This, coupled with the defendant’s ability to counter-claim for the revocation of the patent, makes it essential to assess the validity of a patent before commencing infringement proceedings or threatening to do so.
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It is much easier to stop someone from copying your brand if it is registered as a trade mark. If you don’t have a registration, you have to prove your rights in the brand by proving a reputation, which is not always easy to do. Please visit the Trade Marks page for specific and detailed FAQs relating to trade marks.
You need to consider all the facts first. For example, you must be sure that you started using your brand first. If so, you can consider sending a demand to stop. If they don’t stop, you can take action against them in court for trade mark infringement (if you have a registered trade mark) or in some countries, passing off (if you don’t have a registered trade mark). Please visit the Trade Marks page for specific and detailed FAQs relating to trade marks.
Generally, a patentee as the right to exclude other people from making, using, exercising, disposing of, offering to dispose of or importing the patented invention in the country of registration. This means that the owner can enjoy the whole profit and advantage of the invention, whether it is a machine, article, product, method or process.
This may vary from country to country. In South Africa, only a patent-owner can institute infringement proceedings. In contrast, a license-holder or licensee has no independent right to institute infringement proceedings as the sole plaintiff/applicant.
Proceedings for the infringement of a South African patent must be instituted in the Court of the Commissioner of Patents against any person who, without the authority of the owner, performs any of the acts of infringement.
Infringement proceedings may be instituted at any time, subject to any country-specific exceptions that may apply. For example, in South Africa, no proceedings for infringement of a patent may be instituted within a moratorium period of nine months from the date of grant of the patent, but on good cause shown on application to Court, the Commissioner of Patents may grant leave to institute such proceedings at any time during this moratorium period.
A successful plaintiff/applicant in infringement proceedings is usually entitled to the following relief:
- An interdict (i.e. an injunction) ordering the defendant to refrain from further infringement. If the defendant continues to infringe the patent and ignores the interdict, they may be committed for contempt of Court.
- An order for the delivering up of any infringing product or any article or product of which the infringing product forms an inseparable part
- In lieu of damages, the plaintiff may be awarded an amount calculated on the basis of a reasonable royalty, which would have been payable by a licensee in respect of the patent concerned.
- Cost of suit
When sued for infringement, the defendant can plead non-infringement of the patent and/or that the patent is invalid. In addition, the defendant may by way of a counter-claim apply for the revocation of the patent on any one or more of the grounds of revocation. Further defences include the exhaustion of rights, the Gillette defence and that the alleged infringer is authorised. Ignorance of the existence of the patent is not a defence.
This will, of course, differ from country to country. In South Africa, it usually takes 12 to 18 months from instituting patent infringement proceedings to obtaining a judgment. In the event of an appeal, a decision in the Court of Appeal may take a further 12 to 15 months from noting an appeal of the judgment by the Commissioner of Patents.
It may not be possible to amend the specification and claims of a patent infringement proceedings have been launched.
Therefore, if an owner is aware of the invalidity of any of the claims of its patent, an amendment should be effected before commencing litigation.