Manual of Patent Practice

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Section 69: Infringement of rights conferred by publication of application

Sections (69.01 - 69.08) last updated: April 2007.

69.01

s.69(2)(a) is also relevant

This section provides that the publication of an application before grant may give rise to a right to bring proceedings for infringement though that right cannot be enforced until after grant. For the purposes of s.69, grant occurs when notice of grant is officially published, see 25.02.

69.02

s.74(7) is also relevant

Infringement proceedings under s.69 may be before the court or before the comptroller and should follow the same procedure as for infringement after grant, see the chapter on s.61. Where proceedings are pending in the court under any of sections 58, 61, 69, 70, 71 and 72, no proceedings may be instituted before the comptroller under s.69 without the leave of the court (see 74.07).

69.03

In s.69, an application means one for a patent granted under the 1977 Act or one that is so treated, i.e. by virtue of s.78(1), s.79 or s.89(1) in the case of applications for a European patent (UK), international applications for a European patent (UK) and international applications for a patent (UK) respectively. Similarly publication is under s.16 or under the relevant provision of the EPC or PCT so that it is treated under s.78(3)(d), s.79 or s.89B(2) as publication under s.16, subject to the language requirements of s.78(7) (if in force), s.79(3) and s.89B(3).

69.04

[deleted]

69.05

s.130(7) is also relevant

Section 69 is one of the sections so framed as to have, as nearly as practicable, the same effect in the UK as the corresponding provisions of the EPC, CPC and PCT. The provisions in question are EPC Article 67, CPC Article 34 (renumbered as Article 32 [1989]) and PCT Article 29.

 
Section 69(1)
Where an application for a patent for an invention is published, then, subject to subsections (2) and (3) below, the applicant shall have, as from the publication and until the grant of the patent, the same right as he would have had, if the patent had been granted on the date of the publication of the application, to bring proceedings in the court or before the comptroller for damages in respect of any act which would have infringed the patent; and (subject to subsections (2) and (3) below) references in sections 60 to 62 and 66 to 68 above to a patent and the proprietor of a patent shall be respectively construed as including references to any such application and the applicant, and references to a patent being in force, being granted, being valid or existing shall be construed accordingly.

69.06

s.69(2)(a) is also relevant

From publication of the application until grant, the applicant has the same right as he would have had, if the patent had been granted on the day of publication, to sue for damages in respect of any act which would have infringed the patent. This allows proceedings to be brought (after grant) to recover damages in respect of such pre-grant infringements, subject to certain restrictions - see 69.07 and 69.08. In such proceedings, ss.60 to 62 and 66 to 68 apply to applications as if they were patents. In Spring Form Inc v Toy Brokers Ltd [2002] FSR 17 the court confirmed that, despite the explicit reference only to damages, in principle an account of profits is available as a remedy in respect of infringing actions under s.69.

 
Section 69(2)
The applicant shall be entitled to bring proceedings by virtue of this section in respect of any act only -
(a) after the patent has been granted; and
(b) if the act would, if the patent had been granted on the date of the publication of the application, have infringed not only the patent, but also the claims (as interpreted by the description and any drawings referred to in the description or claims) in the form in which they were contained in the application immediately before the preparations for its publication were completed by the Patent Office.

69.07

The applicant is entitled to bring such proceedings only if the act in question would have infringed not only the granted patent (if grant had been on the day of publication of the application) but also the claims in the form extant immediately before preparations for publication were completed. For that purpose, those claims are to be construed as interpreted by the description etc, ie in the same way as under s.125(1), see 125.02 to 125.06.

 
Section 69(3)
Section 62(2) and (3) above shall not apply to an infringement of the rights conferred by this section, but in considering the amount of any damages for such an infringement the court or the comptroller shall consider whether or not it would have been reasonable to expect from a consideration of the application as published under section 16 above, that a patent would be granted conferring on the proprietor of the patent protection from an act of the same description as that found to infringe those rights, and if the court or the comptroller finds that it would not have been reasonable, it or he shall reduce the damages to such an amount as it or he thinks just.

69.08

Section 62(2) and (3) impose restrictions on the recovery of damages for infringement where there is late renewal of the patent or amendment of the specification of the patent, and are not applicable here. However, damages are reduced by the court or the comptroller if it is considered that it would not have been reasonable to expect from the application as published that a patent conferring protection against the infringing act would be granted.