Baxter IP Provide Enforceable Patents

  • Martin Earley - Director, Victoria Region Manager, Patent & Trade Mark Attorney
  • Director, Victoria Region Manager, Patent & Trade Mark Attorney "To me, getting on board early in the piece is advantageous because my range of experience as an IP attorney in both contentious patent and trade mark issues allows us to determine the approach most likely to maximise benefits to the client. Positive outcomes for our clients are what matter most to me."

It is important that a patent is an effective tool that assists the commercial exploitation of a new invention.  Therefore patents need to be written well.  Further they need to have a strong claim to the invention that is enforceable to stop others unlawfully exploiting the monopoly to the invention, which is granted by the patent to the patentee only.

It should be noted that the infringing product is compared to the claimed invention in the patent and not to the patentee’s own product.

In a recent decision handed down by the Federal Court of Australia, there was given a judgement for infringement of Australian Innovation Patent No 2013100937.  This is an Australian innovation patent drafted by Baxter IP for one of their clients.

Enforcement

In proper enforcement of the patent, the Court action was taken against the infringing company as well as the director and shareholder of the infringing company.  In this way a full claim of damages can be collected from these entities dependent on their assets.

Damages

The Court issued damages against the infringing parties of nearly $400,000 and costs of the Court proceeding with regard the infringing patent.

This followed the principle that infringement of a patent is a statutory tort and the elementary rules are:

  1. that the overriding principle is that the victim should be restored to the position he would have been in if no wrong has been done, and
  2. that the victim can recover loss which was forseeable, caused by the wrong and not excluded from recovery by public or social policy.

Therefore costs in this case were sought and obtained under five heads of infringement:

  • the claim for lost profit which included an amount for loss of sales of whole units of stock;
  • the cost of surplus stock which the patentee was unable to sell because of the infringing conduct;
  • the cost of retooling due to infringing conduct was using original tooling of the patentee;
  • the additional costs incurred in air freighting products due to temporary shortage of stock; and
  • flagrancy of infringement in directly copying patentee’s product.

Section 122 (1A) of the Patents Act 1990 allows relief for infringement of patent for flagrant infringement.  That is:

(1A) A court may include an additional amount in an assessment of damages for an infringement of a patent, if the court considers it appropriate to do so having regard to:

(a)  the flagrancy of the infringement; and

(b)  the need to deter similar infringements of patents; and

(c)  the conduct of the party that infringed the patent that occurred:

(i)  after the act constituting the infringement; or

(ii)  after that party was informed that it had allegedly infringed the patent; and

(d)  any benefit shown to have accrued to that party because of the infringement; and

(e)  all other relevant matters.

Conclusion

Baxter IP look forward to being part of your project and undertaking strong, valid and enforceable patents to assist commercial exploitation of your new invention.