Defences to patent infringement

The most common defence to patent infringement is to challenge the validity of the patent. Additionally, Australian patent law includes some specific exemptions to infringement.

As a general rule, an Australian patent is infringed by making, using, selling and/or importing a product or process covered by the patent without the patent owner’s permission (more on what constitutes patent infringement and patent coverage). The following defences are exceptions to this general rule:

• Use of a patented invention in or on foreign vessels, aircraft or other vehicles may be excused if the vehicle comes into Australia only temporarily or accidentally.
• The “prior user defence” allows people (and companies) to do what they were doing (or had taken definite steps towards doing) immediately before a patent’s “priority date”. The priority date is usually the filing date of the first patent application linked to the patent. This defence is most relevant to secret prior use, because typically any relevant non-secret prior use could form the basis of a challenge to the validity of the patent.
• The “regulatory approval defence” allows people (and companies) to apply for regulatory approval without infringing patents. For example, certain pharmaceutical patents are not infringed by certain actions solely for “purposes connected with obtaining the inclusion in the Australian Register of Therapeutic Goods of goods [or] similar regulatory approval under a law of a foreign country or of a part of a foreign country”.
• The “experimental use exemption to infringement” allows certain acts “for experimental purposes relating to the subject matter of the invention”.

Lack of copying is NOT a defence to patent infringement – e.g. a patent can be infringed by independently creating something sufficiently similar to the invention covered by the patent.

Likewise, lack of knowledge of a patent is NOT a defence, although innocent infringement may attract different penalties.

Please contact us to discuss how we can assist.