A patent is a legally enforceable intellectual property (IP) right allowing you to exclusively exploit your invention for a period of time. This prevents others from using or claiming your invention. Patent protection may apply to an invention if it is novel, involves an inventive step and is non-obvious or useful. Acquiring a patent ensures you have a monopoly on your invention and can commercialise it. The way to keep your monopoly is to take any patent rights infringement seriously.
Establish that You Own the IP
First, you have to establish that you own the IP. To prove this, you must be registered as the applicant or owner with IP Australia, or have appropriate documentation such as an IP Licence or assignment agreement.
It is ultimately up to you as the IP owner to enforce your IP rights. IP Australia will not police your rights or commence legal proceedings on your behalf.
Seeking to enforce your legal rights will help to prevent a patent rights infringement and protect your IP’s commercial value.
Identifying the Patent Rights Infringement
It is also important to work out what rights are being breached. The type of patent protection you have may determine the correct action to take.
If you do not have an enforceable patent such as an innovation patent or provisional patent, you will need to apply for patent examination to ensure your rights are enforceable under the Patents Act 1990.
Patents can apply only to a small part of a product. In this case, it would not be a patent rights infringement if others copied parts of the product not covered by the patent. However, this could breach the tort of passing off or be an act of misleading and deceptive conduct under Australian Consumer Law (ACL).
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Develop an IP Strategy
Your best chance of enforcing your IP rights is developing an IP infringement strategy with an IP lawyer. An IP strategy ensures that you enforce your rights in a way that suits your company and its commercial needs. For example, commencing legal proceedings may not be the best option for your company once you factor in the cost and chance of success. Your IP strategy should include a plan of action for:
- proving ownership of your patents;
- reviewing infringements;
- considering your budget and appetite for potentially expensive enforcement proceedings; and
- setting clear and consistent goals for your company and its IP.
As mentioned, if a patent rights infringement has occurred, you may also have a claim relating to passing off, or misleading and deceptive conduct.
Passing Off
Passing off is when someone passes off their goods or services as being yours. This behaviour damages your goodwill and reputation because it falsely suggests there is some connection between you and the other person’s products or business.
If someone else is wrongfully using your patents or other IP, an act of passing off could be occurring.
Misleading and Deceptive Conduct
The ACL prohibits a person from engaging in business conduct that is, or is likely to be, misleading or deceptive. Although originally intended as a consumer protection, the misleading and deceptive conduct provision extends to a broad range of business activities (including dealings with competitors, advertising activities and commercial negotiations).
You may have a claim if a competitor is misleading or deceiving the public by infringing your patent rights.
Insurance
As stated above, your budget can determine whether you go down the path of enforcing your company’s patent. You may like to talk to an insurance broker and consider IP Insurance for this reason. IP Insurance provides protection for legal costs for enforcing both your claims against infringers and claims made against your company.
Key Takeaways
Acquiring a patent ensures that you will have a monopoly over your invention. If infringement occurs, you may need to take enforcement action to protect your company. It is your job to police your patent and consult an IP Lawyer before approaching your infringer. This will allow you to determine your next steps and make the best decision for your business.
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