What is patent infringement?
Patent infringement can occur when someone uses an invention protected by another person’s patent without obtaining permission first. In Australia, granted patents give inventors the ability to control the use of their invention for up to 20 years (or up to 25 years for pharmaceutical patents).
What does a granted patent protect?
When considering patent infringement, it is essential to understand what a granted patent protects. A patent protects any device, substance, method or process that’s new, inventive and useful.[1]A granted patent provides its owner with exclusive control over the invention. A patent protects the specific invention described and claimed in the patent document. This can include the particular way something is made, how it works or the specific process for doing something.
For example, the Cochlear implant (a device) and polymer (plastic) bank notes (a substance) are inventions that have been protected with granted patents.
The most important part of a patent document is the statement of claims, which defines exactly what the inventor is legally protecting. A patent may contain multiple claims, each of which must be directed towards the same invention. Patent claims are written clearly and concisely to define what the invention is and what it is not. Therefore, the claims set out the boundaries of what others are not allowed to copy without the owner’s permission. For infringement to take place, a person must do or produce something that is specified in one or more of the patent claims.
When someone receives a granted patent in Australia, they are given legal rights to their invention for a specified period. These rights include the right to stop others from using their invention without permission.
How does patent infringement happen?
Where a patent is registered with IP Australia, the following combined events may constitute infringement, provided they occur during the term of protection and without the permission of the owner:
1. Someone uses the patented invention
Australian patent law gives inventors exclusive control over their patented inventions. Infringement occurs when a person uses a patented invention in a manner that only the owner is allowed to do so without permission.[2] It can happen in two ways:
When someone directly uses the patented invention. Use happens when someone:
- Makes or manufactures a product that uses the patented invention
- Uses the patented method or process
- Sells, offers to sell, or brings into Australia a product that uses the patented invention
- Uses a product that was made using the patented process.
When someone helps another to infringe the patent. This happens when someone supplies products to another person, knowing they will use those products to infringe a patent.[3]
2. Someone uses an invention covered by the patent
Infringement occurs when someone does something or produces something that includes all the features mentioned in one or more of the claims in the patent. To work out whether patent infringement has occurred, courts look at:
- What exactly is protected? They first look at the “claims” section of the patent. Claims are typically located at the end of a patent document and contain numbered statements that describe precisely which parts of the invention are protected.
- Compare with the suspected product or process. Courts examine whether the product or process includes all the essential elements described in at least one of the patent claims.
- Consider variations. Even if a product is not exactly the same as what is described in the patent, it may still infringe.[4] For example, if someone substitutes an inessential part with another, that is equivalent.
Examples of patent infringement
Acme Inc. holds a patent for a new type of solar panel that uses a specific arrangement of materials to improve efficiency. Acme has a patent granted by IP Australia. CompetitorTech begins manufacturing and selling solar panels in Australia that use the exact same arrangement of materials as described in Acme’s patent claims. This is likely a direct infringement, as CompetitorTech is making and selling a product that contains all the elements of Acme’s patent claims.
Hanka Robotics holds a patent for a mechanical device comprising components A, B, C, and D arranged in a specific way. RivalCorp produces a similar device using components A, B, and C. However, it includes a modified version of D that performs the same mechanical function. Even though RivalCorp’s device doesn’t exactly match the patent claims, it may still infringe because it performs the same function in the same way.[5]
What is not patent infringement
It is important to understand what does not constitute infringement. The Patents Act 1990 provides several situations where a patent is not infringed, including:
- Prior use. A person will not be infringing a patent if they were using the invention before the patent was filed.[6]
- Foreign vehicles passing through. Using a patented invention on foreign ships, aircraft, or vehicles that are only temporarily in Australia does not count as infringement. So long as the invention is used only for the vehicle’s own needs.[7]
- Obtaining regulatory approvals. A person will not be infringing a patent if they are using the patented invention to obtain approval for medical goods with the Therapeutic Goods Administration (TGA)[8] or other regulatory approval for non-pharmaceutical goods (e.g., agricultural chemicals).[9]
- Experimental use. A person will not infringe a patent if they are experimenting with the invention,[10] such as determining the properties of the invention, the legal scope of protection for the invention, improving or modifying the invention, assessing the legality of the patent, or evaluating whether the patent has been infringed.[11]
Navigating patent infringement can be complex and often requires legal expertise. Experts can help work out exactly what a patent protects. They can interpret the legal language in the patent claims. Additionally, for infringement to happen, the patent must be legally valid. Patents can be challenged if, for example, the invention is not new or innovative. An expert can help navigate these issues and provide advice. This guide provides a starting point, but qualified professionals should assess specific cases.
[1] Patents Act 1990 (Cth) s 18.
[2] Ibid s 13.
[3] Ibid s117(1).
[4] Populin v HB Nominees Pty Ltd (1982) 59 FLR 37.
[5] See Fisher & Paykel Healthcare Pty Ltd v Avion Engineering Pty Ltd (1991) 103 ALR 239.
[6] 1990 Act (no 1) s 119.
[7] Ibid s 118.
[8] Ibid s 119A.
[9] Ibid s 119B.
[10] Ibid s 119C(1).
[11] Ibid s 119C(2).