Resuscitated applications – s 117A
• Where it is revoked and reinstatement on appeal at the
EPO
THE END