Kerry Chrysiliou of CHRYSLEGAL has a background of conducting major patent litigation cases in the Federal Court in NSW as well as interstate. The firm’s expertise and advantages to clients litigating using the firm’s services has been recognised by Kerry’s selection in the role of recommended firm for patent litigation by Global Law Experts.
Broadly, once a patent is granted if a third party uses all of the features contained in at least one of the claims in a patent, then the patent is infringed. This applies to a situation which all the features of the patent claim are used with other features which produce a better product or result than would have been achieved under the patent claim. This is further qualified by the fact that the adoption of immaterial variations, such as leaving out an immaterial part of a claim and replacing it with another part, does not avoid infringement. However the task of determining what is an immaterial variation or an element of the claim which is an immaterial or non-essential part can be a complicated one. There are a number of defenses and possible cross actions to an infringement action.
With patent infringement proceedings the issue of infringement is decided on the basis of how the claims (the rights conferred by the patent) contained in the patent are to be interpreted. In the long and complex continuing saga of patent litigation involving Infa and Britax (in which CHRYSLEGAL’s predecessor has been acting) the Federal Court observed that the claims must be construed in the context of the specification as a whole and it is a matter for the Court taking into account what would be understood by the notional skilled addressee as at the relevant date.
In relation to proceedings for revocation of a patent, a patent may be revoked after it has been granted. This normally arises as a counter-claim to a claim of patent infringement, but a person is able to file proceedings for revocation of a patent independently of any infringement action.
Revocation proceedings normally arise by way of a counter-claim to a claim of infringement. It can also arise by way of an independent action seeking revocation on grounds that may include:
- That the patent holder is not the inventor or has a legal right to claim the invention so as to be entitled to a grant to the patent.
- That the invention is not a patentable invention under the Patents Act.
- That a condition contained in the patent has been breached.
- That the Patent was obtained by fraud, false suggestion or misrepresentation.
- That the patent specification does not comply with the Patents Act in relation to sufficiency and fair basis. In this regard what is looked is:
(a) if there is a sufficient description of the invention that enables the reader to produce something from the claims without having to embark on a prolong or inventive study, and
(b) if the claim is fairly based, namely that it is not wider than what is disclosed in the patent specification
