LAW SOCIETY OF IRELAND AND ASSOCIATION OF PATENT AND TRADE MARK - - PowerPoint PPT Presentation

LAC PRESENTATION BY IP LAW COMMITTEE OF THE LAW SOCIETY OF IRELAND AND ASSOCIATION OF PATENT AND TRADE MARK ATTORNEYS

Maureen Daly (Beauchamps Solicitors); Peter Hanna (Hanna, Moore & Curley); Fiona O’Beirne (McCann FitzGerald);

• and-

Laura Scott (William Fry)

• by-

Maureen Daly

Overview of Irish legal system

• Ireland is a “common law” jurisdiction like
• Singapore
• Hong Kong
• Great weight placed on court decisions – it is

law with the same force of statutes

• Irish Courts bound by previous decisions

Irish Legal System

(a) Solicitors Offer initial legal advice / take instructions If legal proceedings issued, they organise witnesses, assist in preparing their statements or evidence, assemble documents for court, corresponds with the solicitor on the other side

Types of Lawyers in Ireland

A sole practitioner and is independent They argue the case in court, draft the documents used in court (the "pleadings") and draft written submissions to the court Depending on the complexity of the case, it may be necessary to instruct junior and senior counsel

(b) Barristers

Work together in any litigation to represent the client and put the best case forward

Solicitors and Barristers in Court

In patent infringement and/or revocation proceedings, solicitors and barristers work with patent attorneys Patent attorneys provide technical advice

Patent Attorneys

• by-

Peter Hanna

Role of Patent Attorney

EUROPEAN

Business: Understand what has to be protected, why, what benefits Technical: Be able to draft patents (technical disclosure) Legal: Be able to draft strong patent claims

EUROPEAN

The Invention: a “quick- release” monkey wrench

• 1. A rapid adjustable wrench, the adjustable wrench is comprised of wrench body, adjustable wrench head, worm, pin

shaft, spring, support pin, bond type wedge, stop pin, there is a fixed wrench head in the front end of the wrench body, there is a handle in the back end of the wrench body, there is a clamping face on the fixed wrench head, there is a recess below the fixed wrench head, there are two faces that parallel to each other in the inner upper of the recess, the lower portion of the recess is in a circular arc surface, there is a cutout downward the middle portion of the circular arc surface, the cutout connects with a rectangular through hole, the adjustable wrench head is comprised of the upper portion, middle portion and lower portion, there is a clamping face on the upper portion, the thickness of the middle portion is less than the distance of the two faces that are parallel to each other within the recess of the fixed wrench head, the two sides of the lower portion of the adjustable wrench head are symmetrical and in circular arc surface, the greatest distance between the arc surface is less than the diameter of the bottom circular arc surface of the recess of the fixed wrench head, the teeth are set on the top end of the lower portion of the adjustable wrench head, the top of the teeth is in blunt and meshed with the spiral gear of the worm, characterized in that, a bond type hole is set below the recess of the fixed wrench head, the bond type hole through the rectangular through hole from the wrench body surface that away from the clamping face of the fixed wrench head and extends to a position that adjacent to the below of the clamping face of the fixed wrench head, and forms a bond type through hole and a bond type blind hole, which are located on the two sides of the rectangular through hole respectively, the centerline of the bone type hole is perpendicular to the clamping face of the fixed wrench head, two spring holes through the lower portion of the recess and extend to the lower portion of another side of the bond type through hole and the bond type blind hole respectively, inserting the one end of the spring into the spring hole through the lower portion of the recess, inserting the thinner end of the two support pins into the central hole of the spring also through the lower portion of the recess, putting the worm into the middle of the rectangular through hole, inserting the one end of the pin shaft into the bond type through hole from the outside of the wrench body, while depressing the top end of the support pin within the bond type through hole, such that the pin shaft is located over the top end of the support pin, the pin shaft through the central hole of the worm, while depressing the top end of the support pin within the bond type blind hole until the pin shaft is located over the top end of the support pin, and contacted with the bottom face of the bond type blind hole, thereafter, embedding the bond type wedge into the bond type hole from the outside of the wrench body, and preventing the pin shaft removed from the wrench body, depressing the worm in the opposite direction of the spring tension, facing the clamping face of the adjustable wrench head with the clamping face of the fixed wrench head and pushing the lower portion of the adjustable wrench head to the recess of the fixed wrench head, a recess is set on one side of the middle portion of the adjustable wrench head which is mated with the adjustable wrench head, a stop through hole is set on one side of the recess that away from the clamping face of the fixed wrench head, fixing the stop pin within the stop through hole, and preventing the adjustable wrench head from sliding off along a direction that away from the clamping face of the fixed wrench head.

EUROPEAN

A better claim:

• 1. A wrench, comprising a fixed

wrench head (101) and an adjustable wrench head (2) held in engagement by means of a worm screw (3), characterized in that the worm screw (3) can be pushed into screw thread engagement with the adjustable wrench head (2)

• r released by means of a

spring (5).

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EP Applications from China

2000 4000 6000 8000 10000 12000 14000 16000 18000 2006 2007 2008 2009 2010 2011

PCT Applications designating EP Entering EP phase EP Direct Applications ↙2945 ↙16946 ↙476

EP Applications from China 2011

783 469 76 51 37 35 25 12

• by-

Fiona O’Beirne

Irish legal landscape for patents and Patent infringement

• Patents Act 1992 (as amended)
• European Patent Convention (EPC)
• EPO

Ireland

The Legal Landscape

Ireland

The Legal Landscape ctd.

• Irish Patents Office
• Irish Courts (High Court)

Infringement

• Direct infringement
• Indirect infringement

What Acts?

Infringement ctd.

Direct Infringement

(a) making, offering, putting on the market or using a product which is the subject-matter of the patent, or importing or stocking the product for those purposes; (b) using a process which is the subject-matter of the patent, or, when the third party knows, or it is obvious to a reasonable person in the circumstances, that the use of the process is prohibited without the consent of the proprietor of the patent,

• ffering the process for use in the State;

(c)

• ffering putting on the market, using or importing, or stocking

for those purposes, the product obtained directly by a process which is the subject-matter of the patent.

Infringement ctd.

Indirect infringement

“supplying or offering to supply in the State a person, other than a party entitled to exploit the patented invention, with means, relating to an essential element of that invention, for putting it into effect therein, when the third party knows, or it is obvious in the circumstances to a reasonable person, that the said means are suitable and intended for putting that invention into effect”

• by-

Peter Hanna

Claim construction and Doctrine of Equivalents

Doctrine of equivalents (UK Approach) Strict literal meaning of claims defines protection Give words their ordinary meaning (to a person skilled in the art)

• INTERNAL: are there any special definitions in the description?
• EXTERNAL: use a dictionary or an expert to decide meaning

DOCTRINE OF EQUIVALENTS

Doctrine of equivalents (US approach) ALL elements of the claim must be infringed, either literally, or equivalently Equivalent element must

• perform the same function
• in substantially the same way
• to yield substantially the same result

Prosecution history estoppel DOCTRINE OF EQUIVALENTS

Doctrine of equivalents (German approach) The general inventive idea is protected, inventor’s contribution to the art Equivalent element must

• be immediately evident to skilled person
• or perform same technical function

Element can be omitted if

• “sub-combination” achieves same advantages

DOCTRINE OF EQUIVALENTS

It will save a lot of money … DOCTRINE OF EQUIVALENTS

• STANDARDS APPLIED

Favours Infringer ← Certainty for Infringer + Fair protection for Patentee → Favours Patentee NARROW SCOPE BALANCED SCOPE BROAD SCOPE Interpret claims by literal meaning

• f claims

Interpret claims between two extremes (narrow and broad) Claims serve as guide to what inventor contemplated

U.K. USA, JAPAN IRELAND FRANCE GERMANY

European Patent Convention – Art. 1 of Protocol to Art. 69 EPC

• Protection not to be defined by strict literal meaning of

claims

• Protection not to be defined by claims, as interpreted by

everything in the description and drawings, and consideration of what the patentee had contemplated

• Instead protection is defined by the claims, defining a

position between these two extremes DOCTRINE OF EQUIVALENTS

• STANDARDS APPLIED

European Patent Convention – Art. 2 of Protocol to Art. 69 EPC

“For the purposes of determining the extent of protection conferred by a European patent, due account shall be taken of any element which is equivalent to an element specified in the claims” DOCTRINE OF EQUIVALENTS

• STANDARDS APPLIED

CATNIC CASE (UK) Catnic Components v. Hill & Smith (1982) “Purposive construction … ”extending vertically …” DOCTRINE OF EQUIVALENTS

• STANDARDS APPLIED

EPILADY Case Improver Corp. v. Remington Consumer Product Ltd. (1990)

“a curved helical spring …” DOCTRINE OF EQUIVALENTS

• STANDARDS APPLIED

1. Does variant have material effect

• n the way the invention works?

2. If not, would that be obvious?

• 3. Is strict compliance with literal

meaning regarded as essential?

EPILADY Case Improver Corp. v. Remington Consumer Product Ltd. (1990)

DOCTRINE OF EQUIVALENTS

• STANDARDS APPLIED

Enforcement ….

谢 谢！

• by-

Laura Scott

Remedies for patent infringement

Various Bases

• Section 47 of the Patents Act, 1992
• The European Communities

(Enforcement of Intellectual Property Rights) Regulations, 2006

• Equitable jurisdiction of the Court

Pre- trial

• Order for Disclosure of Information
• Preliminary Injunction
• Preservation of Assets Order
• Preservation of Evidence Order

Post- judgment / finding of infringement

• Final injunction
• Damages / Account of Profits
• Order for delivery up/destruction
• Declaration of Invalidity and

Infringement

• Order for dissemination & publication
• f Judgment
• Costs

Remedies – Infringement Action

All remedies ultimately at discretion of the Court

Interim injunction

• Application can be heard almost

immediately

• Application is made ex-parte (i.e.

the other side is not on notice and is not heard)

• Only in cases of extreme urgency
• If granted, only lasts a number of

days until hearing for an application for an ‘interlocutory’ injunction

Interlocutory injunction

• Application generally heard within

4-6 weeks

• Inter-party (i.e. both parties are

heard)

• Only in cases of urgency
• If granted, usually lasts until full

trial of the action

• Any appeal to Supreme Court to

be submitted within 21 days of

• rder

Preliminary Injunctions

Urgent measure to restrain defendant from acting in a manner that will cause irremediable harm to the plaintiff in the period prior to trial Applications made on affidavit / resource intensive

• Plaintiff must demonstrate that:

– Fair Issue to be tried – Inadequacy of Monetary Damages as remedy for the plaintiff for the loss/damage that will be suffered by the plaintiff in the period prior to trial if injunction is not granted – Balance of convenience favours the granting of an injunction – Plaintiff must also give an undertaking in damages to the defendant

Preliminary Injunctions - Interlocutory

Remedies – Damages / Account of Profits

• S.47 of Patents Act 1992

– Damages – intended to recompense the plaintiff for the loss it has suffered from the infringement – Account of Profits – intended to prevent the defendant from unjustly gaining from his infringement

• Court cannot award both damages and account of

profits in respect of same infringement. Available only in the alternative. Patentee must elect.

• Inquiry as to damages usually held over until after

liability is established.

Calculation of Damages

• No statutory amount – assessed on a case by case

basis

• General principle is that the damages should reflect the

amount which will put the plaintiff in the same position as he would have been in if the infringement had not taken place, subject to rules of causation & remoteness

• Onus on plaintiff to demonstrate extent of loss
• Can be calculated on a number of bases, e.g. lost

profits, notional licence fee/royalty

• Punitive damages only awarded very rarely

Calculation of Account of Profits

• The profit made by the infringer as a result of his

infringement – generally ‘net’ profit

• Disclosure of financial information from

defendant including accounts and sales figures to enable patentee to elect between damages or account of profits

Restrictions on Recovery of Damages / Account of Profits

• Section 49 of Patents Act, 1992 (as amended)

– No award of damages or account of profits if defendant proves he was unaware of patent, and had no reasonable grounds to suppose that patent existed – Court may refuse damages/account of profits in respect of any infringement if such infringement committed during an extension period for a renewal fee – Where amendment has been made to the specification of a patent, no damages for any infringement prior to the amendment unless Court satisfied that original specification was framed in good faith and with reasonable skill and knowledge

Other Remedies

• Final injunction

– Section 47(1)(a) of Patents Act, 1992 (as amended) – Equitable remedy at discretion of court – Court may decline and impose ‘compulsory’ licence in lieu

• Delivery Up / Destruction

– Section 47(1)(b) of Patents Act, 1992 (as amended) – Section 4 of European Communities (Enforcement of Intellectual Property Rights) Regulation 2006

• Costs

– General rule ‘costs follow the event’ but some exceptions, e.g.proceedings for declaration of infringement (Section 54 of Patents Act, 1992 (as amended)), interlocutory applications, unproven issues or unreasonable/improper issues raised – Usually only ‘party/party’ costs – not a full indemnity – Taxation in absence of agreement

Alternative Dispute Resolution

• No general requirement to undertake ADR

before bringing case to Court

• Commercial Court – Judge may, if he considers

it desirable, adjourn case to facilitate ADR

• Negotiated settlements between parties

• by-

Maureen Daly

Invalidity

The validity of a patent can be challenged by:-

• Revocation proceedings
• Defence to infringement proceedings
• In proceedings relating to threats of infringement
• Disputes as to the right to use inventions by the State

Invalidity

(a) the subject matter of the patent is not patentable (b) the specification of the patent does not disclose the invention in a manner that is clear and complete for it to be carried out by a person skilled in the art (c) the matter disclosed in the patent extends beyond that disclosed in the application as filed (d) the protection conferred by the patent has been extended by an amendment which should not have been allowed (e) the proprietor of the patent is not entitled to it

Grounds for invalidity

Any person may apply to the High Court or Patents Office for a patent to be revoked Onus of proof lies on applicant for revocation Patent may be revoked in total or if invalid to a limited extent, the High Court / Controller may amend the specification

(a) Revocation Proceedings

If legal proceedings pending, revocation proceedings cannot be issued in the Patents Office without the Court’s consent If revocation pending before Patents Office, proceedings cannot be issued in Court without the patentee’s consent

• r where the Controller believes it would be appropriate

Court -v- Patents Office

Validity usually raised in defence to infringement proceedings Validity and infringement heard together in the same proceedings

(b) Defence in infringement

Revocation:

• Petition issued
• Particulars of Objections must be filed

Sets out grounds on which validity is disputed

• Discovery and expert reports produced in advance

Pre-trial Procedure

• by-

Laura Scott

Court procedure and timeframes

• Common law jurisdiction – litigation is trial oriented,

centred on oral evidence and adversarial

• Commercial Court
• most common forum for patent disputes
• Special division of High Court
• Jurisdiction over high value cases and certain other

special areas, including IP

• Fast track – tight timelines
• Close case management

Procedure

Pre-action correspondence Commencement of proceedings Application to transfer to Commercial Court Exchange of Pleadings Discovery Experiments Witness Statements Legal Submissions Hearing /Trial

Typical timeline from commencement of action to trial – 12-18 months (expedited trials also possible if appropriate)

Typical Stages of an Infringement Action

• Pre-action correspondence

– ‘cease and desist ‘ letter – Groundless threats - section 53 of Patents Act, 1992 (as amended)

• Commencement of Proceedings

– Plenary summons (or petition if revocation action) – Leave to serve outside jurisdiction on non-EU defendant – Appearance by defendant (8 days, 5 weeks or 6 weeks depending on circumstances)

• Application to Transfer to Commercial Court / Initial

Directions Hearing

– No automatic right of entry – Application can be made by either party – Application can be made at any stage before close of pleadings but should be made as early as possible – Initial directions usually made for exchange of pleadings and exchange

• f discovery requests/ responses

Typical Early Stages

Replies of Particulars Defence(& Counterclaim for Invalidity) Replies to Particulars Notice of Particulars Statement of Claim Appearance Plenary Summons Reply to Defence (&Defence to Counterclaim for Invalidity) Notice of Particulars

Plaintiff Defendant

Exchange of Pleadings

Discovery

• Important part of litigation process
• Obligation to preserve documents where litigation is contemplated or

in being

• No specific rules to limit discovery in patent cases like UK
• All documents in “possession, power or procurement” of the parties

which are relevant and necessary for a fair disposal of case or for saving costs

• Procedure

– Categories of documents sought – Voluntary Agreement or Court Order in absence of agreement – Collation/Review – Affidavit of Discovery – Production/Inspection – Privilege

Experiments

• No specific rules
• Normally dealt with in Court directions
• Notice of experiments / facts to be adduced
• Admission of any facts
• Inspection / Repetition of experiments

Witness Statements

• Statements of evidence to be exchanged in

advance of trial

• Expert & factual witnesses
• May be directed in exchange or in sequence
• May be treated as evidence in chief if verified on
• ath

Trial / Hearing

• Oral Evidence by Witnesses

– Examination in Chief – Cross Examination – Re-Examination

• Legal Argument
• Single Judge / No Jury
• Technical Assessor

Supreme Court Appeals

• Decisions in whole or in part of High Court can be

appealed to Supreme Court (including interlocutory decisions)

• Notice of Appeal to be filed within 21 days
• Proposed new Court of Appeal
• Application for stay of High Court order pending appeal