CHAPTER VII

Infringement

47. —(1) Civil proceedings for infringement of a patent may be brought in the Court by the proprietor of the patent in respect of any act of infringement which he alleges he is entitled under sections 40 to 43 and section 45 to prevent and (without prejudice to any other jurisdiction of the Court) in those proceedings a claim may be made—

(a) for an injunction restraining the defendant from any apprehended act of such infringement;

(b) for an order requiring the defendant to deliver up or destroy any product covered by the patent in relation to which the patent is alleged to have been infringed or any article in which the product is inextricably comprised;

(c) for damages in respect of the alleged infringement;

(d) for an account of the profits derived by the defendant from the alleged infringement;

(e) for a declaration that the patent is valid and has been infringed by the defendant.

(2) The Court shall not, in respect of the same infringement, both award the proprietor of a patent damages and order that he shall be given an account of the profits.

48. —(1) In the application of sections 40 to 43 to a patent of which there are two or more joint proprietors each of the references therein to the proprietor shall be construed—

(a) in relation to any act, as a reference to that proprietor or those proprietors who, by virtue of section 80 or any agreement referred to in that section, is or are entitled to do that act without its amounting to an infringement; and

(b) in relation to any consent, as a reference to that proprietor or those proprietors who, by virtue of section 80 or any such agreement, is or are the proper person or persons to give the requisite consent.

(2) One of two or more joint proprietors of a patent may without the concurrence of the others bring proceedings in respect of an act alleged to infringe the patent, but shall not do so unless all the others are made parties to the proceedings as defendants, but any of the others who, pursuant to the requirements of this subsection, is made a defendant shall not be liable for any costs or expenses unless he enters an appearance and takes part in the proceedings.

49. —(1) In proceedings for the infringement of a patent damages shall not be awarded, and no order shall be made for an account of profits, against a defendant who proves that at the date of the infringement he was not aware, and had no reasonable grounds for supposing, that that patent existed, and a person shall not be deemed to have been so aware or to have had reasonable grounds for so supposing by reason only of the application to a product of the word “patent” or “patented” or any word or words expressing or implying that a patent has been obtained for the product, unless the number of the relevant patent accompanied the word or words in question.

(2) In proceedings for infringement of a patent the Court may, if it thinks fit, refuse to award any damages or make any order in respect of any infringement committed during an extension period specified in a request under subsection (3) of section 36 but before the payment of the renewal fee and any additional fee prescribed for the purpose of that subsection.

(3) Where an amendment of a specification of a patent has been allowed under this Act, no damages shall be awarded in any proceedings for an infringement of the patent committed before the date of the decision allowing the amendment, unless the Court is satisfied that the specification of the patent, as originally published, was framed in good faith and with reasonable skill and knowledge.

50. —(1) If in proceedings for infringement of a patent the validity of the patent is put in issue and it is found that the patent is only valid in part, the Court may grant relief in respect of that part of the patent which is found to be valid and infringed; provided that the Court shall not grant relief by way of damages or costs except in the circumstances mentioned in subsection (2).

(2) Where in proceedings for the infringement of a patent the plaintiff proves that the specification of the patent was framed in good faith and with reasonable skill and knowledge, the Court may grant relief in respect of that part of the patent which is valid and infringed, subject to the discretion of the Court as to costs and as to the date from which damages should be reckoned.

(3) As a condition of relief under subsection (1) or subsection (2) the Court may direct that the specification shall be amended to its satisfaction upon an application made for that purpose under section 38 , and such an application may be made whether or not all other issues in the proceedings have been determined.

51. —(1) Subject to the provisions of this section, the holder of an exclusive licence under a patent shall have the like right as the proprietor of the patent to take proceedings in respect of any infringement of the patent committed after the date of the licence, and in awarding damages or granting any other relief in any such proceedings the Court shall take into consideration any loss suffered or likely to be suffered by the exclusive licensee as a result of the infringement or, as the case may be, the profits derived from the infringement, so far as it constitutes an infringement of the rights of the exclusive licensee as such.

(2) In any proceedings taken by the holder of an exclusive licence by virtue of this section the proprietor of the relevant patent shall, unless he is joined as plaintiff in the proceedings, be added as defendant; provided that a proprietor added as a defendant in pursuance of this subsection shall not be liable for any costs unless he enters an appearance and takes part in the proceedings.

52. —(1) If in any proceedings before the Court the validity of a patent to any extent is contested and the patent is found by the Court to be wholly or partially valid, the Court may certify the finding and the fact that the validity of the patent was contested.

(2) Where any certificate has been granted under subsection (1), then if, in any subsequent proceedings before the Court for infringement of the patent or before the Court or the Controller for revocation of the patent, a final order or judgment is made or given in favour of the party relying on the validity of the patent, that party shall, unless the Court otherwise directs, be entitled to his costs as between solicitor and own client.

53. —(1) Where any person (whether entitled to or interested in a patent or not) by circulars, advertisements or otherwise threatens any other person with proceedings for infringement of a patent, any person aggrieved thereby may bring proceedings in the Court against him for any such relief as is mentioned in subsection (2).

(2) Unless in any action brought by virtue of this section the defendant proves that the acts in respect of which proceedings were threatened constitute or, if done, would constitute, an infringement of a patent, the plaintiff shall be entitled to the following relief, that is to say—

(a) a declaration to the effect that the threats complained of were unjustifiable;

(b) an injunction against the continuance of the threats; and

(c) such damages, if any, as have been sustained by him by reason of the threats.

(3) Proceedings may not be brought under this section as regards a threat to bring proceedings for an infringement alleged to consist of making or importing a product for disposal or of using a process.

(4) For the purposes of this section a notification of the existence of a patent or a patent application does not of itself constitute a threat of proceedings.

54. —(1) A declaration that the use by any person of any process, or the making or use or sale by any person of any product, does not and would not constitute an act of infringement of a patent may be made by the Court in proceedings between the person and the proprietor of the patent or the holder of an exclusive licence under the patent, notwithstanding the fact that no assertion to the contrary has been made by the proprietor or licensee, if it is shown that—

(a) the plaintiff has applied in writing to the proprietor or licensee for a written acknowledgement the effect of which, if given, would be similar to that of the declaration claimed, and has furnished him with full particulars in writing of the process or product in question; and

(b) the proprietor or licensee has refused or neglected to give such an acknowledgement.

(2) The costs of all parties in proceedings for a declaration made by virtue of this section shall, unless for special reasons the Court thinks fit to order otherwise, be paid by the plaintiff.

(3) The validity of a patent in whole or in part shall not be called in question in proceedings for a declaration made by virtue of this section, and accordingly the making or refusal of such a declaration in the case of a patent shall not be deemed to imply that the patent is valid.

55. —(1) Where a patent is granted for an invention, a person who in the State before the date of filing of the patent application or, if priority was claimed, before the date of priority, does in good faith an act which would constitute an infringement of the patent if it were then in force, or makes in good faith effective and serious preparations to do such an act, shall have the rights specified in subsection (2).

(2) The rights referred to in subsection (1) are the following:

(a) the right to continue to do or, as the case may be, to do the act referred to in subsection (1),

(b) if such act was done or preparations had been made to do it in the course of a business—

(i) in the case of an individual—

(I) the right to assign the right to do it or to transmit such right on death, or

(II) the right to authorize the doing of the act by any of his partners for the time being in the business in the course of which the act was done or preparations had been made to do it;

(ii) in the case of a body corporate, the right to assign the right to do it or to transmit such right on the body's dissolution;

and the doing of that act by virtue of this subsection shall not amount to an infringement of the patent concerned.

(3) The rights specified in subsection (2) shall not include the right to grant a licence to any person to do an act referred to in subsection (1)

(4) Where a product which is the subject of a patent is disposed of by any person to another in exercise of a right conferred by subsection (2), that other and any person claiming through him shall be entitled to deal with the product in the same way as if it had been disposed of by a sole proprietor of the patent.

56. —(1) After a patent has been granted the proprietor may bring civil proceedings in the Court for infringement of the patent application by any act committed in the period, beginning on the day after the date of publication of the application pursuant to section 28 and ending on the day before the date of publication of the notice of the grant of the patent, which he alleges he is entitled by virtue of sections 44 and 45 to prevent and in such proceedings a claim for damages may be made in respect of an alleged infringement.

(2) The provisions of sections 48 to 53 and section 55 relating to infringement of a patent shall apply, in so far as they are appropriate, to proceedings under this section.

(3) In considering the amount of any damages to be awarded in proceedings under this section, the Court shall consider whether or not it would have been reasonable to expect, from a consideration of the application as published under section 28 , that a patent would be granted conferring on the proprietor of the patent protection from an act of the same description as that found to have infringed those rights, and if the Court finds that it would not have been reasonable so to expect, it shall reduce the damages to such an amount as it thinks fit.