Direct and indirect patent infringement

Direct infringement

Under section 60(1) of the Patents Act, a patent is infringed if any of the following acts are carried out in the UK without the consent of the proprietor: 

• where the invention is a product, a person (or company) makes, disposes of, offers to dispose of, uses or imports the product or keeps it, whether for disposal or otherwise;
• where the invention is a process, a person (or company) uses the process or offers it for use in the United Kingdom when it is known, or it is obvious to a reasonable person in the circumstances, that its use there without the consent of the proprietor would be an infringement of the patent;
• where the invention is a process, a person (or company) disposes of, offers to dispose of, uses or imports any product obtained directly by means of that process or keeps any such product, whether for disposal or otherwise.

These are all acts of 'direct' infringement.

It is also possible to directly infringe a patent by the use of a variant to a patented product or process. This was confirmed by the UK Supreme Court in 2017 in a case between Eli Lilly and Company and Actavis UK Limited and others.

In that case, the court considered variants of cancer drug pemetrexed disodium that stemmed from other salt forms of pemetrexed directly infringed on the patent claimed because they achieved the same result in substantially the same way.

The court reached that conclusion after reformulating the so-called 'Improver' questions as follows:

1. Notwithstanding that it is not within the literal meaning of the relevant claim(s) of the patent, does the variant achieve substantially the same result in substantially the same way as the invention, i.e the inventive concept revealed by the patent?
2. Would it be obvious to the person skilled in the art, reading the patent at the priority date, but knowing that the variant achieves substantially the same result as the invention, that it does so in substantially the same way as the invention?
3. Would such a reader of the patent have concluded that the patentee nonetheless intended that strict compliance with the literal meaning of the relevant claim(s) of the patent was an essential requirement of the invention?

Indirect patent infringement

Section 60(2) of the Patents Act defines acts which may not directly involve patented products or processes but would nevertheless be considered infringing acts. Acts of 'indirect' infringement occur when, without the consent of the proprietor, a person (or company):

• supplies or offers to supply in the United Kingdom a person other than a licensee or other person entitled to work the invention with any of the means, relating to an essential element of the invention, for putting the invention into effect when he or she knows, or it is obvious to a reasonable person in the circumstances, that those means are suitable for putting, and are intended to put, the invention into effect in the United Kingdom.

In February 2018, the Supreme Court heard arguments in a case between Warner-Lambert Company LLC and Generics (UK) Ltd t/a Mylan and another in relation to infringement of a second medical use claim, detailed in a Swiss claim form, by a product sold with the infringing indication carved out.

Issues of both direct and indirect infringement have been argued in the case to date, as well as what steps in addition to carving out may be needed to avoid infringement.

A decision in the case is awaited. It is not yet clear whether section 60 of the Patents Act will need to be amended to deal with such issues/exemptions or if the Supreme Court will give clear guidance on what the word 'for' means in 'suitable for' in the context of indirect infringement in such circumstances.

Contributory infringement

There is also a common-law offence of contributory infringement. Under the common law there are two forms of contributory infringement, one where it can be shown that a party assisted an act of direct or indirect infringement as part of a 'common design' with the infringer. The second is where a person can be found liable under common law, for inducing or procuring someone else to infringe a patent.