Australian Patent Infringement

Patent infringement occurs when someone, without the authorization of the patent owner, makes, uses, sells, or imports a patented invention within Australia during the patent's term. Understanding what constitutes infringement a nd how to navigate potential disputes is crucial for both patent holders and those operating in industries where patents are common.

What Constitutes Patent Infringement?

In Australia, patent infringement is defined by the Patents Act 1990. According to this Act, infringing a patent means exploiting a claimed invention in a granted patent. This includes:

• (a) If the invention is a product: Making, hiring, selling, or otherwise disposing of the product; offering to make, sell, hire, or otherwise dispose of it; using or importing it; or keeping it for the purpose of doing any of those things.
• (b) If the invention is a method or process: Using the method or process or doing any act mentioned in paragraph (a) in respect of a product resulting from such use.

Key Aspects of Infringement:

• "Each and Every" Rule: For a product or process to infringe a patent, it must include every essential feature (or "integer") of at least one claim of the patent. If even one essential feature is missing, there is no infringement.
• Claim Construction: Determining whether a product or process infringes a patent involves "claim construction." This means interpreting the language of the patent claims to understand the scope of the invention's protection. Australian courts use a "purposive" approach to claim construction, considering what the patentee intended to protect, as understood by a person skilled in the relevant art.
• Independent Claims: The first claim of a patent application is typically the broadest independent claim. If the broadest claim is infringed, the patent rights are considered infringed.
• Territoriality: Patent rights are territorial, meaning a patent granted in Australia only provides protection within Australia. Infringement only occurs if the infringing activity takes place within Australia.
• Contributory Infringement: This occurs when someone supplies a product that includes all the features of a patented invention to another party, knowing that the other party will use the product to infringe the patent.

What to Do If You Believe Your Patent Is Being Infringed:

• Seek Professional Advice: Consult with a patent attorney. They can assess the situation, conduct an infringement analysis, and advise on the best course of action.
• Avoid Direct Contact (Initially): It's generally not advisable to contact the alleged infringer directly before seeking legal advice. Doing so could potentially expose you to claims of unjustified threats if infringement is not found.
• Options to Consider:
• Expedite Examination: If you've filed a patent application and believe someone is copying your invention, you can request expedited examination to obtain enforceable rights more quickly.
• Freedom-to-Operate Search: If you're planning to launch a new product, conduct a "freedom-to-operate" search to identify any existing patents that might be infringed.
• Enforce the Patent: If you have a valid patent and the infringing party is unwilling to stop, you can initiate legal proceedings to enforce the patent.
• Patent Invalidity: If you're accused of infringement, you might challenge the validity of the patent by identifying "prior art" that shows the invention was already known before the patent was filed.
• Licensing: You could negotiate a license agreement with the patent owner to legally use the patented technology.
• Design Around: Modify your product or process to avoid including all the features of the patented invention.

Remedies for Patent Infringement:

If a court finds that patent infringement has occurred, it can:

• Issue an Injunction: Order the infringer to stop making, using, selling, or importing the infringing product.
• Award Damages:Require the infringer to pay financial compensation to the patent owner, which can be based on either the patent owner's lost profits or the infringer's profits.