Own-it | Intellectual Property Know-How for Creative Businesses

Knowledge

Someone has copied my invention – what should I do?

Published 12.07.10 at 14:55

If someone has copied your invention without your permission then there may be several courses of action you can pursue to seek redress. Which options are open to you will depend on the IP protection that covers your invention. In general inventions can be protected by patents provided the invention meets the criteria for obtaining a patent. However, if you have not obtained a patent to protect your invention and it is in the public domain, it will not be new and therefore is not capable of patent protection. A patent application is not a right that can be enforced against an infringer, you can only take action once your patent has been granted.

Where your invention is protected by a patent
A patent is a monopoly right over an invention, ie it gives you the right to prevent others exploiting your invention commercially. You do not need to show copying to prove infringement; only that the third party's product falls within the scope of your patent.  

Broadly speaking, infringement of a patent occurs where a third party makes, uses or sells a product which falls within the scope of your patent, uses a process, or sells or uses a product made according to that patented process.

Whether a court would find that there has been infringement of your patent will be highly dependent on the scope of the claims of your patent. However, please not that it is common for the third party to challenge the validity of your  patent in response to a claim for infringement against them. If successful, the patent will be revoked.

Defences
Aside from disputing the validity of the patent, there are a number of possible defences that someone using your patented invention might have against a claim of infringement:

  • The using is done privately and for non-commercial purposes.
  • The using is done for experimental purposes relating to the subject matter of the invention.
  • They were already independently using the product or process which your patent protects before the date of  your patent.

Taking action

  1. If you decide to write to the alleged infringer, care should be taken in wording your letter as it is possible for the alleged infringer to bring an action for threats against you. Any letter that you do send should be a mere notification of your rights providing the patent number and attaching a copy of the patent itself. Such a notification should not refer to their infringement.
  2. Alternatively, a relatively quick and cheap way to put some pressure on the alleged infringer is to apply to the UK Intellectual Property Office (UK IPO) for an 'opinion' as to infringement. The request for an opinion must provide full details of the alleged infringer's product to enable the UK IPO to give an informed opinion. This is particularly important as there is no further opportunity to provide additional details after submitting the request. However, the opinion is not binding and if it is not favourable or does not result in the alleged infringer ceasing their activities you may still need to begin Court proceedings.
  3. You may also bring Court proceedings for patent infringement. If the court finds that there has been an infringement under the above criteria and the copier has no defence then it may grant you one of the following remedies:
  • An injunction restraining the copier from continuing to copy.
  • An order for delivery to the court / destruction of the offending goods.
  • A declaration that the patent is valid and has been infringed.
  • Damages (ie a cash payment to make up the amount you have lost through the copier's wrongful copying).
  • An account of the profits the copier has made for itself from the copying (but not as well as damages).

Where your invention is not protected by a patent
You may be able to enforce one of the following rights against the alleged infringer if your invention fulfils the requirements for protection:

  • UK unregistered design right: protects the shape of new and original products but does not protect the surface decoration;
  • Community unregistered design right: protects features of a new and original product including the shape colours, textures, materials.
  • Passing off: protects the get-up (the appearance of the packaging) where there is a reputation associated with that get-up.

Content supplied by College of Law students at the Moorgate Centre supervised by Tim Harris of Bird & Bird LLP. Photo credit: Woodleywonderworks

 

Please note that this article discusses the legal position in the UK at the time of publication. It provides general information only but is not to be regarded as legal advice. You must take advice from a specialist lawyer in relation to your specific circumstances. Further, you should seek additional legal advice when dealing with parties based in other parts of the world or works originating from other parts of the world as the legal position may vary.

Comments

  1. registered design

    I have registered my design and wil be showing my product in the market place shortly. I believe I may need an additional protection in case the idea is modified and used by another company.
    Please can you advise me of the security I would need in order to protect my idea before going public
    Thank you

    Posted by jacqueline deadman on 21.12.10 at 15:17

Login

You must be logged in to post comments. Please sign in below or register here.

Search

Knowledge Search
    • Last Week
    • No Limit
    • Past 30 days
    • Today
    • Last Month
    • Any Sector
    • Advertising & Marketing
    • Architecture
    • Design
    • Designer Maker
    • Digital/New Media
    • Fashion
    • Film & Video
    • Museums & Galleries
    • Music
    • Performing Arts
    • Photography
    • TV & Radio
    • Visual Arts
    • Writing & Publishing

Related content

  • 20th Century Fox infr...

    Comic Enterprises Limited ('CE') runs a number ... view story

    story
  • Legal Issues Relating...

    It has been long established in English law tha... view article

    article