Are there procedures available which would assist a patentee to determine infringement of a process patent?

Patent Litigation

Australia Small Flag Australia

The preliminary discovery process described above can be used to determine infringement of a process patent.

In existing proceedings, standard discovery or interrogatories can also be sought with regard to an allegedly infringing process. The Court may also require a respondent to file a process description, detailing the steps of the allegedly infringing process.

Austria Small Flag Austria

In the case of process patents for the manufacture of a novel product, any product of the same nature is deemed to have been manufactured by the patented process unless proof to the contrary is provided by the defendant (Sec 155 PA).

This means there is a reversal of the burden of proof to the disadvantage of the defendant with regard to infringement if the plaintiff proves that

  • the product that is manufactured by the patented processes is novel, whereas novel here has the same meaning as in patent law in general, and that
  • the attacked product has the same nature as the product manufactured by the patented processes, which means that the attacked product has essentially identical properties, whereas differences that are explained, for example, by the usage of different additives which do not concern the process itself are irrelevant.

If the plaintiff is able to establish this, the defendant has to prove that the attacked product was produced by an alternative process. It would be insufficient if the defendant merely proves that the product could potentially be manufactured by an alternative process, without proving that the relevant attacked product was actually produced by the alternative process.

Brazil Small Flag Brazil

The Statute #9,296/96 (art. 42, paragraph second) provides for the possibility of reversal of the burden of proof, whenever the issue concerns a potential infringement of a method claim, which includes products that are obtained directly by the patented method.

The accused party will need to prove that the process used does not infringe the method claim and that the product being commercialized was not obtained by the claimed method.

Canada Small Flag Canada

There is robust document and oral discovery which provides the plaintiff with an opportunity to receive information on the defendant’s impugned process.

Additionally, where infringement of a patent granted for a process for obtaining a new product is alleged, ‘any product that is the same as the new product shall, in the absence of proof to the contrary, be considered to have been produced by the patented process.’ (Patent Act, s. 55.1). As such, provided that the plaintiff can demonstrate that the product in question is “new” and that the allegedly infringing product is the same, there is a presumption of infringement and the burden of proof will shift to the defendant to provide “proof to the contrary”.

China Small Flag China

For a normal process patent infringement litigation, there is no special procedure to assist the patentee in determining the infringement of the process patent, unless the patent infringement dispute involves a patented invention for manufacturing method of a new product, in which situation the organisation or individual manufacturing the same product shall show proof to prove that their product manufacturing method differs from the patented method.

Czech Republic Small Flag Czech Republic

Not directly. It is possible to argue that there is no other economical alternative to the patented process, to reverse the burden of proof, however, otherwise the burden of proof of proving that the used process infringes the patent is on the plaintiff.

The law reverses the burden of proof where the product obtained through the patented process is identical to the one obtained through the patented process, and it is likely that the patented process was sued and the patent owner had failed to acquire evidence about its manufacture through reasonable efforts.

Confidentiality clubs are used in some cases, where the parties agree to disclose key steps of the process used by the infringer. They cannot be insisted on and are thus purely voluntary.

France Small Flag France

In respect of process patent infringement, Article L. 615-5-1 IPC, the Court provides for a reversal of the burden of proof, i.e. the defendant has to prove that the process used to manufacture an identical product is different from the patented process.

Failing to provide such proof, any identical product shall be presumed to have been manufactured by the patented process.

Germany Small Flag Germany

The claimant has the general burden to prove that a patent is infringed. This also holds true for process patents. However, if proof as such is not possible the claimant might try to gain evidence by way of an inspection (see item 13).

Moreover, there is an exception to the burden of proof for processes of manufacturing new products. In this case, the same product (a product having essentially the same features as the new product) shall be (rebuttably) deemed to have been made using the patented process. In this context, the legitimate interests of the defendant in protecting his manufacturing and business secrets are to be taken into account.

Greece Small Flag Greece

Pursuant to article 17(6) of law 1733/1987, if the invention relates to a process for the manufacture of a product, each product of the same nature is presumed to have been manufactured according to the protected process.

India Small Flag India

As per Section 104A of the Patents Act, 1970, in a suit for infringement of a process patent, the court may direct the defendant to prove that the process used by him to obtain the product is different from the patented process if:

a) The subject matter of the patent is a process for obtaining a new product, or

b) The patentee or a person deriving title from him is unable through reasonable efforts to determine the process used by the defendant, where the product directly made by the patented process is identical to that of the product obtained by the patented process.

However, the Act requires that the patentee or the person deriving title or interest in the patent first prove that the defendant’s product is obtained by the patented process.

The aforementioned tools of Search/Discovery/Interrogatories etc. may be useful to seek information which is within power, control, knowledge or possession of the infringer.

Ireland Small Flag Ireland

In relation to process patents, section 46 of the Patents Act provides that a product produced by a person other than the patent proprietor shall be deemed to have been obtained by the process which is the subject matter of the patent where the product is the same and in the absence of evidence to the contrary. The burden of proof shifts onto the defendant.

Admissions may be made by a defendant in its defence that it is, for example, manufacturing in the State or, particularly in the innovator versus generics scenario, that the product falls within the claims of the patent while contending that the patent is invalid.

Discovery is available and may also help to address the issue. While there is not a formal rule of procedure in Irish patent litigation which specifically provides for a product or process description to be furnished, the rules which govern proceedings in the Commercial Court give the judge wide powers to make orders which assist in the efficient conduct of the litigation:

“the Judge may, at any time and from time to time, of his own motion and having heard the parties, give such directions and make such orders, including the fixing of time limits, for the conduct of proceedings entered in the Commercial List, as appears convenient for the determination of the proceedings in a manner which is just, expeditious and likely to minimise the costs of those proceedings.”

The foregoing includes the fixing of any issues of fact or law to be determined in the proceedings.

Israel Small Flag Israel

Courts as well as the Patent Office have wide discretionary power to issue protective orders. Protective orders limiting disclosure to external counsel only are routine in patent litigation.

Italy Small Flag Italy

Procedurally speaking, patentees holding patent rights on a process can file for the grant of a search order, as already discussed above.

Our system does not contemplate the possibility for the judge to order the alleged infringer to disclose a description of its process. On point of law, however, Art. 67 Italian IP Code provides for the reversal of the burden of proof in favour of holders of process patents if the product obtained through the patented process is new or, alternatively, if the patentee can demonstrate to have gone through reasonable efforts to determine the process used by the infringer, without success.

The meaning of the word “new” as used in Art. 67 is controversial. We have old (but still valid) case law to the sense that for purposes of Art. 67, “new” should be intended as commercially new or innovative, whereas some scholars have suggested that “new” should be intended as tantamount to “novel” i.e. novel over prior art. The prevailing argument should be the former, although our system could use a little more guidance from the case law on this issue.

Japan Small Flag Japan

Yes. When an invention of a process for producing a product has been granted a patent, a product identical to the above product is presumed to have been produced by such process if such product was not publicly known in Japan prior to the filing of the patent application. In this case, the court is not entitled to issue an order requiring the defendant to immediately disclose the configuration of the process; meanwhile, the defendant needs to provide arguments/proof in order to overturn the presumption. It should be noted that an order for document production may be available depending on the case, as is discussed in the above answer.

Norway Small Flag Norway

Under Norwegian Civil Procedural Law the burden of proof may under certain circumstances be reversed. With respect to infringement of process patent the burden of proof will normally be reversed if the patent concerns a process for manufacturing a new product.

Under Norwegian Civil Procedural Law the Courts may order the defendant to provide a description etc. of a process.

Poland Small Flag Poland

The infringement of a process patent may be confirmed using the preservation of evidence procedure described above.

The most efficient way of pursuing the process patent infringement is, however, the reversal of the burden of proof which applies in two instances:

- in relation to new products or

- when the patent holder shows that he could not determine, despite the proper efforts, the method of manufacturing the product actually used by the alleged infringer.

In such cases, it is presumed that a product that can be obtained by a patented method has been produced in this way.

Portugal Small Flag Portugal

VdA: Yes, there is a reversal of the burden of proof for process claims / process patents for new products in patent enforcement proceedings (main proceedings and PIs).

Furthermore, please see reply to 13 above (where the court may order the submission of evidence which may include a process description).

Russia Small Flag Russia

Paragraph 2 part 2 Article 1358 of the RUCC shifts the burden of proof on the defendant in patent infringement cases, based on patent related to process, if the suspected product is novel. In this case after the suspected product is confirmed to be identical to the product obtained by the patent process - then it is presumed to be infringing patent for process, unless the defendant proves the opposite.

Singapore Small Flag Singapore

Generally, the patentee bears the burden of proving that its patent has been infringed. However, the burden of proof is reversed in patent infringement proceedings involving a process for obtaining a new product. In such proceedings, the alleged infringer bears the burden of proving that the product is not made by that process if:

(a) the product is new; or

(b) substantial likelihood exists that the product is made by that process and the patentee has been unable through reasonable efforts to determine the process actually used.

There is no automatic requirement for the defendant to provide a process description. If the plaintiff wishes to compel the defendant to do so, the plaintiff may apply for the defendant to furnish such details by way of an application to Court for discovery or interrogatories.

South Korea Small Flag South Korea

Yes, if a patented invention is a process for manufacturing a certain product, any product identical to that certain product is deemed to be manufactured by the patented process. See KPA at Article 129. Thus, if a patentee proves infringement on the grounds that product manufactured by the alleged infringer is identical to that manufactured by the patented process, the alleged infringer is presumed to have practiced the patented process. This presumption does not apply if the alleged infringer can prove that the product was publicly known or practiced in Korea prior to the filing date of the patented process, or was described in a publication published in Korea or other countries prior to the filing date of the patented process (the alleged infringer could also simply prove that the product was not manufactured using the patented process).

Sweden Small Flag Sweden

An infringement investigation order may be sought and there are cases where the burden of proof has been transferred on the infringer after the patentee had made it probable that a product has been manufactured using a protected process.

If a document describing the process exists, it would be possible for the court to order the alleged infringer to produce that document, but it will often be privileged by virtue of the trade secrets exception, or to order an infringement investigation.

Switzerland Small Flag Switzerland

If the patent owner can provide prima facie evidence of actual or imminent infringement, the court can order a precise description of the allegedly unlawful processes (see above).

Moreover, there is a reversal of the burden of proof for process patents: If the invention concerns a process for the manufacture of a new product, every product of the same composition is presumed to have been manufactured by the patented process. The same applies to processes for the manufacture of a known product upon a prima facie showing of patent infringement.

Taiwan Small Flag Taiwan

Taiwan patent law does not provide procedures specifically helping a patentee of a process patent to determine infringement. An order for compulsory evidence collection as discussed above is the only measure available for a process patent patentee for the purpose of collecting evidence.

Thailand Small Flag Thailand

It is rather difficult under Thai law for a patentee to obtain direct evidence of process patent infringement; however, the Patent Act provides for reversal of the burden of proof in respect of a process patent. That is, if the patentee can prove that the product produced by the alleged infringer has the same or similar characteristics as the product made using the patented process, then the alleged infringer must prove that he or she used a different process than the patented process.

Turkey Small Flag Turkey

Yes, indeed several provisions are allowing the holder of a process patent can rely on during the proceedings.According to Article 141/2 of the IP Law, if the subject of a patent is related to a process for obtaining a product or material, the court may request the defendant (instead of the plaintiff) to prove the process used for obtaining the same product or material was different from the patented process.

Furthermore, if the product obtained using the patented method is new, it is assumed that the same product or material is produced by the patented method. Anyone who claims otherwise shall be obliged to prove it.

United Kingdom Small Flag United Kingdom

Reversal of burden

Where the nature or features of the process by which a product is manufactured is confidential, and it is not possible to determine or ascertain the process by which the product was manufactured by observing the characteristics of that product, the owner of a process patent may face difficulties in determining whether its patent has been infringed in the production of that product.

Accordingly, and in conformity with Article 34 of TRIPS, Section 100 Patents Act provides for the reversal of the burden of proof in circumstances where the patented process is one for obtaining a new product:

(1) If the invention for which a patent is granted is a process for obtaining a new product, the same product produced by a person other than the proprietor of the patent or a licensee of his shall, unless the contrary is proved, be taken in any proceedings to have been obtained by that process.

(2) In considering whether a party has discharged the burden imposed upon him by this section, the court shall not require him to disclose any manufacturing or commercial secrets if it appears to the court that it would be unreasonable to do so.

Where the burden of proof is reversed, it will then be necessary for the other party to establish that its product was not made by the patented process.

Other procedures

Additionally or alternatively, relevant process information may potentially be obtained from a PPD or from the disclosure process (including pre-action disclosure).

United States Small Flag United States

The burden of proof for patent infringement always lies with the patent owner in the United States. As the scope of fact discovery in the United States is broad, the use of a process can be established through discovery tools, such as requests for production of documents, witness testimony, inspection of premises or things, and interrogatory responses.

Vietnam Small Flag Vietnam

There is no effective mechanism to protect confidential information during court proceedings. However, the concerned parties can call on the court to keep the disclosed information strictly confidential from the public. The parties can call for a secret trial (not open to the public).

Updated: November 4, 2019