PATENT INFRINGEMENT

Patent Infringement Lawyer | Alex McDonald | Intellectual Property Lawyer

Patents protect inventions. They give a monopoly in the underlying inventive concept of a product or a process to the patent owner.Patent Infringement Lawyer

Granting a patent is a form of state patronage to encourage creation and disclosure of inventions. The Crown offers a 20 year monopoly for the disclosure to the public by way of the patents register of inventions that are otherwise secret. After 20 years the monopoly expires and the public can make full and free use of the invention.

A patent is essentially a negative right. It gives the owner the right to exclude others from the market.

As with registered designs the owner of the invention has to assess whether the benefits of a 20 year monopoly outweigh the cost of disclosing the invention and of pursuing patent protection. Sometimes the answer is difficult as where a secret process which cannot be reverse engineered it may be protected by trade secret law.

A patent application must be filed before the invention is commercially used or publically disclosed.

Patents cover a wide range of subject matter. Mechanical or electrical devices are commonly patented. In New Zealand examples of apparatus that have been the subject of patent litigation include ear tag applicators, saw mills, milking equipment, cell phone interfaces, herbicides, plumbing fittings. A method of manufacture is patentable. Examples include a method of growing black pearls, a kiwi fruit peeling process and a method of tenderising meat by injecting live animals. A method of treating animals or plants is patentable but a method of medical treatment of humans is not.

At a conceptual level there are three basic requirements for a valid patent in most countries. The claimed inventions must be new and inventive; it can’t be obvious and it must be useful. These basic requirements find their voice in patent litigation in New Zealand where those basic issues can be raised in opposition or revocation proceedings.

There is a detailed procedure that needs to be followed in order to obtain a registered patent. There is also a procedure under the Patent Co-Operation Treaty or PCT by which a New Zealand applicant for a patent can file a PCT application designating numerous countries in which the application wants patent protection within 12 months of filing the New Zealand patent application.

Patent litigation is technical, detailed, involving expert evidence and twists and turns including revocation actions.

The usual procedure in New Zealand patent litigation is for the owner of the patent, company A to bring proceedings alleging infringement against company B. Company B will then deny that their product infringes the claims but will also deny infringement on the basis that the patent claims are invalid. It is usual for company B to file a counterclaim seeking revocation of the patent, the subject of the litigation.

MAIN REVOCATION GROUNDS

a) Prior publication/not new on the basis of what is known

One of the main grounds is that the invention has either already been made known to the public by the patent applicant or someone else. In other words the invention has already been invented.

With some exceptions, a single instance of public prior use of the invention the subject of the application before the application is made is sufficient to invalidate a patent.

b) Obviousness

A patent can be opposed on the ground that it is obvious and does not involve an inventive step. Often patent litigation centers around whether the inventive step said to be contained in the patent is really inventive or if it is just an obvious variation. An invention may be obvious if it was recognised as something that was at least worth trying.

Combining known concepts which in combination each perform their known functions won’t provide an independent invention to sustain a patent and leaves the pace and vulnerable to revocation.

What does a patent look like?

Patents tend to be lengthy documents beginning with a background description of the field in which the invention is used followed by a long description of the invention culminating in a series of claims. Attached to the patent are a series of drawings.

In a reasonably straightforward mechanical patent for a head massaging device the full patent is 15 pages long. Claim 1 is always the broadest claim. It sets out line by line the scope of the patent. A patent is infringed by a competitor who manufacturers or sells a competing product that has those same features that are set out in the claims.

If you are ever looking at a patent, look at the claims first. They will tell you the scope of the monopoly.

Remedies

The remedies for patent infringement are the same for those under registered trade marks and registered designs namely:

  • An injunction to stop infringing activity
  • Damages or an account of profits
  • Delivery up of infringing items.

Groundless threats

Groundless threats can be a trap for young players. The provision is unusual and the result is that in patent litigation letters before action tend to be more polite that one sent in cases alleged trade mark or copyright infringement. Patent letters before action typically bring to the attention of the recipient the terms of the patent but do not make threats of court action in the first instance.

 

PATENT INFRINGEMENT

Patent Infringement Lawyer

Patent Infringement Lawyer | Alex McDonald | Intellectual Property Lawyer

Patents protect inventions. They give a monopoly in the underlying inventive concept of a product or a process to the patent owner.

Granting a patent is a form of state patronage to encourage creation and disclosure of inventions. The Crown offers a 20 year monopoly for the disclosure to the public by way of the patents register of inventions that are otherwise secret. After 20 years the monopoly expires and the public can make full and free use of the invention.

A patent is essentially a negative right. It gives the owner the right to exclude others from the market.

As with registered designs the owner of the invention has to assess whether the benefits of a 20 year monopoly outweigh the cost of disclosing the invention and of pursuing patent protection. Sometimes the answer is difficult as where a secret process which cannot be reverse engineered it may be protected by trade secret law.

A patent application must be filed before the invention is commercially used or publically disclosed.

Patents cover a wide range of subject matter. Mechanical or electrical devices are commonly patented. In New Zealand examples of apparatus that have been the subject of patent litigation include ear tag applicators, saw mills, milking equipment, cell phone interfaces, herbicides, plumbing fittings. A method of manufacture is patentable. Examples include a method of growing black pearls, a kiwi fruit peeling process and a method of tenderising meat by injecting live animals. A method of treating animals or plants is patentable but a method of medical treatment of humans is not.

At a conceptual level there are three basic requirements for a valid patent in most countries. The claimed inventions must be new and inventive; it can’t be obvious and it must be useful. These basic requirements find their voice in patent litigation in New Zealand where those basic issues can be raised in opposition or revocation proceedings.

There is a detailed procedure that needs to be followed in order to obtain a registered patent. There is also a procedure under the Patent Co-Operation Treaty or PCT by which a New Zealand applicant for a patent can file a PCT application designating numerous countries in which the application wants patent protection within 12 months of filing the New Zealand patent application.

Patent litigation is technical, detailed, involving expert evidence and twists and turns including revocation actions.

The usual procedure in New Zealand patent litigation is for the owner of the patent, company A to bring proceedings alleging infringement against company B. Company B will then deny that their product infringes the claims but will also deny infringement on the basis that the patent claims are invalid. It is usual for company B to file a counterclaim seeking revocation of the patent, the subject of the litigation.

MAIN REVOCATION GROUNDS

a) Prior publication/not new on the basis of what is known

One of the main grounds is that the invention has either already been made known to the public by the patent applicant or someone else. In other words the invention has already been invented.

With some exceptions, a single instance of public prior use of the invention the subject of the application before the application is made is sufficient to invalidate a patent.

b) Obviousness

A patent can be opposed on the ground that it is obvious and does not involve an inventive step. Often patent litigation centers around whether the inventive step said to be contained in the patent is really inventive or if it is just an obvious variation. An invention may be obvious if it was recognised as something that was at least worth trying.

Combining known concepts which in combination each perform their known functions won’t provide an independent invention to sustain a patent and leaves the pace and vulnerable to revocation.

What does a patent look like?

Patents tend to be lengthy documents beginning with a background description of the field in which the invention is used followed by a long description of the invention culminating in a series of claims. Attached to the patent are a series of drawings.

In a reasonably straightforward mechanical patent for a head massaging device the full patent is 15 pages long. Claim 1 is always the broadest claim. It sets out line by line the scope of the patent. A patent is infringed by a competitor who manufacturers or sells a competing product that has those same features that are set out in the claims.

If you are ever looking at a patent, look at the claims first. They will tell you the scope of the monopoly.

Remedies

The remedies for patent infringement are the same for those under registered trade marks and registered designs namely:

  • An injunction to stop infringing activity
  • Damages or an account of profits
  • Delivery up of infringing items.

Groundless threats

Groundless threats can be a trap for young players. The provision is unusual and the result is that in patent litigation letters before action tend to be more polite that one sent in cases alleged trade mark or copyright infringement. Patent letters before action typically bring to the attention of the recipient the terms of the patent but do not make threats of court action in the first instance.

Patent Infringement Lawyer | Alex McDonald | Intellectual Property Lawyer