Patent infringement—defences and permitted acts
Patent infringement—defences and permitted acts

The following IP guidance note provides comprehensive and up to date legal information covering:

  • Patent infringement—defences and permitted acts
  • Invalidity
  • Permitted acts
  • Right to continue non-infringing use (third party rights)
  • Exhaustion of rights
  • Partial defences (restriction of remedies)
  • ‘Gillette’ defence (squeeze argument)
  • Competition defences

There are various acts which would otherwise constitute infringement of a patent under the Patents Act 1977 (PA 1977) that are permitted under other parts of PA 1977, other UK Acts and a number of European Directives. This Practice Note discusses the various defences to patent infringement allegations, as well as activities that are considered to be exempt or exceptions to patent infringement (permitted acts).

As of exit day (31 January 2020) the UK is no longer an EU Member State. However, in accordance with the Withdrawal Agreement, the UK has entered an implementation period, during which it continues to be subject to EU law. This has an impact on this Practice Note. For further guidance, see Practice Note: Brexit—IP rights.

Invalidity

The risk of suing for infringement

There is no presumption of validity of a UK patent. It is a common response and a defence for a defendant to infringement proceedings brought by a patent owner, to challenge the validity of the patent in suit and counterclaim for a declaration of invalidity and an order for revocation of the patent. Revocation means that the patent will be removed from the register of patents. For further reading on validity, see Practice Note: Patent invalidity and revocation.

Permitted acts

There are certain acts which are permitted notwithstanding the act would otherwise