Manual of Patent Practice

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Section 62: Restrictions on recovery of damages for infringement

Sections (62.01 - 62.13) last updated April 2015.

62.01

This section relates to certain circumstances in which the remedies for infringement of damages and of an account of profits are not available or may be refused by the court or comptroller, in proceedings under s.61 (or s.69).

62.02

s.69(3) is relevant.

Section 62(2) and (3) do not apply to infringement of the rights conferred by s.69 in respect of published applications under the 1977 Act. For the applicability of s.62 in relation to European patents, see 60.02.

 
Section 62(1)
In proceedings for infringement of a patent damages shall not be awarded, and no order shall be made for an account of profits, against a defendant or defender who proves that at the date of the infringement he was not aware, and had no reasonable grounds for supposing, that the patent existed; and a person shall not be taken to have been so aware or to have had reasonable grounds for so supposing by reason only of the application to a product of the word “patent” or “patented”, or any word or words expressing or implying that a patent has been obtained for the product, unless the number of the patent or a relevant internet link accompanied the word or words in question.
 
Section 62(1A)
The reference in subsection (1) to a relevant internet link is a reference to an address of a posting on the internet—

(a) which is accessible to the public free of charge, and

(b) which clearly associates the product with the number of the patent. Ignorance of existence of patent.

62.03

s.29 is relevant.

The court or the comptroller cannot award damages or make an order for an account of profits against an innocent infringer. However, the onus is on the infringer to prove his innocence, i.e. that at the date of the infringing act he was not aware, and had no reasonable grounds for supposing, that the patent (or published application for a patent) existed. The test thus concerns only ignorance of the existence of the patent and not failure to appreciate that an act committed by him might constitute an infringement. If the infringer had no actual knowledge, the existence of reasonable grounds must be judged in the light of all the circumstances at the time of the infringement; the test is objective (Lancer Boss v Henley Forklift [1975] RPC 307). In Texas Iron Works v Nodeco [2000] RPC 207 for example, the applicant was held not to be deemed to be aware of the patent until it had been sent a warning letter. The infringing act in question may have been committed either after grant of the patent or between publication of the application and grant.

62.04

s.110 is relevant.

The fact that a product is marked with wording to the effect that it is patented is insufficient to establish that other persons should be taken to be aware of the patent, unless either the patent number is quoted in the marking, or (from 1st October 2014) a relevant web address is quoted in the marking. Marking a patented product in either of these ways is sufficient to establish that other persons should be taken to be aware of the patent. The web address must be of a webpage that is freely accessible to the public and clearly associates the patent number with that product. The product must be clearly identified on the webpage, e.g. by including any relevant model numbers and variants that exist. Where a dispute arises, it will be for the courts to decide whether sufficient notice had been provided. It is an offence to dispose of for value a product marked with wording claiming that it is patented if the claim is false.

Section 62(2)

 
Section 62(2)
In proceedings for infringement of a patent the court or the comptroller may, if it or he thinks fit, refuse to award any damages or make any such order in respect of an infringement committed during the further period specified in section 25(4) above, but before the payment of the renewal fee and any additional fee prescribed for the purposes of that subsection.

Late renewal of patent

62.05

Under s.25(4), if a patent lapses due to non-payment of a renewal fee by the renewal date but that fee together with an additional fee is paid by the end of the sixth month after that date, the patent is treated as if it had never lapsed (see 25.12 to 25.14). However, the court or comptroller has discretion to refuse to award damages or to order an account of profits in respect of an infringing act committed in the intervening period.

Section 62(3)

 
Section 63(3)
Where an amendment of the specification of a patent has been allowed under any of the provisions of this Act, the court or the comptroller shall, when awarding damages or making an order for an account of profits in proceedings for an infringement of the patent committed before the decision to allow the amendment, take into account the following -

(a) whether at the date of infringement the defendant or defender knew, or had reasonable grounds to know, that he was infringing the patent;

(b) whether the specification of the patent as published was framed in good faith and with reasonable skill and knowledge;

(c) whether the proceedings are brought in good faith.

Pre-amendment infringement

62.06

Section 62(3) applies where the infringing act is committed before a decision to allow amendment of the specification of the patent in question. When awarding damages or making an order for an account of profits in such circumstances, the court or comptroller is required to take into account the various factors set out in paragraphs (a) to (c) of that provision. These factors were modified and expanded upon by the Intellectual Property (Enforcement, etc.) Regulations 2006 (S.I. 2006 No. 1028), which came into force on 29 April 2006, in order to implement Directive 2004/48/EC on the enforcement of intellectual property rights. (See also paragraphs 63.04 to 63.06).

62.07

Paragraph (a) requires the court or comptroller to take account of the defendant’s actual or constructive knowledge that he was infringing the patent. This reflects the requirement in article 13.1 of the Directive that, in such circumstances, the proprietor is entitled to damages appropriate to the actual prejudice suffered. For this reason, the absolute bar on damages that was imposed in section 62(3) previously, in the circumstances where the specification was not framed in good faith and with reasonable skill and knowledge, was not compatible with the Directive. Thus no absolute bar on damages is maintained, but paragraph (b) requires account to be taken of the framing of the specification when determining what level of award is appropriate.

62.08

Paragraph (c) requires the court or comptroller to take into account whether the infringement proceedings are brought in good faith. Where it is shown that the proprietor knew that the infringed claim, before amendment, was invalid, the court or comptroller can take that matter into account when determining the appropriate level of damages.

Good faith; reasonable skill and knowledge

62.09

Aldous J considered in Hallen Co v Brabantia (UK) Ltd [1990] FSR 134 that good faith meant that the specification was framed honestly with a view to obtaining a monopoly to which, on the material known to the draftsman, he believed the applicant was entitled. The words “skill and knowledge” were observed to be a composite phrase relating to the competence employed in framing the specification, which should be in the form which a person with reasonable skill in drafting patent specifications and a knowledge of the law and practice relating thereto would produce.

62.10

In Ronson Products Ltd v A Lewis & Co (Westminster) Ltd [1963] RPC 103 at page 138, it was observed that where the drafting of the specification departs in a material respect from the intention of the applicant, and this despite the transmission by the applicant to his patent agent of all relevant information, an acknowledgement by such agent that the way he expressed himself in the passage in question was wrong in view of the information he had received must establish an absence of reasonable skill and knowledge. On the other hand in Molnlycke AB v Procter & Gamble Ltd [1994] RPC 49 Morritt J observed (at p.106) that even if the reasonable knowledge required includes details of the invention, it is irrelevant that the draftsman was unaware of the best or optimum method for its performance so long as the description is sufficient.

62.11

In Page v Brent Toy Products Ltd (1950) 67 RPC 4 at page 21, the agent who drafted the specification in suit said that he had initially put in a “fairly broad claim” to “draw the Patent Office search report” and had modified the claim in accordance with what the report disclosed; and that this was the practice usually adopted by agents. The claim in question was held (although invalid) to have been framed in good faith and with reasonable skill and knowledge.

62.12

The patent in Nutrinova Nutrition v Scanchem UK (No.2) [2001] FSR 43 concerned a process for making a particular compound, but also included claims to the production of an intermediate compound. It was held that it was not bad faith to file the specification knowing of an arguable case of obviousness in respect of the claims to the intermediate compound. Although these claims were subsequently found to be obvious, the patent agents would have been failing in their duty had they not tried to cover what was a novel intermediate compound.

62.13

The Court of Appeal held, in Kirin-Amgen Inc. v Transkaryotic Therapies Inc. [2003] RPC 3, that any mistake in the specification on the part of the draftsman must be considered in the context of the whole specification, making due allowance for any difficulty that the draftsman had and for the importance of the passage said to be mistaken. If a specific passage has no importance, then, as held by the Court of Appeal in Unilin Beheer BV v Berry Floor NV (No. 2) [2006] FSR 26, even if it is negligently wrong, the specification is still drafted with reasonable skill and knowledge. Certain passages of the description not amended in conformity with amended claims could not in this case mislead the skilled reader and did not make the claims unclear; and if a specification retains such irrelevant and harmless material, however much there may be, it is still drafted with the relevant skill and knowledge for complying with the law and providing accurate technical information. That would not be the case where the unamended passages of the description made it difficult to decide on the meaning of the claim and had been left in through negligence.