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ausip:patent-infringement [2018/12/17 04:56]
127.0.0.1 external edit
ausip:patent-infringement [2019/02/25 13:12] (current)
jessiej_87
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 ### Exclusive Rights of Patentee ### Exclusive Rights of Patentee
-The patentee has the right to ‘exploit’ the invention. ((s13(1) )) '​Exploit'​ is defined in Schedule 1 to mean:+The patentee has the right to ‘exploit’ the invention. ((s 13(1) )) '​Exploit'​ is defined in Schedule 1 to mean:
  
 * In relation to a product: ‘to make, use, sell or otherwise dispose of the product’ or offer to do so, or ‘import it or keep it for the purpose’ of doing so;  * In relation to a product: ‘to make, use, sell or otherwise dispose of the product’ or offer to do so, or ‘import it or keep it for the purpose’ of doing so; 
 * In relation to a process/​method:​ to use the process. ​ * In relation to a process/​method:​ to use the process. ​
  
-The rights granted to a patentee are considered personal property. ((s13(2) )) +The rights granted to a patentee are considered personal property. ((s 13(2) )) 
  
-###​Ownership +### Ownership 
-Ownership, within s6 of the *Statute of Monopolies* traditionally referred to the ‘first and true inventor’,​ which included the person who first introduced the invention into the realm. ((E//​dgeberry v Stephens* (1693)// 2 Salk 447)) This definition of ownership is not the case today. Pursuant to the //Patents Act 1990// (Cth), an inventor has a right to apply for a patent, but a person can also acquire rights to an invention. Rights can be acquires through the course of employment or by purchasing the right. ((s15)) Mere importation is no longer sufficient to apply for a patent.+Ownership, within s6 of the *Statute of Monopolies* traditionally referred to the ‘first and true inventor’,​ which included the person who first introduced the invention into the realm. ((E//​dgeberry v Stephens* (1693)// 2 Salk 447)) This definition of ownership is not the case today. Pursuant to the //Patents Act 1990// (Cth), an inventor has a right to apply for a patent, but a person can also acquire rights to an invention. Rights can be acquires through the course of employment or by purchasing the right. ((s 15)) Mere importation is no longer sufficient to apply for a patent.
  
-There can be joint inventors of a patent. ((s31)) Joint inventors take the patent as tenants in common ((s16(1)(a) )) Each is entitled to work the invention without accounting to the others ((s16(1)(b) )) However, all joint inventors must consent to the grant of a licence or assignment of an interest. (s16(1)(c) )) The  Commissioner of Patents will be engaged to resolve instances of dispute between co-owners of a patent. ((s17))+There can be joint inventors of a patent. ((s 31)) Joint inventors take the patent as tenants in common ((s 16(1)(a) )) Each is entitled to work the invention without accounting to the others ((s 16(1)(b) )) However, all joint inventors must consent to the grant of a licence or assignment of an interest. (s 16(1)(c) )) The  Commissioner of Patents will be engaged to resolve instances of dispute between co-owners of a patent. ((s 17))
  
  
-**Video overview by Taylor Lennox on[When the rights to an invention will be owned by an employer](youtube>mF5DzTcqB4k).**+**Video overview by Taylor Lennox on[When the rights to an invention will be owned by an employer](https://​www.youtube.com/​watch?​v=mF5DzTcqB4k).**
  
  
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 ## Ownership and Exploitation:​ Assignment and Licensing ​ ## Ownership and Exploitation:​ Assignment and Licensing ​
  
-###​Assignment +### Assignment 
-Patents are considered personal property. ((s13(2) )) The rights conferred to a patent owner/s are the exclusive rights to exploit the invention.((s13)) Patents can be bought, sold, traded, assigned or licensed. An assignment must be in writing signed by or on behalf of the assignor and assignee. ((s14(1) )) A patent may be assigned for a place in, or part of, the patent area. ((s14(2)) The patent right can be divided up geographically (e.g. in different states in Australia). ​+Patents are considered personal property. ((s 13(2) )) The rights conferred to a patent owner/s are the exclusive rights to exploit the invention.((s 13)) Patents can be bought, sold, traded, assigned or licensed. An assignment must be in writing signed by or on behalf of the assignor and assignee. ((s 14(1) )) A patent may be assigned for a place in, or part of, the patent area. ((s 14(2)) The patent right can be divided up geographically (e.g. in different states in Australia). ​
  
 There is a possibility of unregistered equitable interests in a patent. ((//Stack v Brisbane City Council// (1996) 35 IPR 297 at 299; ss 189(3) and 196(b)(ii)) Pursuant to s 189(3), in some instances, "​equities in relation to a patent may be enforced against the patentee except to the prejudice of a purchaser in good faith for value"​. There is a possibility of unregistered equitable interests in a patent. ((//Stack v Brisbane City Council// (1996) 35 IPR 297 at 299; ss 189(3) and 196(b)(ii)) Pursuant to s 189(3), in some instances, "​equities in relation to a patent may be enforced against the patentee except to the prejudice of a purchaser in good faith for value"​.
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 The assignment sale of patent right gives the  assignee rights to the patent. Once complete, the assignee owns the patent and the assignor has no residual rights. The details of the assignment must be recorded on the patent register.  ​ The assignment sale of patent right gives the  assignee rights to the patent. Once complete, the assignee owns the patent and the assignor has no residual rights. The details of the assignment must be recorded on the patent register.  ​
  
-###​Licenses +### Licenses 
-License provide permissions for others to make use of the patent. ​ For patents owned jointly, all co-owners must consent the grant of a licence. ((s16(1)(c) )) Licences do not need to be in writing (but should be for evidentiary reasons)). Licences should be registered. ((ss187, 195, 196)) Licences can be contractually supported by consideration and for a particular term or can be bear licences determined by will of the licensor. ​+License provide permissions for others to make use of the patent. ​ For patents owned jointly, all co-owners must consent the grant of a licence. ((s 16(1)(c) )) Licences do not need to be in writing (but should be for evidentiary reasons)). Licences should be registered. ((ss 187, 195, 196)) Licences can be contractually supported by consideration and for a particular term or can be bear licences determined by will of the licensor. ​
  
-A licensee may terminate the licence agreement even if it is still in force at the time the patent expires. ((s145))+A licensee may terminate the licence agreement even if it is still in force at the time the patent expires. ((s 145))
  
  
  
-**Video overview by David Taylor on[Commercialisation and licensing of inventions](youtube>EUUHq8PsKSQ).**+**Video overview by David Taylor on[Commercialisation and licensing of inventions](https://​www.youtube.com/​watch?​v=EUUHq8PsKSQ).**
  
  
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 Licence may be exclusive, sole or non-exclusive. Licence may be exclusive, sole or non-exclusive.
  
-* Exclusive licence granted to one perons ​who can exploit to exclusion of all others including patentee. ​+* Exclusive licence granted to one persons ​who can exploit to exclusion of all others including patentee. ​
 * Sole licence like exclusive but patentee can still use.  * Sole licence like exclusive but patentee can still use. 
 * Non-exclusive licences are a licence to more than one person and patentee can still exploit. Non-exclusive licences may be limited by geography, duration, purpose, scope, field of industry, etc. * Non-exclusive licences are a licence to more than one person and patentee can still exploit. Non-exclusive licences may be limited by geography, duration, purpose, scope, field of industry, etc.
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 There can also be implied licences, for example a purchaser'​s right to use a patented product, or a purchaser'​s right to repair a patented product. Such uses will not breach the patent. There can also be implied licences, for example a purchaser'​s right to use a patented product, or a purchaser'​s right to repair a patented product. Such uses will not breach the patent.
  
-Compulsory licences also exist under the //Act//. A court application is required to evoke compulsory licenses. These arise where a patentee has failed to exploit the patent in the patent territory. ((ss133(2), 135 and 144))+Compulsory licences also exist under the //Act//. A court application is required to evoke compulsory licenses. These arise where a patentee has failed to exploit the patent in the patent territory. ((ss 133(2), 135 and 144))
  
 **Exclusive Licences** **Exclusive Licences**
  
-An exclusive licensee may commence infringement proceedings. ((s120(1) )) The licensee must join the patentee as a party as co-plaintiff (joint legal representation) or as a defendant. ((s120(2) )) +An exclusive licensee may commence infringement proceedings. ((s 120(1) )) The licensee must join the patentee as a party as co-plaintiff (joint legal representation) or as a defendant. ((s 120(2) )) 
  
 An exclusive licensee means a licensee under a licence granted by the patentee and conferring on the licensee, or on the licensee and persons authorised by the licensee, the right to exploit the patented invention throughout the patent area to the exclusion of the patentee and all other persons. ((*Ex parte British Nylon Spinners* (1963) 109 CLR 336)) An exclusive licensee means a licensee under a licence granted by the patentee and conferring on the licensee, or on the licensee and persons authorised by the licensee, the right to exploit the patented invention throughout the patent area to the exclusion of the patentee and all other persons. ((*Ex parte British Nylon Spinners* (1963) 109 CLR 336))
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 ## Infringement ​ ## Infringement ​
 +
 Patent infringement proceedings are outlined in s120 of the //Act//. Proceedings can be commenced by a patentee or exclusive licensee, although an exclusive licensee must join the patentee as a defendant or plaintiff. ((s120(2))) '​Infringement'​ is not defined by the //Act// however is considered to occur when a person exercises one of the exclusive rights of the patentee without their consent. The concepts of knowledge and intent are not elements of patent infringement. Infringement depends purely on whether a person other than the patentee, licensee or someone authorised is exploiting the exclusive rights of the patentee. Patent infringement proceedings are outlined in s120 of the //Act//. Proceedings can be commenced by a patentee or exclusive licensee, although an exclusive licensee must join the patentee as a defendant or plaintiff. ((s120(2))) '​Infringement'​ is not defined by the //Act// however is considered to occur when a person exercises one of the exclusive rights of the patentee without their consent. The concepts of knowledge and intent are not elements of patent infringement. Infringement depends purely on whether a person other than the patentee, licensee or someone authorised is exploiting the exclusive rights of the patentee.
  
-As noted previously, the exclusive rights of the patentee are to exploit the invention; including using, selling or making the invention ((s13, Sch 1)). These exclusive rights commence on publication of the complete specification. ((s57(1) )) Infringement proceedings can only be commenced once the patent is granted. ((s57(3) ))+As noted previously, the exclusive rights of the patentee are to exploit the invention; including using, selling or making the invention ((s 13, Sch 1)). These exclusive rights commence on publication of the complete specification. ((s 57(1) )) Infringement proceedings can only be commenced once the patent is granted. ((s 57(3) ))
  
-Proceedings must be started within the later of 3 years of the patent being granted, or 6 years from the date of the infringing act.  ((s120(4) ))+Proceedings must be started within the later of 3 years of the patent being granted, or 6 years from the date of the infringing act.  ((s 120(4) ))
  
-###Test for Infringement +### Test for Infringement 
-The test for infringment ​is whether all essential integers (elements) of the patent have been taken - this is a question of fact. ((*Rodi & Wienenberger AG v Henry Showell Ltd*)) A literal interpretation of the patent claims will not always suffice. ((*Populin v HB Nominees Pty Ltd*)) This is known as the 'pith and marrow'​ (purposive) approach.+The test for infringement ​is whether all essential integers (elements) of the patent have been taken - this is a question of fact. ((*Rodi & Wienenberger AG v Henry Showell Ltd*)) A literal interpretation of the patent claims will not always suffice. ((*Populin v HB Nominees Pty Ltd*)) This is known as the 'pith and marrow'​ (purposive) approach.
  
 #### Pith and Marrow  ​ #### Pith and Marrow  ​
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 Section 119B applies to obtaining regulatory approval of non-pharmaceuticals (eg agricultural chemicals, medical devices etc.) Section 119B applies to obtaining regulatory approval of non-pharmaceuticals (eg agricultural chemicals, medical devices etc.)
  
-###​Experimental Use Exemption +### Experimental Use Exemption
- +
-Section 119C of the //Act// was introduced with the Raising the Bar amendments. This section outlines experimental use of the patent.  ​+
  
-**Video overview by Harry Jobberns on[Experimental ​use](youtube>​Sa4SLDHj4XI).** +Section 119C of the //Act// was introduced with the Raising the Bar amendments. This section outlines experimental ​use of the patent.
  
 **Video overview by Sophie Williams on[Experimental use](https://​voice.adobe.com/​a/​erG6B).** ​ **Video overview by Sophie Williams on[Experimental use](https://​voice.adobe.com/​a/​erG6B).** ​
  
  
-####Section 119 C+#### Section 119 C
  
 * (1) a person may do an act that would otherwise amount to an infringement of the patent, if the act is done for experimental purposes relating to the subject matter of the invention (scientific research, unfortunately this experimental use exemption is narrow and doesn’t relieve may concerns raised). ​ * (1) a person may do an act that would otherwise amount to an infringement of the patent, if the act is done for experimental purposes relating to the subject matter of the invention (scientific research, unfortunately this experimental use exemption is narrow and doesn’t relieve may concerns raised). ​
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 Remedies for infringement are contained in ss 122 and 123.  A court may grant an injunction (on any terms the court deems fit) or, at the option of the plaintiff, either damages or an account of profits. Remedies for infringement are contained in ss 122 and 123.  A court may grant an injunction (on any terms the court deems fit) or, at the option of the plaintiff, either damages or an account of profits.
  
-The court may order infringing articles to be delivered up for destruction or issues Anton Piller orders (to preserve evidence). The court may "​refuse to award damages, or to make an order for an account of profits, in respect of an infringement of a patent"​ if the infringement is considered an innocent infringement. ((s123(1) ))+The court may order infringing articles to be delivered up for destruction or issues Anton Piller orders (to preserve evidence). The court may "​refuse to award damages, or to make an order for an account of profits, in respect of an infringement of a patent"​ if the infringement is considered an innocent infringement. ((s 123(1) ))
  
-###Other Remedies+### Other Remedies
  
-A non-infringment declaration can be awarded. ((ss125-127)) These remedies can only be sought in respect of specified granted patents or certified innovation patents. ((s125(2) )) The patentee must be joined as a respondent to these proceedings. ((s125(3)) The applicant must first notify the patentee with full written particulars of the use or proposed use, and patentee must fail to admit that the use would not infringe before bringing non-infringement declaration (designed to prevent non-essential litigation). ((s126)) A potential defendant can approach the court to seek a declaration if their actions don’t infringe a registered patent. ​+A non-infringment declaration can be awarded. ((ss 125-127)) These remedies can only be sought in respect of specified granted patents or certified innovation patents. ((s 125(2) )) The patentee must be joined as a respondent to these proceedings. ((s 125(3)) The applicant must first notify the patentee with full written particulars of the use or proposed use, and patentee must fail to admit that the use would not infringe before bringing non-infringement declaration (designed to prevent non-essential litigation). ((s 126)) A potential defendant can approach the court to seek a declaration if their actions don’t infringe a registered patent. ​
  
-A counterclaim for revocation of the patent can be brought by the alleged infringer. ((s121))  A respondent may allege a patent is not valid and ask for revocation of the patent. This is available since the validity of patent is not guaranteed. ((s20)) A patentee whose claims survive a challenge to their validity in litigation may apply for a certificate of validity pursuant to s19. The certificate outlines that the claim has been challenged and survive. This can be used in the future – and provides a judge further opportunity to grant an order for costs. ​+A counterclaim for revocation of the patent can be brought by the alleged infringer. ((s 121))  A respondent may allege a patent is not valid and ask for revocation of the patent. This is available since the validity of patent is not guaranteed. ((s 20)) A patentee whose claims survive a challenge to their validity in litigation may apply for a certificate of validity pursuant to s 19. The certificate outlines that the claim has been challenged and survive. This can be used in the future – and provides a judge further opportunity to grant an order for costs. ​
  
  
-**Video overview by Jack Longley on[Section 19 certificates ​of validity](youtube>7Z9mED6DEYE).**+**Video overview by Jack Longley on[Section 19 Certificates ​of Validity](https://​www.youtube.com/​watch?​v=7Z9mED6DEYE).** ​
  
  
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 #### Access to Medicine #### Access to Medicine
  
-**Video overview by Tess Van Geelan on[The Doha Declaration and global access to medicines](youtube>1niAYHEPmmY).**+**Video overview by Tess Van Geelan on[The Doha Declaration and global access to medicines](https://​www.youtube.com/​watch?​v=1niAYHEPmmY).**
  
  
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