Understanding what constitutes infringement, how it is enforced, and what remedies are available is essential for any patent owner. Equally important is understanding how well-drafted patent claims make enforcement possible in the first place.
What constitutes patent infringement?
Under Australian patent law, a person infringes a patent if they exploit the patented invention without the permission of the patent owner. "Exploit" is defined broadly and includes:
- Making the patented product or carrying out the patented process
- Using the patented product or process
- Selling or offering to sell a product that embodies the patented invention
- Importing a patented product into the country
- Keeping a patented product for the purpose of doing any of the above
Infringement is assessed against the claims of the granted patent, not the description or drawings. The claims define the legal boundaries of the patent owner's exclusive rights. This is why the quality of claim drafting is so critical — the scope and clarity of the claims determine what is and is not covered by the patent.
Infringement is determined by the patent claims, not the description. Well-drafted claims are the foundation of enforceable patent protection.
Types of infringement
Direct infringement occurs when a person directly performs one or more of the infringing acts listed above — for example, manufacturing a product that falls within the scope of the patent claims.
Indirect (contributory) infringement occurs when a person supplies a product or component that is specifically adapted for use in a way that infringes the patent, and the supplier knows (or ought reasonably to know) that the product will be used in an infringing manner. This provision is designed to catch parties who facilitate infringement without performing the infringing act themselves.
In practice, both types of infringement are common. A competitor may directly manufacture an infringing product, or a supplier may provide a key component knowing it will be assembled into an infringing device.
Cease and desist letters
In many cases, the first step in addressing suspected infringement is to send a cease and desist letter. This is a formal communication to the alleged infringer, putting them on notice of the patent and requesting that they stop the infringing activity.
A well-prepared cease and desist letter can often resolve a dispute without the need for litigation. Many infringers, particularly those who were unaware of the patent, will agree to cease the infringing activity rather than face the cost and risk of court proceedings.
However, cease and desist letters must be drafted carefully. Australian law contains provisions against "unjustified threats" of patent infringement proceedings. If a threat is made without proper basis, the recipient may have a right to bring their own legal action against the patent owner. For this reason, it is important to seek professional advice before sending any such correspondence.
Litigation overview
If a dispute cannot be resolved through correspondence, patent infringement proceedings are typically brought in the Federal Court of Australia. The court has specialist expertise in intellectual property matters and has established procedures specifically designed for patent disputes.
Patent litigation involves several stages, including the filing of pleadings, discovery of documents, evidence preparation, and trial. The process can be complex and time-consuming, but the Federal Court has introduced measures aimed at streamlining proceedings and encouraging early resolution of issues.
It is worth noting that the defendant in an infringement action will often challenge the validity of the patent as part of their defence. This means that the strength of your patent — including the quality of the claims and the thoroughness of the specification — can be tested during litigation. A well-drafted patent is significantly more likely to withstand such challenges.
Available remedies
If infringement is established, the court can award a range of remedies to the patent owner:
Injunctions: An injunction is a court order that compels the infringer to stop the infringing activity. This is often the most important remedy, as it prevents ongoing damage to the patent owner's market position. Injunctions can be granted on a final basis after trial, or on an interlocutory (interim) basis where urgent protection is needed.
Damages: The patent owner can elect to receive damages, which are calculated based on the financial loss suffered as a result of the infringement. This may include lost profits, reduced sales, and other consequential losses.
Account of profits: As an alternative to damages, the patent owner can elect an account of profits, which requires the infringer to hand over the profits they made from the infringing activity. The patent owner must choose between damages and an account of profits — they cannot claim both.
Remedies include injunctions to stop the infringement, damages for financial loss, or an account of the infringer's profits. Additional damages may be awarded for deliberate infringement.
Additional damages: In cases where the infringer acted flagrantly or in deliberate disregard of the patent owner's rights, the court may award additional damages beyond the standard compensatory amount.
Delivery up or destruction: The court may also order the delivery up or destruction of infringing products and materials used to make them.
The importance of well-drafted claims
The enforceability of a patent depends entirely on the quality of its claims. Broad, well-structured claims capture the essential inventive concept and make it difficult for a competitor to design around the patent. Narrow or poorly drafted claims may leave gaps that allow competitors to achieve the same result using a slightly different approach without technically infringing.
This is why the investment in professional patent drafting is so important. A patent that cannot be enforced provides little practical value, regardless of the significance of the underlying invention. Our approach to patent drafting emphasises claiming the invention from multiple perspectives, with claims at varying levels of specificity, to maximise the scope and resilience of the protection.
When to seek legal advice
If you believe your patent is being infringed, or if you have received a letter alleging that you are infringing someone else's patent, it is important to seek professional advice promptly. Early advice can help you understand your position, assess the strength of the case, and determine the most appropriate course of action — whether that is negotiation, licensing, or litigation.
Similarly, if you are considering entering a market and want to understand whether existing patents may affect your product, a freedom-to-operate analysis can identify potential risks before they become costly disputes.
Next steps
If you have questions about patent infringement or need advice on enforcing your patent rights, contact Patentec for a consultation. We can assess your situation, explain your options, and connect you with the appropriate legal professionals if litigation support is required.
For more on the value of patent protection and how well-drafted patents support enforcement, see our page on why get a patent. To understand what makes a patent application strong, visit our guide on protecting your idea in Australia.