Substantive Patent Law: infringement, validity, defenses, remedies, assignment and licensing
Infringement and validity
A patentee may prevent others from making, using, offering for sale, selling, importing or stocking the patented product, or using the patented process, without consent. Infringement is assessed by construing the claims and comparing the accused product or process. Validity can be challenged in infringement proceedings or by revocation or opposition. Invalidity grounds include lack of novelty, inventive step, industrial applicability, insufficient disclosure and excluded subject matter.
Defences and remedies
Defences include non-infringement, invalidity, experimental use, personal prior use, exhaustion, licence and compulsory licence. Remedies include injunction, damages, account of profits, seizure and costs. The court may award damages for acts after publication of the application, subject to statutory conditions. Assignment and licensing should be in writing; recordal with the Registrar affects third parties.
Worked example
A licensee sells a patented device without recording the licence. The patentee sues a third-party copier. The copier argues the patentee cannot sue because the licence is unrecorded. Recordal is generally not a condition of the licence between the parties, but it matters for third parties and for standing in some proceedings. The patentee's title and the licence terms must be proved.
Traps
Do not equate a pending application with an enforceable patent. Do not ignore claim construction and the prosecution history. Do not assume a licence grants rights beyond its terms. Check whether the act falls within an exemption or is covered by exhaustion.