What should I do?

Being accused of patent infringement by a patentee can be a stressful situation for any individual or business. For some, the initial reaction may simply be to agree to the patentee’s demands to cease the alleged infringement. However, if the allegation of patent infringement is without merit, or if it transpires that the patent is invalid, it may be possible to continue the commercial activities that sparked the allegation.

Patent infringement – what does the patentee need to prove?

A patentee has the exclusive right to ‘exploit’ a patented invention. The Patents Act defines ‘exploit’ as making, selling, hiring, using, offering to make, sell or hire, importing into Australia or otherwise disposing of the patented invention. If someone other than the patentee has exploited the patented invention without the patentee’s authorisation, patent infringement may have occurred.

Patent infringement is assessed by comparing a product or process to the wording of the claims of a granted patent. The product or process will infringe the patent if it takes each and every essential features of a patent claim, assuming that the claim is valid. Patent infringement occurs if only a single claim of a patent is infringed. A patentee will need to prove that all essential elements of the patent have been taken by the accused patent infringer.

First step – obtaining an infringement opinion

If you have been accused of patent infringement, the first step should be to work out whether the allegation has merit. This is typically done by conducting an investigation into whether or not your product or process falls within the scope of the claims of the patent. The preparation of this infringement opinion is a specialised task, and is usually performed by a patent attorney.

If the infringement opinion indicates that your product or process does not infringe the patent, then it may be possible to simply dismiss the allegation. However, if the infringement opinion indicates that there is an infringement, an alternative strategy may be required.

What exemptions are available to an accused patent infringer?

The Patents Act provides for certain situations in which the unauthorised use of a patented invention may be exempt from infringement. These exemptions include:

Prior use

Where the accused patent infringer has exploited the product or process before the priority date of the patent and has taken definite steps to exploit the product or process in Australia, patent infringement may not have occurred.

For this exemption to apply the accused patent infringer must not have, except temporarily, stopped exploiting the product or process or abandoned the steps to exploit the product or process in Australia.

Obtaining regulatory approval

An exemption from patent infringement is potentially available where a person exploits a pharmaceutical invention for the purpose of obtaining the inclusion of goods in the Australian Register of Therapeutic Goods or similar foreign regulations. Although the goods in question must be intended for a therapeutic purpose, they must not be medical or therapeutic devices as outlined in the Therapeutic Goods Act 1989.

Similarly, an exemption to patent infringement exists where a person exploits a patent solely in connection to obtaining an approval required by a Commonwealth, State or Territory law or a law of another country.

Experimental use

If you have used a patented invention for experimental purposes such as trials or tests, you may be able to establish the exemption of experimental use.

However, for this exemption to be successful, the experimental purpose must relate to the subject matter of the invention. That is, you can only use the patented invention to discover things related to the patent.

For example, if the patented invention is a particular stove, it would be impermissible to use the stove to invent a new recipe. Rather, the experimental use of the stove (or another patented invention) would include, but not necessarily be limited to such as:

  • determining the properties of the invention;
  • determining the scope of a claim relating to the invention;
  • improving or modifying the invention;
  • determining the validity of the patent or a claim relating to the invention; or
  • determining whether the patent for the invention would be, or has been, infringed by the doing of an act.

Lack of knowledge of the patent or lack of intent to infringe the patent are not defences to patent infringement.

Patent validity

If no defences to infringement are available under the statutory exemptions provided by the Patents Act, the next step would be to determine whether the patent was validly granted. This is usually done by locating documents that were published before the priority date of the patent, but that disclose the features of the invention as claimed in the patent.

If any such documents can be located (either because they are known to the accused infringer, or through conducting a search for relevant documents), it may be possible to resist an allegation of patent infringement on the grounds that the patent is not valid because it lacked novelty or inventive step at the time of filing.


In summary, being accused of patent infringement doesn’t necessarily mean that you need to immediately cease your allegedly infringing commercial activities.

Instead, a thorough assessment of the validity of both the allegation and the patent on which the allegation is based should be made. In this way, a strategy that best protects your business can be formulated.