PATENTS

1
Twelve-player circular chess

What is a patent?
• A legal title which grants the holder
• the exclusive right to prevent others from
 making, using or offering for sale, selling or
importing a product that infringes his patent
without his authorisation
• for a limited time (up to 20 years (TRIPS);
20Years (Patents Act 2023); 16 years
(Patents & Designs Act 1911)).
• In return for this protection, the holder has to
disclose the invention to the public.
Reveal exclusivity (patent)
invention (disclosure)

Patents are granted in

Get
nearly
every country in the world!
Patent applicant Public

What exactly can be

patented? Patents protect inventions which solve technical
problems:
▪ processes, methods, ▪ products,
▪ chemical substances, uses devices, systems
pharmaceuticals

For an invention to be patented, it must

usually be
✓ new to the world (i.e. not available to the public
anywhere in the world)
✓ inventive (i.e. not an "obvious" solution), and
✓ susceptible of industrial application

In most countries, patents are not

granted for
business methods or rules of
games as such, or for
methods of treatment, diagnostics and surgery on
the human or animal body.
Rights conferred by patents
• Right to prevent others from making, using, offering
for sale, selling or importing infringing products in
the country where the patent was granted

Exception: non-commercial
purposes (private use, academic
research)

• Right to assign, sell or license these

rights

These rights belong to

the patent holder.
What is a patent?
 • Does a patent give you the right to

exploit an invention? - NO!

• A patent is a negative right.

It gives you the right to prevent others from exploiting the invention.
It is not an enabling right.
Patent A:
• Patents owned by others may Electric kettle
overlap or encompass your own patent.
-> Seek a licence before commercialising Your patent B: Electric kettle with
ceramic heating elements
For example:
What do patent documents look like?

Date of
publication
Date of
filing

Applicant

Abstract
Application number
Technical class
Inventor

Claim(s)

Description Drawing(s)
 9

What does the description contain?

• Prior art
• teapot with one
spout
• Drawback of prior
art
• time-consuming
• Problem to be
solved
• reduce filling
time for multiple cups
• Solution
• provide a second spout
• Advantage of the invention
 • filling time is reduced

Patent: Sec 2(11) of Patents And Designs

Act, 1911

• Patent is a document issued by the government under the provisions

of the Patent and Design Act
Patent: Sec 2(11) of Bangladesh Patent
Act, 2023

• a "patent" is defined as the right granted for an invention {S 2(11)}.

• The Act further elaborates on the nature of this right in Section 25,
which outlines the rights of a patentee. Upon the grant of a patent,
the patentee acquires the exclusive right to prevent third parties from
commercially exploiting the patented invention without
authorization. This includes acts of making, using, offering for sale,
selling, or importing the invention.
What is Patent
• A patent may be understood as a monopoly right over the
commercial exploitation of an invention, granted for a limited time
(i.e. 20 years).
Objectives of the patent
system • To encourage technological
innovation

• To promote competition and investment

• To provide information on the latest technical developments

• To promote technology transfer

Invention: Sec 2(8) of of Patents And

Designs Act, 1911
“Invention” means any manner of new manufacture and includes
an improvement and an alleged invention [ s 2(8)].
Invention: Sec 2(6) of Bangladesh Patent
Act, 2023
“Invention” means a new product or process which involves an
inventive step and is applicable in industry and is not incompetent to
be patentable under this Act [ s 2(6)].
Patentability
• The requirements for patentability
 • Must be patentable subject matter; and
• Must be in recognised category
• Invention must be new and novel; and
• Cant have been disclosed before
• Must involve an inventive step; and
• Must be non-obvious progression
• Useful in industry; and
• Must be of practical utility
• Invention must be clearly disclosed.
• Ties back to public benefit.
• Public gets access to products and processes, and increases the store of public knowledge.

Patentable Subject Matter

• Patentable subject matter is established by statute, and is usually
defined in terms of the exceptions to patentability, the general rule
being that patent protection shall be available for inventions in all
fields of technology (see Article 27.1 of the TRIPS Agreement).
Excluded Subject Matter – Patent Ineligible Matter
• Fundamental principles, abstract ideas, phenomena of nature
• Not patentable because they already exist in the natural world, already known, not new
• Patent law is about inventing stuff, not discovering stuff
• Solely artistic creations
• Object of patent law is to address the ‘useful arts’ rather than ‘fine arts’
• Literature, sculpture, pictures etc outside the realm of patent law.
• Principles, theories or mathematical models
• E = mc2
• Just an idea, just a theory, just a discovery
• Mere discoveries
• human DNA etc
• Mere ideas
• That are not reduced to a specific practical application

• *See art 27.3 of TRIPS

Bangladesh Patent Act, 2022
Repealed Patent and Designs Act, 1911
• Matters outside the Patent protection (s. 5).

Discoveries, scientific theories and mathematical methods; business

practices, sports rules, computer programs.
Therapeutic and diagnosing methods, agricultural or horticultural
practices, inventions from traditional knowledge, inventions contrary to
public health or morality.
Literary, dramatic, musical or artistic works or works of any aesthetic
nature, film works and dramas broadcast on radio or television.
Bangladesh Patent Act, 2023
Repealed Patent Act, 2022
• Matters outside the Patent protection (s. 6).
 Discoveries, scientific theories and mathematical methods; business
practices, sports rules, computer programs.
Therapeutic and diagnosing methods, agricultural or horticultural
practices, inventions from traditional knowledge, inventions contrary to
public health or morality, frivolous invention, reproductions of known
inventions.
• S 7- Atomic energy
Patentable subject matter: Patentable Inventions
• Overview #1
• Patentable subject matter is one of the requirements to obtain a patent.
This requirement is commonly considered to be a low-threshold
requirement.
• In general, there are four external requirements: (i) patentable subject
matter, (ii) novelty, (iii) inventive step, and (iv) industrial applicability. In
addition, there are two internal requirements: (a) sufficiency of disclosure,
and (ii) claims are “clear and concise”.
Patentable subject matter: Patentable Inventions

• Overview #2
• Regarding the patentibilty, there are two questions. The first question is
whether or not the subject matter is an invention (exclusion), and the second
question is whether the invention is excepted from patentability (exceptions).
• Exclusion: Some subject matter is not “an invention” (s 2(6)) • Exceptions:
Some subject matter is an invention, but excepted (ss. 6 and 7)
• Specific exclusions: discoveries, theories, mathematical methods, aesthetic
creations and presentation of information are specifically excluded from
patentable inventions.
Overview #1

Patent
eligible?

Patentable?
Overview #2
• No positive definition or list of ‘inventions’
“How, then, does the law define what is an ‘invention’? The
answer is that nobody has ever come up with a satisfactory all
embracing definition and I do not suppose anybody will.”
 Deputy Judge Prescott QC in
CFPH’s Application [2005]
• Different approaches:
•US case law: ‘anything made by man under the Sun’ but not claims directed at abstract principles (eg algorithms) or natural
phenomena, unless the claim includes significantly more (making it narrower).

•1623 to 1977: any ‘manner of new manufacture’ provided it is ‘not generally inconvenient’ (open-textured concept; still applies
in Aust patent legislation)

• 1977: list of things that “shall not be regarded as inventions”

Bangladesh approaches:
▪ 1911 to 2022: any manner of new manufacture including improvement

▪ 2022: Any idea of an inventor relating to a product or process, which is helpful in solving a specific technical problem

▪ 2023: a new product or process which involves an inventive step and is applicable in industry and is not incompetent to be patentable under this Act

Examples of potentially affected industries

• Computer industry: eg software innovations, ‘apps’

• Potentially relevant exclusions:
• “program for computers”;
• “mathematical methods”;
• ”presentations of information”
• Biotech industry: eg DNA, RNA, bacteria, bio-signals, methods for splicing and editing, breeding
• “Discoveries”
 • “scientific theories”
• Pharmaceutical industry: “discoveries” of natural compounds, associated “scientific theories”
• Financial industry: eg algorithms for trading, automated transactions (eg auctions), crypto currency
• “methodsfor performing mental acts”;
• “methodsfor doing business”
• “schemes”
• Business entrepreneurs: eg eBay, calling cards, well being apps and fit-bits)
• “methods of doing business”
• Video/TV/phone/gaming industries: screen interfaces, inventive storylines/interactive interfaces (eg touch screens, virtual gaming), simulators •
“presentations of information”
• “methodsfor playing games”
• “aesthetic creations”
• “methodsfor doing business”

Hybrid Claims??

Subject matter that straddles patentable and non-patentable subject matter. Hybrid

claims. • is any sort of straddling ok?

• Computer program that washes ‘delicates’ better

• Washing machine with a better cycle for washing delicates [which is based on a new computer program]

• should the invention be analysed as a whole or stripped down?

• Whole approach: take the claim as written, and consider if full claim excluded

• Stripped approach: strip out all the bits and see what you have left in the claim

• “Technical contribution approach” – Four step

test • Aerotel v Telco [2007] RPC (7), [40]
• (1) construe claim;
• (2) identify “actual contribution” (what has the inventor really added to human knowledge);
• (3) consider whether the ‘actual contribution’ falls solely in excluded field; • (4) check
whether contribution is “actually technical in nature”
• Symbian and Lantana confirmed Aerotel approach
• HTC Europe v Apple: Aerotel appropriate and binding but 4 step analysis not strictly
necessary.

• If inventor’s actual contribution is entirely non-technical then it is not

regarded as patentable.
Application of test to facts in Aerotel

• (1) Telephone exchange for operating phones with

a prepaid calling card (business method) • (2) Actual
 contribution = a special exchange system sitting
‘above’ local and public exchanges • (3) The
contribution – the special exchange system – falls
outside exempted categories • (4) Yes, Aerotel’s
contribution was technical

HTC Europe Ltd v Apple Inc [2013]

Apple patented a "system and method for performing an action on a

structure in computer-generated data“. The high court had decided that
the patent was invalid. The Court of Appeal overturned the decision.
Lord Justice Kitchin was of the view that "the judge took his eye off the
ball in focussing on the fact that the invention was implemented in
software and in so doing failed to look at the issue before him as a
matter of substance not form. Had he done so he would have found
that the problem and its solution are essentially technical in nature and
so not excluded from patentability."

Continued….

Lord Justice Lewison surmised the situation thus "we now ignore the
words "computer program….as such" and instead concentrate on
whether there is a technical function".
Thomas Edison's Patent Application for the
Light Bulb (1880)

On January 27, 1880, Thomas Edison

 received the historic patent embodying the
principles of his incandescent lamp that
paved the way for the universal domestic use
of electric light.

The Patent Office granted Thomas Edison a

patent for his "electric-lamp." Edison's patent
was an improvement on electric lamps, not the
invention of them; but because of Edison’s
design changes and the materials he
used—such as a carbon filament— his patent
allowed for an electric lamp that was reliable,
safe, and practical
Novelty
[Link] invention will be novel if it has not been disclosed to the public
through prior publication or use.
 [Link] determine:
i. Compare the invention and products or processes that have already been
disclosed through prior publication or use
1. Comparison is with the “prior art base” as it existed immediately before the priority date
a. Prior art base = information publicly available anywhere in the world
2. prior publications = books, leaflets, websites, advertisements, etc
3. prior use = anything that can be observed by the public

❖ Examples of “prior art” = published books/journals/brochures, published design

representations, published patent specifications.
Sec 2 (8) "prior art" means prior to the date of priority the information relating to the
invention in any part of the world by visible or indirect disclosure, display, or use by any
means, public or otherwise, written, oral or otherwise; to be revealed by means
• Three-step test for novelty: (1) what is the invention, (2) what is the state of the art? (what is
publicly available?) (3) does the invention form part of the state of the art? (Comparison)

• In order to qualify for an invention to be patentable, it must be new or novel {Article 27(1)
of TRIPS}. This is known as “Novelty”.

• “Novelty” means an invention will not be visible to the public and will not form part of prior
knowledge either by disclosure, prior use, demonstration, written, oral or in other means. In
addition to this, the invention will not have one or more elements from the approved patent or
disclosed patent applications {s. 2 (10)}.
• The information must not be available to the public before the priority date. While the
priority date is normally the date on which an application was filed, in some cases the priority
date is earlier {priority period shall be 12 (twelve) months and the said period shall be
counted from the first date of submission of the application: s 5 of the Act 2023}.
art • State of the art =
When is an Keep your invention confidential until
you have filed your
invention "new"? • application!

When it is not part of the state of the

everything made available to the public before the date of
 filing

Patent
application

State of the art

Date of filing Year

2017 2018 2019 2020 2021 2022 2023

12

Step 2: State of the art

Prior art includes…
• Prior written disclosure in any sort of documents, however
obscure • Published patents, documents
• All languages
 • Even a book in Sanscrit mis-shelved in library

• Also prior non-documentary disclosure

• E.g. a prototype being trialled
• E.g. a lecture
• E.g. article available for purchase
• In practice, will require higher standard of proof that something was actually previously
used
37

Acts prejudicing novelty

❖Inventor may make the invention publicly available (ie. destroy
novelty) by:
➢Giving away a sample (Fomento Industrial v
Mentmore Manufacturing);
➢Publishing a photo in a magazine (Windsurfing Int v
 Petit); ➢Agreeing to sell products of the invention (Re
Wheatley’s Application), although now prior use may need
to be “informative” to affect novelty (Merrel Dow
Pharmaceuticals v HN Norton);
➢Publicly using the invention before lodging an
application (Acme Bedstead v Newlands).
“Made available to the public” #1

• Must be made available to the public. So prior art

does not include:
• Confidential /secret information

• Consider the decision in: Emson v Hozelock

• Inventor stood in front garden where he could be viewed
from the street, trying out the expandable hose he was developing.

• “If anyone had tried to observe him they would not have seen anything because he would have
 packed everything up. In other words although any member of the public could have turned up at
Skylark Point and stopped to look, had anyone done so, whether a skilled person or anyone else,
he would not have been given access to any information. [149]

• Court found no disclosure.

• Could the case have been decided differently?

39

“Made available to the public” #2

• Consider the decision in: Folding Attic Stairs
• Prototype ladder on private premises;
• Two inattentive members of the public shown through the private premises •
High court held that invented ladder did not form part of the state of the art,
despite the two members of the public being free to gaze.

• [86] it seems to me that if information that is available for viewing on private

premises by a small and defined class of visitors is to become part of the state of the
art, otherwise than by a legal fiction, that information must be actually imparted to
at least one human mind which is free in law to divulge it to anyone else as he
pleases. It should not be enough that if could have been imparted, but was not.
 • Why? How else could the court have dealt with this case?

40

However, in Claydon v Mzuri

(2021), a machine in a private
agricultural field visible from a
neighbouring public footpath
will amount to prior use as the
invention was visible from a
publicly accessible space.
 41

Step 3: Comparison of prior art and allege invention

Does the invention ‘form part of the state of the art’?
Is the Helicopter new in “Prior art” Leonardo da Vinci
comparison? (1452-1519): “Aerial screw”

42

Does the invention form part of the state of the art?

Case law interpretation
 • If the invention does not form part of the state of the art –
it is new.

• If it does form part of the state of the art – it is anticipated

(destroys novelty).

• General rule of anticipation:

• the alleged invention is anticipated if it is the subject

of a “prior enabling disclosure” (Asahi Kasei Kogyo
[1991] RPC 485 (HL); affirmed in Synthon)

43
 44

Bringing it all together #2

• Comparison - does alleged invention form part of the state of the art?
• Two inquiries are necessary:
• Prior disclosure: Did the invention already exist in the prior art? (reverse infringement
test)
• Enablement: Could a skilled person perform (ie. replicate) the anticipatory prior art?
 • The policy rationale: an invention should be considered new if:
• Either, it has never existed (not disclosed)
• Or, if disclosed, there was insufficient information for skilled persons to replicate it
(not enabled)
• The second point incentivises scientists to find ways to make products/processes
replicable

45

Inventive step/ non obviousness

An invention shall be deemed to contain an inventive step if it

 indicates a substantial advanced technological knowledge, which
is beyond the scope of the existing knowledge or prior art and
the claimed invention is not clearly apparent to a person skilled
in that particular technology.
-Sec 2(7)
The Graham factors
The Graham factor is a judicial creation crafted by the US Supreme Court
decision in Graham et al. v. John Deere Co. of Kansas City et al. In that case the
court considered different factors to determine the obviousness and non

obviousness of an invention. Accordingly, the court held that obviousness

should be determined by looking at
1. the scope and content of the prior art;
2. the level of ordinary skill in the art;
3. the differences between the claimed invention and the prior art;
and 4. Objective evidence of non-obviousness.

In addition, the court outlined examples of factors that show "objective evidence of non
obviousness". They are:
1. commercial success;
2. long-felt but unsolved needs; and
3. Failure of others

When is an invention "inventive"?

• When it is not obvious to the person skilled in
the art
in view of the state of the art

• The person skilled in

the art
• is a skilled practitioner
in the relevant technical
field
• has access to the entire
 state of the art
• is aware of general technical knowledge
• is capable of routine work

He knows EVERYTHING,
but has ZERO imagination!

14

Assessing novelty
Claim: A pouring vessel comprising
(a) a compartment for liquids
(1),
(b) a handle (2),
(c) a lid, and
(d) two spouts (5) extending from the compartment (1),
(e) whereby the tops of the two spouts are arranged at the same height.
 Document D3:
Document D2:
Document D1: A High efficiency
1: Prior art Stage teapot with one distributor for
The prior art spout. fertilizer. Each rod
search revealed has several nozzles
the following for spraying liquid.
documents:

A filter handle with two spouts to be

used with a coffee-maker.
Document D4:
An oil and vinegar
bottle which
reveals a second bottle
inside. The
two spouts are cleverly arranged to
15
ensure the second bottle never
drips while the first one is in use.

1 Stage
 - the time needed to fill multiple cups
is reduced

2: Problem Stage • Objective problem to solve:

- how to modify the teapot of D1
Assessing inventive step to reduce the time needed to fill
(I) multiple cups

• Determine the closest prior art and

common features:
(a) a compartment for liquids
(b) a handle
(c) a lid
(d) one spout

• Differences over D1:

- two spouts instead of one
- particular arrangement of the
spouts

• Drawback of prior art:

- time-consuming

• Advantage/effect of the invention:

50

Assessing inventive step (II)

 Is the claimed solution obvious

+
in view of the prior art?

?
3:
n
Solutio D1

Objective problem for the skilled

person: How to modify the teapot
of D1 in order to reduce the time
needed to fill multiple cups
D4

Stage
D2 D3
 51

Haberman
v
Jackal
 Mandy Haberman created Anywayup® cup to prevent leakage by
trainer cups for toddlers
In 1990, after observing a toddler spill blackcurrant juice all over her friend’s
cream-colored carpet, Mandy Haberman was inspired to find a solution to leaky
trainer cups that would prevent such accidents from occurring again. This resulted
in the “Anywayup® cup,” the world’s first state-of-the-art, totally non-spill “sippy
cup.”

“All my inventions have begun with the identification of a problem that needs
solving.”

-Mandy Haberman, Founder and Creative Director of Haberman Products Ltd.

Feeding innovation
Anywayup cups have a unique valve molded into the mouthpiece to ensure that
the spout automatically seals between sips, making them totally leak-proof, even
when shaken vigorously or left upside down.

The innovative design helps to eliminate spillage by allowing the flow of liquid only
when the child sucks or swallows. Other benefits include improved hand-to-mouth
coordination and the opportunity to learn to drink independently through sipping
rather than guzzling.
In the case, the invention “Anyway UP” cup was a simple solution to a
known problem and it was also a commercial success as it was a baby
drinker’s cup with spout and slit valve at the base of the spout which
avoided leakage.
Industrial Applicability (Utility)
An invention, in order to be patentable, must be of a kind which can be
applied for practical purposes, not be purely theoretical. If the invention
is intended to be a product or part of a product, it should be possible to
make that product.

In common language, an “industrial” activity means a technical activity

on a certain scale, and the “industrial” applicability of an invention
means the application (making use) of an invention by technical means
on a certain scale.
In Chiron v Murex Diagnostics (1996) Morritt LJ at 178 stated that ‘the
section requires that the invention can be made or used “in any kind of
industry” so as to be “capable” or “susceptible of industrial application” ’.
The connotation is that of trade or manufacture in its widest sense and
whether or not for profit.
How to obtain Patent (Previous law)
• Who can Apply?
• S3(1) –An application for a patent may be made by any person whether
• he is a citizen of Bangladesh or not, and whether alone or jointly with •
any other person
• declaration
• name of the true inventor where he is not the applicant. • S37 – It is
possible to make joint applications and hold a patent jointly.

How to obtain Patent (New law)

• Who can Apply?

• S4 –An application for a patent may be made by any person whether

individually or jointly or by legal representative.
• First to file and first to invent rule
• Some times it happens that two persons apply the same application over the
same invention. And it may even occur that five persons or more may
request patent right over the same subject matter. As such, it would be self

defeating to grant patent to all of the applicants. Thus a state would be

 invariably forced to grant to one and deny the other. In this regard many
states apply either the first to file rule or the first to invent rule.
• Almost every country other than the United States uses a first-to-file system.
This means that, regardless of who invented first the person or legal entity
who files a patent application first is the one who can be granted a patent
for the invention. The advantage of this rule is that it encourages speedy
disclosure of information.
• Priority right
• A priority right or right of priority is a time-limited right, triggered by the
first filing of an application for a patent. The priority right belongs to the
applicant or his successor in title and allows him to file a subsequent
application in another country for the same invention, for this subsequent
application, from the date of filing of the first application for the
examination of certain requirements. When filing the subsequent
application, the applicant must "claim the priority" of the first application in
order to make use of the right of priority.
 • Art 4 of Paris Convention: The priority right provides that an applicant from
one contracting state shall be able to use its first filing date (in one of the
contracting state) as the effective filing date in another contracting state,
provided that the applicant files another application within 6 months (for
industrial designs and trademarks) or 12 months (for patents and utility
models) from the first filing.
• The First Stage : Filing the Application

• The first step in the patent registration process is filing an application with the
Director General.
• Types of applications: You can file either a complete specification or a
provisional specification.
❑Provisional Specification – description of the nature of the invention
❑Complete specification – must particularly describe and ascertain the nature
of the invention and the manner in which the same is to be performed.
• Provisional application requirements {S. 8(5)} :

✓Full details of the applicant and inventor

✓Title of the invention
✓A clear description of the patent sought
✓Summary of the Invention
✓Priority claim information (if applicable)
✓Power of attorney (if applying through a representative)
✓Inventor's endorsement (if the applicant is not the inventor)
• If you file a provisional application, you must submit a complete specification
within 12 months. {S 8(4) (a)}
• Complete application requirements {S. 8(6)}:
For complete specifications, additional requirements include:

✓Detailed description of the invention

✓One or more claims specifying the features for protection
✓Technical information in the abstract (not exceeding 300
words) ✓Drawings or diagrams (if necessary)
• The application process ?
• Provisional and Complete Application
• S8(1) – The application must be either a provisional application
• Stage 2: Formalities Check [ Sec. 12]

• Once application is submitted, the Director General will perform a

formalities check. If any conditions are not met, the applicant be
directed to make necessary corrections within a specified period. Failure
to do so may result in the application being abandoned.
• Stage 3: First Publication [ Sec. 17]

• After 18 months from the filing date, the patent application will be
published for public inspection.
• The applicant can request earlier publication by paying a prescribed fee {
Sec. 17(4)}.
• Stage 4: First Opposition [ Sec. 19]
 • Within 180 days of the first publication, any interested party can file an
opposition to the patent application. They must provide reasons and
evidence supporting their objections.
• Stage 5: Request for Examination [ S. 21]
• The applicant must request an examination of the patent application within
36 months of the filing date. This deadline can be extended by three
months if necessary. Failure to request an examination will result in the
application being considered abandoned.

• Formal examination: The DPDT checks if the application meets all formal
requirements, such as proper documentation and fee payment.
• Substantive examination: Experts evaluate the invention's novelty,
inventive step, and industrial applicability. During this stage, they may raise
objections or request clarifications.
• Stage 6: Grants, Rejections, and Modifications [ Sec. 24]

• The Director general will evaluate whether the invention meets the
conditions for granting a patent subject to compliance with the
provisions of section 19, . If it does, a patent will be granted. If not, the
application will be rejected and notified in writing.
• Rights of patentee
• S 25: A patent gives the patentee to prevent third parties from using the
patented invention in Bangladesh without his consent.

• Validity of Patent
20 years (s.28)
• Exceptions of Patent rights
Section 62
• Revocation of patent

(s.33) • Conditions are not

fulfilled

• Compulsory licence (s 36)

• In five cases, the Government may, without any agreement or agreement

with the proprietor of the patent, grant a compulsory license to any
 Government agency or person designated by the Government to use the
said invention.

(i) Public interest, (ii) invention is unfairly competitive, (iii) patentee abuses
the right of patent (iv) lack of sufficient quantity of the invention, or not
affordable, and (v) to exploit a second invention which is related to
economically important advanced technical knowledge.
• How Infringement Occurs
•Infringement is the doing of an act within the exclusive rights of
a patentee.
• Make – a product is not made until the final step, ie until the
article is completely finished, and if a combination of parts,
until the parts are put together
• Dunlop Pneumatic Tyre Co v David Moseley & Sons – manufacturing
 just one part, the tubeless tyre was not infringement

• Hire, sell or otherwise dispose of

• enough to have possession, even technical possession, with intent to
trade: Morton Norwich Products
• Windsurfing International Inc v Petit – sale in kit was sufficient to be
sale of article
• If sold by patentee, buyer has implied licence to resell
• Use
• Unclear whether non-commercial use is infringement • Where
patent is for a process and use of the process makes a product,
this right includes the making, hiring, selling and disposing of
that product

• Import
 •
• Keep – unauthorized possession for purpose of
commercial dealing: McDonald v Graham
• Mere custodianship of goods in warehouse not sufficient: Smith
Kline v RD Harbottle
Is it making (or repairing)?
• Schutz Ltd v Werit Ltd [2013] UKSC 16

• Patent for ‘intermediate bulk container (IBC)

• D took P’s IBC cage, removed old IBC

bottle and inserted fresh Werit bottles
and sold as a reconditioned IBC.

• Was this ‘making’?

• Sup Ct: multifactorial analysis of
def’s activities
Could be described as routine
repairs or replacement?
 • Whether the part being replaced:
1. Is freestanding, replaceable component?
2. Has no connection with claimed inventive concept?
3. Has much shorter life expectancy than inventive component of overall product
4. Is not main component?
• If yes to any questions, more likely court will find no infringement (not
76 “making”)

Is it making (or
repairing)?

• Schutz Ltd v Werit Ltd [2013] UKSC 16

• Patent for ‘intermediate bulk container (IBC)

• D took P’s IBC cage, removed old IBC bottle and

inserted fresh Werit bottles and sold as a
reconditioned IBC.

• Was this ‘making’?

• Sup Ct: multifactorial analysis of def’s
activities
Could be described as routine repairs or
 replacement?
• Whether the part being replaced:
1. Is freestanding, replaceable component?
2. Has no connection with claimed inventive
concept?
3. Has much shorter life expectancy than
inventive component of overall product
4. Is not main component?
• If yes to any questions, more likely
court will find no infringement (not
“making”)

77

Is it making (or repairing)?

• Schutz Ltd v Werit Ltd [2013] UKSC 16

• Patent for ‘intermediate bulk container (IBC)

• D took P’s IBC cage, removed old IBC bottle and inserted fresh Werit bottles and sold as a
reconditioned IBC.

• Was this ‘making’?

• Sup Ct: multifactorial analysis of def’s activities
Could be described as routine repairs or replacement?
 • Whether the part being replaced:
1. Is freestanding, replaceable component?
2. Has no connection with claimed inventive concept?
3. Has much shorter life expectancy than inventive component of overall product
4. Is not main component?
• If yes to any questions, more likely court will find no infringement (not “making”)
78

In Dunlop Tyre Co v British & Colonial Motor Co (1901) 18 RPC 313, the
display of the product at an exhibition was held to be an offer, and in
Gerber Garment Technology v Lectra Systems [1995] RPC 383 it was held
that including pictures of the patented equipment in a catalogue
amounted to an offer.

Even, sending details of machinery which infringed a United Kingdom

patent by fax to a prospective purchaser has also been held to amount to
an offer: Tamglass Ltd Oy v Luoyang North Glass Technology Co Ltd.
Two steps to proving infringement

1) Has the defendant performed an “infringing act”?

2) Was this in relation to product or process falling within the

scope of a valid claim?

44. (1) If any person, subject to the provisions of this Act, without
entering into an agreement with the proprietor of the patent, infringes
any right declared under section 25, the proprietor of the patent may
institute proceedings against such person for infringement of the said
80
right.