Mairi Rudkin: Infringement decision sets precedent for courts

Indeed, it has been hailed as the most important decision on patent infringement for more than a decade. It also represents a very patentee-friendly decision.

Until now the UK courts didn’t apply what’s known as a ‘doctrine of equivalents’ when considering patents. This is essentially a legal principle which allows parties to be held liable for infringing a patent even if the infringement doesn’t fall within the ‘literal scope’ of a patent claim.

But following a ruling in the case of Actavis UK Limited v. Eli Lilly & Company (2017) UKSC 48 – concerning the use of a chemical compound called pemetrexed, used for the treatment of cancerous tumours – a new precedent has been set.

So what does that mean to you and me? Essentially, claims may now be interpreted by the courts more broadly than previously – which in turn means that patent owners could enjoy a broader scope of protection.

The ground-breaking ruling also brings us more closely into line with German and Dutch courts and it is expected that the new Unified Patents Court will adopt a similar approach.

It further means that third parties may find it harder and more complex to design around patents, in the hope of avoiding infringement.

Essentially, the ruling of this recent case may mean that companies need to be more diligent than ever in order to ensure they avoid infringement. And one key way to do this is through Freedom to Operate (FTO) searches.

Searches of this type review granted patents and pending applications to check for any conflicting third party rights in particular jurisdictions/territories.

Of course, patents give the owner a monopoly right which allows them to prevent others from making, using, importing, and/or selling an invention covered by the patent – but the patent proprietor does not necessarily have an automatic right to exploit their invention themselves. This is because third parties may have patent rights that they would infringe when attempting to exploit the invention.

An FTO search allows you to determine whether a particular action, such as marketing or distributing a product, can be done without infringing the intellectual property rights of others.

Let me give you an example. If party A owned a patent to a bike, and party B owned a patent to a wheel, party A would not be able to sell a bike with wheels as that would infringe B’s patent. (By the same token, party B would also be unable to sell bikes as that would infringe A’s patent).

In this simplistic case, the sensible solution would likely be some cross-licence or assignment agreement.

This demonstrates that, whether or not a party is a patent owner, it is good practice to carry out an FTO search prior to launch of a new product.

And it’s not something that should only be thought of immediately prior to product launch – in many instances it is useful to carry out FTO searches regularly during the research and development process.

This way, if any conflicting rights are identified, it may still be possible to design around them and so avoid infringement.

It can also be a comfort for investors to see that preliminary investigations have revealed that there are no barriers to market.

Don’t forget that IP rights are specific to different jurisdictions, so an FTO search should be carried out in each particular country or region in which you want to operate.

Patent infringement can be a minefield so if you’re in any doubt as to your rights, or for the greatest assurance when it comes to protecting your products, engage the services of a professional advisor, such as an experienced patent attorney, to rigorously evaluate the information gathered and then provide an opinion on the potential risks of a commercial launch.

Mairi Rudkin is a Patent Attorney with Marks & Clerk