-- JonathanMo - 14 Sep 2015

Infringement

The PA does not provide any definition of direct infringement, although three forms are suggested:

• exploiting the invention without the authorisation of the patentee
• authorising another person to do this [PA s. 13]
• supplying a product to another person where its use would be an infringement [PA s. 117]

Infringement 'will only occur when the invention as claimed has been the subject of the defendant's activities'. The first step is thus to decide what the invention consists of and the second to compare the infringing article or process. This requires that the relevant complete or petty patent specification be carefully construed in order to establish the extent of the territory that the patentee has marked out. The question of how narrowly or generously claims in patent specifications should be interpreted thus becomes a crucial one and in this regard the courts have been far from unanimous as to the most appropriate way to proceed.

On a 'literal' reading the scope of the patent monopoly is narrowly construed so that only an exact or nearly exact copy would infringe. On the other hand, a 'pith and marrow' approach would focus on whether the 'pith and marrow' - or certain key or substantive elements - of the invention had been taken. A purposive approach seems now to be favoured in Australia. In taking a broader approach, 'the claim must be read through the eyes of the notional addressee, the man who is going to carry out the invention described ... In considering the claim the court must ascertain what are the essential integers of the claim: this remains a question of construction and no general principle can be laid down': Rodi & Wienenberger v Showell (1969) RPC 367.

Prior to the PA, it was not an infringement of a patent to deal in a part of the patented product, unless all the parts were sold together. However, section 117(1) of the PA provides:

Importation for sale

See Re Eli Lilley and Co (1982) AIPC 90-003:

It was held here 'that the importation of monensin sodium into Australia would have involved the use abroad of both a substance and a process claimed in the Australian patent'.

Reversal of burden of proof

Section 121A of the PA provides for the reversal of the burden of proof in civil cases involving process patents, whereby the defendant may be required to prove that the process used to obtain an identical product is different from the patented process.

Section 122 provides that the relief which 'a court may grant for an infringement of a patent includes an injunction ( ... [on] such terms as the court thinks) and, at the option of the plaintiff, either damages or an account of profits.' (Writer's emphasis added.)