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Note from 25 August 2021, the innovation patent will cease to exist. After this date, you can only file a divisional innovation patent if it is based on a previously filed patent. Read more about this change in our article.

A patent is a set of exclusive rights granted over any device, substance, method or process that is new, inventive and useful (an Invention), for a limited time after a successful application process. Similar to trade marks, it is a registrable right granted by the country of registration. An applicant for a patent has to disclose the substance of the invention, making the information available to the public. Consequently, some inventors make the business decision not to disclose their patents, instead opting to keep their invention confidential as a trade secret.

Over the past weeks, we explored the topic of patents and its application process in Australia. Last week, we explored patent opposition and the opposition process. For the final part of this series, we will examine issues associated with patent infringement.

What is patent infringement?

Once you are granted a patent over your Invention, you have the exclusive right (subject to any existing licence, distribution or co-ownership arrangements) to exploit your patent. If another entity is exploiting your registered patent without your permission, they are infringing your patent rights, and you may wish to commence infringement proceedings against such an individual.

When to commence infringement proceedings?

The right to commence infringement proceedings comes from section 120 of the Patent Act, which also states that an infringement proceedings must be started within:

  • 3 years from the day on which the relevant patent is granted; or
  • 6 years from the day on which the infringing act was done;

whichever period ends later.

Establishing infringement

In determining whether the patent has been infringed, the court will examine and interpret the patent specifications. The patent specification will contain your patent Claims (recall that Claims set out the legal boundaries of your Invention’s monopoly). This is a technical examination where the court will determine what are the essential integers of the patent claim, and whether the alleged infringer has taken such essential integers before establishing whether infringement has occurred.

Infringement Exemptions

The Patent Act provides for limited exemptions to infringement. No infringement action can be brought against the alleged infringing party if their act falls under one of these exemptions. Generally, these exemptions are:

  • prior use: the alleged infringer exploited the product before the patent’s Priority Date;
  • to obtain regulatory approvals; and
  • for experimental purposes: this statutory exemption follows a common law ruling which held that acts for experimental purposes (without any commercial elements) are exempted from infringement actions.

Groundless Threats

A person aggrieved by a threat of patent infringement and believes such threats are groundless, seek the following recourse from the court:

  • seek a declaration;
  • injunction;
  • damages; and
  • recover damages.

As previously discussed, an attempt to rely on an Innovation Patent which is not yet certified in an infringement action will be considered unjustified and a groundless threat.


If you are using a patented Invention, it is prudent to first acquire permission, even if your use may fall under an infringement exemption. Further, any permitted use over a patent should be agreed in writing by written contract. If there is security over a patent, such security should also be registered (for example under the PPS register).

Unfortunately, securing and protecting a patent is not a simple or straightforward process. Our team of IP lawyers and patent attorneys have extensive experience in this area and would be happy to assist with protecting your invention. To speak with a member of our team today, contact LegalVision on 1300 544 755.


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