Antonella Gutierrez February 6 2023 Can infringement be established when only part of a claim is reproduced? OMC Abogados & Consultores | Intellectual Property - Peru Antonella Gutierrez Intellectual Property BackgroundFactsFirst instanceSecond instanceCommentBackgroundOne of the most important rights granted to a patentee is exclusivity over their invention. Article 52 of Decision 486 of the Andean Community provides that:The patent grants the right to prevent third parties from performing any of the following acts without consent:(a) when the patent claims a product:(i) making the product;(ii) offering for sale, selling or using the product; or importing it for any of these purposes; and,(b) where the patent claims a process:(i) using the process; or (ii) perform any of the acts referred to in subparagraph (a) in respect of a product obtained directly by the process.Further, article 51 states that:the scope of the protection conferred by the patent shall be determined by the wording of the claims, and that the description and drawings, or, where appropriate, the deposited biological material, shall serve to interpret them.(1)According to articles 238 to 244 of Decision 486 of the Andean Community, the patent holder may make a complaint to initiate an infringement action against a third party that does not have the due authorisation to use or exploit a patented invention. Further, article 99 of Legislative Decree 1075 establishes what such a complaint must contain. Article 246 of Decision 486 provides that patent owners may request the National Institute for the Defence of Free Competition and the Protection of Intellectual Property (Indecopi) to:order the infringer to:cease the infringing acts;compensate for damages; andwithdraw the products resulting from the infringement from the market;prohibit the import or export of such products; andimpose precautionary measures.In cases of infringement, the authority can impose sanctions in two ways – namely, by issuing:a warning; ora fine of up to 150 Peruvian tax units (UIT).According to article 120 of Legislative Decree 1075, if the illicit profit obtained by the accused is higher than 75 UIT, the fine may be 20% of the gross sales or income received as a result of the infringing activity. Further, the authority will take into account, among other things, the procedural conduct of the accused and whether they have offended in the past, which is considered an aggravating factor.FactsAn example of the above legislative measure in action can be seen in the case of a utility model protecting "calibrators for shotcrete and calibrator holder". The owner, Saul Jenaro Párraga Orosco, brought an IP right infringement action against Elizabeth Mendizábal de Ricra, who sold construction and wood products, her main clients being companies in the mining sector. She had been reproducing and marketing the utility model without authorisation through her business, Centauro - Madera para la Minería ("Centauro - Wood for Mining"). The complainant requested, among other measures:the precautionary measures of immobilisation, confiscation and cessation of use of the products that were the subject of the complaint;an inspection; andthe imposition of a fine of 150 UIT.Mendizábal acknowledged service of the action, pointing out that her company had manufactured the calibrators years before the complainant. In 2010, it had designed, at the request of the company Pan American Silver Huaron, a wooden calibrator of one foot in diameter and two feet long, cut at an angle of 45 degrees and with a two- or three-inch headless nail embedded in it, in order to solve a problem of measuring the thickness of shotcrete.Mendizábal also alleged that the utility model did not comply with the novelty requirement. She requested not only the nullity of the patent,(2) but also that the injunctions against her be lifted, stating that she did not commercialise calibrator holders.First instanceThe Commission for Inventions and New Technologies declared the infringement action brought by Párraga to be unfounded,(3) based on the following reasoning:The calibrator manufactured and marketed by Mendizábal had all the characteristics of the calibrator defined by claim one.(4)Párraga had failed to show that Mendizábal also manufactured and/or marketed a calibrator holder, which claim one presented simultaneously with the calibrator. It could not, therefore, be concluded that the mere use of the calibrator analysed infringed the scope of protection of that claim.The importance of the calibrator holder of claim one was apparent from the protected claim, since the dependent claims two, four and five contained the features of the calibrator holder included in the main claim.It had not been established that Mendizábal had manufactured and/or marketed instruments that performed a similar function, manner or result as the calibrator holder in question, and infringement by equivalence was ruled out.Párraga lodged an appeal, stating that the Commission for Inventions and New Technologies had relied on improper grounds. The Commission's reasoning had left his right to exclusivity unprotected, despite the fact that he had proved that the calibrators manufactured and marketed by the defendant had the same characteristics as his invention. He also argued that the patent could not be limited in its scope of protection to the literal wording of the elements that made up claim one and that it was not appropriate to declare his complaint unfounded simply because he had not proved that the defendant also reproduced a calibrator holder.Mendizábal acknowledged the appeal, stating that she agreed with the decision of the first instance, among other things.Second instanceThe Specialised Chamber on Intellectual Property revoked the first-instance decision, and upheld Párraga's action against Mendizábal.(5) The Chamber:prohibited Mendizábal from manufacturing, distributing, offering for sale and marketing the calibrator;confiscated all units of the calibrator, both those that were complete and those in production; andimposed a fine of one (6.17) UIT on the defendant.The Chamber's reasoning was as follows:The evidence made it clear that the first instance had not committed an error of assessment.In the comparative examination between the calibrator used by the defendant (D2) and the patentee's device (D1), although D1 included a calibrator and a calibrator holder and D2 did not include a calibrator holder, the reproduction of the calibrator was sufficient to establish infringement of the utility model patent. This was due to the fact that in the patentability examination(6) which had supported the patentability of claim one, a comparative analysis with respect to only the calibrator was carried out in the novelty analysis.The calibrator holder was complementary in claim one. Therefore, claim one of the utility model patent was infringed by the defendant's reproduction of the calibrator.Although the calibrator holder had technical advantages, this did not affect the fact that the calibrator described in claim one alone had novelty and a technical advantage according to the patentability examination. Therefore, it was valid to consider the infringement only of the calibrator.CommentIf the holder of the utility model patent had considered the decision of the first instance and had not appealed, his rights would have been affected and he would not have obtained a reasonable ruling from the second instance. The Chamber declared his complaint well founded and imposed a penalty on the defendant.In this sense, the second-instance decision was correct. The Chamber did not limit itself to evaluating claim one and the importance of the calibrator holder, but took into account that both devices had the same characteristics and that the patentability examination was in respect of the calibrator. Therefore, as the calibrator was similar to that reproduced by the defendant, it could finally be determined that she had infringed the IP rights of the utility model registration holder.For further information on this topic please contact Antonella Gutierrez at OMC Abogados & Consultores by telephone (+51 502 6467 or +51 635 0641) or email ([email protected]). The OMC Abogados & Consultores website can be accessed at omcabogados.com.pe.Endnotes(1) "Deposited biological material" refers to the information provided in an international application in respect of the deposit of biological material in a depositary institution, or in respect of deposited biological material.(2) MU1194.(3) Resolution No. 000077-2021/CIN-INDECOPI.(4) "A gauge for measuring shotcrete and a gauge holder comprising a geometric wooden wedge (1) with a 45° diagonal cut at one end, a steel body (2) and a gauge holder, characterised in that the steel body (2) is embedded in the flat cylindrical base of the wooden wedge (1) and has different dimensions according to the geomechanics of the earth."(5) Resolution No. 0233-2022/TPI-INDECOPI.(6) ESR 74-2018.