Is your patent being infringed?

A patent grants the owner (Patentee) exclusive rights to exploit the patented invention (as defined in the Patents Act 1990 (Cth) (Patents Act)) within Australia.  If another party uses the patent without the authorisation of the Patentee, they will infringe.  In this article we consider the high level issues to consider when attempting to determine whether a patent has been infringed.

What are the exclusive rights granted to the patentee

Section 13 of the Patents Act provides:

  • Subject to this Act, a patent gives the patentee the exclusive rights, during the term of the patent, to exploit the invention and to authorise another person to exploit the invention.
  • The exclusive rights are personal property and are capable of assignment and of devolution by law.
  • A patent has effect throughout the patent area.

The term “exploit” is defined in the Patents Act as including:

  • where the invention is a product—make, hire, sell or otherwise dispose of the product, offer to make, sell, hire or otherwise dispose of it, use or import it, or keep it for the purpose of doing any of those things; or
  • where the invention is a method or process—use the method or process or do any act mentioned in paragraph (a) in respect of a product resulting from such use.

Therefore, a Patentee has the exclusive right to do the following, or to authorise another to do the following in Australia:

  • manufacture or offer to make a patented product;
  • make the patented product or process available for sale or hire;
  • dispose of the product;
  • use or import the product; or
  • keep it for the purpose of doing any of these things.

Establishing infringement to the standard required by the Court

To establish that a patent has been infringed, the Patentee must prove the following:

  • they are the Patentee;
  • the alleged infringer acted without the Patentee’s authorisation;
  • the alleged infringer has exploited the invention as claimed by the patent; and
  • the infringement was performed within the “patent area” (being Australia).

Many of the above ‘elements’ are established simply, the key is whether the alleged infringer has exploited the invention which falls within the claims of the patent.  To establish this, the Patentee must prove that the alleged infringing product takes all the essential integers of the claims of the patent see (Doric Products Pty Limited v Asia pacific Trading (Aust) Pty Ltd [2017] FCA 849 at [38]).  As the Court in Doric said at [38]:

As a fundamental rule, the test for infringement is determined by the construction of the claim, and there will be no infringement unless the alleged infringer has taken all of the essential features of the claim

When will an invention take all the essential integers of a patent?

In order to understand this, it is important to first understand the structure of a patent itself.

Patent layout

A patent specification contains the body of the specification and the claims, generally with illustrations at the end.  The body of the specification explains the background of the patented invention, together with explaining how the patent differs from similar types of prior inventions, and gives instructions on how to produce the patented invention.  The patent will then end with claims (a patent must contain at least one (1) claim) which define the scope of the patented invention.

 What are the claims of the Patent?

A patented invention is defined by its claims (Kinabalu Investments Pty Ltd v Barron & Rawson Pty Ltd [2008] FCA 314 at [40]).  Therefore, a patent’s claims set out the features of the patent invention so that a product that falls within a claim is a derivative of the patented product. Typically, a patent’s claims will contain a number of features which make up the claim, known as integers.  For example, a claim for a patented hammer may include:

  • a wooden shaft;
  • such shaft being no longer than 30cm;
  • with a metal attachment at one end; and
  • such attachment containing a metal ball with a flat surface on the outer side.

This claim is therefore made up of different sub-elements.  These are its integers.

What is an essential integer?

Whether an integer is “essential” or not is generally determined by the patentee (Fresenius Medical Care Australia Pty Ltd v Cambra Pty Ltd [2005] FCAFC 220 at [45]).  An integer will usually be essential unless it does not materially affect the way the invention works.  Even if a feature does not materially affect the way the invention works, an integer is essential if it is evident from reading the patent that the feature is intended to be essential (Catnic Components v Hill & Smith Ltd  (1982) RPC 183).

Once the essential integers of a claim are ascertained, the Court will place itself in the position of a person skilled in the art to which the patent relates and determine whether or not the alleged infringing product contains each of the essential integers.  If it does, then it will infringe.

Remedies for infringement of a patent

If the Court determines that a patent has been infringed, the Patentee may elect to receive the following remedies:

While a party may seek a remedy by pursuing one or all of the three ‘levels’ of remedies, patent owners should be aware that their election between damages and an account of profits is a mutually exclusive decision – you cannot take both.

Further references on patent infringement


Patents can be extremely valuable tools to protect intellectual property.  If a Patentee believes a third party is exploiting their patent without their authorisation, they will need to determine whether infringement has taken place.  Determining the integers of the patent and comparing them to the alleged infringing product is essential and is usually done by a Patent Attorney and the Lawyer.   If a Patentee believes an infringement has occurred, they should seek legal advice as soon as possible to determine the steps required to protect their Patent.


Patents Act 1990 (Cth)

Cases on patent infringement

Catnic Components v Hill & Smith Ltd (1982) PRC 183.

Doric Products Pty Limited v Asia pacific Trading (Aust) Pty Ltd [2017] FCA 849

Fresenius Medical Care Australia Pty Ltd v Cambra Pty Ltd [2005] FCAFC 220

Kinabalu Investments Pty Ltd v Barron & Rawson Pty Ltd [2008] FCA 314

Related articles by Dundas Lawyers

Introduction to patent revocation

Ownership of employee inventions – disputing ownership of patents

Patent revocation for lack of novelty

Patents and the thresholds for registration

Take care when alleging patent infringement

Further information

If you need assistance with any aspect of patent infringement, please telephone me for an obligation free and confidential discussion.

Malcolm Burrows B.Bus.,MBA.,LL.B.,LL.M.,MQLS.
Legal Practice Director
Telephone: (07) 3221 0013 (Preferred)
Mobile: 0419 726 535


This article contains general commentary only.  You should not rely on the commentary as legal advice.  Specific legal advice should be obtained to ascertain how the law applies to your particular circumstances.

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