Registering an invention as a patent is a great way to ensure intellectual property protection. It is important to understand what rights a patent owner holds regarding the right to sue for possible patent infringement.
What is a Patent?
A patent is a form of intellectual property protection, granted by the law. A patent aims to protect an individual’s exclusive right to exploit their own innovative inventions. These innovative inventions must take the form of a device, method, substance or process. Thus, patents offer protection to the patent owner by way of refraining others from manufacturing or selling the patented invention.
Only a registered patent can protect your innovative invention. For further information on what a patent is and its registration process, see ‘What is a Patent?‘.
What is Patent Infringement?
As stated above, patented inventions provide protection from unauthorised use by every person or entity, other than the patent owner. Therefore, patent infringement occurs when an unauthorised person or entity uses, sells or manufactures the patent, without to the patent owners permission. Thus, the patent owner holds the right to sue the infringing or unauthorised person or entity for their unauthorised conduct.
The Patents Act 1990 (Cth) provides all patent owner’s with the legal right to sue for patent infringement.
In order to bring legal action against potential patent infringement, the following elements must be established:
1. Patent owner holds an exclusive right:
As stated above, the patent owner has the right to exploit their own invention. Patent owners can provide others with permission to exploit their invention. Therefore, when someone exploits any invention without the owners permission, a possible infringement has occurred. Thus, the first step is to identify who the individual or entity is that is exploiting the patent without the owners permission.
2. Someone, other than the patent owner, ‘exploits’ the patent :
In order for infringement to occur a person or entity, other than the patent owner, must ‘exploited’ the patent.So, what does ‘exploit’ mean?
Well, exploit has two different definitions. The two definitions of exploit are dependant on what the patent in question is actually protecting. Accordingly:
- If the patented invention is a product: Exploit means to make, hire, sell, use, import, or otherwise offer to make, hire, sell, use or import the patented product or device.
- If the parented invention is a process or method: Exploit means to use the method or process to make, hire, sell, use, or otherwise offer to make, hire, sell, or use the patented method or process.
Thus, ‘exploit’ means any usage of the product or method.
3. The exploitation is either a Direct or Indirect Infringement:
As outlined in the two definitions of ‘exploit’, the infringing person or entity can either exploit the invention themselves, or offer the exploitation to another person or entity (a third party).
Accordingly, a direct infringement is where an unauthorised person or entity exploits the invention themselves.
A indirect infringement, also referred to as a contributory infringement, occurs when an unauthorised person or entity authorises, participants or contributes to the act of infringement. For example, unauthorised person (P) supplied the patented invention to another party for use (A), P’s act would constitute indirect infringement and A’s act would constitute direct infringement.
Remedies for Patent Infringement
Once the patent owner has proved that their patent has been infringed, the remedies available are:
- Damages – to compensate the patent owner for any losses incurred AND damages in the form of an ‘account of profits‘, i.e. to compensate the patent owner for any profits the infringing person or entity has made at the owners expense,
- Injunction – to prevent further infringement from occurring.
- An order to delivery up or destroy the infringing goods.
In order to commence proceedings for a possible patent infringement, general court procedures apply. It is always best to seek an IP solicitor to initiate proceedings and further discuss the circumstances of your infringement case.
Key Takeaways
Obtaining a patent is a great tool in protecting your invention. Once a patent is obtained, the patent owner has the exclusive rights to exploit/use the invention. However, if an unauthorised person or entity exploits the invention, an infringement may have occurred. Court proceedings can be commenced to take action against any infringing behaviour, with a range of remedies, such damages, injunctions and destruction orders being available to protect the patented invention.
