Apr 29 2020
Patent infringement proceedings can be daunting at the best of times, but what does a patentee do when it believes a third party is infringing its process (e.g., the method or steps of manufacturing a product)? In a series of articles, we will explore some of the issues that arise in pursuing infringement proceedings relating to a patented process and the hurdles to overcome.
A process patent is a type of utility patent that covers a method (i.e., a series of steps) for performing a function or changing the functionality or characteristics of a material during a specified use to achieve a desired product or result.
In our first scenario, a patentee has an issued patent for a process (i.e., manufacturing technique) with respect to the manufacture of a product. The product is available publicly but the manufacturing process is done in a secure facility not accessible by the general public. How then does a patentee obtain evidence that the process being used is an infringing process?
Once a patent infringement action has been initiated, there exists a statutory remedy using the Federal Courts Rules to seek an “inspection” of an allegedly infringing process. This remedy can be utilized at any time during the pre-trial process, but is typically pursued as part of the discovery stage of an action when the examination for discovery has failed to provide the required material facts to allow the patentee and court to know whether an impugned process is infringing the patentees’ patent or not.
While leave can be sought for an inspection at any time during the pre-trial process, the court is more amenable to such a motion if a patentee can demonstrate that it has exhausted all avenues to obtain the required material facts (typically during examinations for discovery) and the inspection is the only means of ascertaining whether the process actually infringes the patentees’ patent.
The process for obtaining leave is to bring a motion for inspection under Rule 249 of the Federal Courts Rules. The motion should seek leave to authorize a specific person(s) to be able to enter any land or building where the property is located, inspect the property, take a sample and/or conduct any experiment necessary to obtain information or evidence in full. Affidavit evidence will be required to outline what steps have already been taken to obtain the information, as well as why the relief sought is “necessary or expedient”. The court will balance this evidence against any prejudice of intrusion on the defendant.
Orders allowing for inspection are typically fashioned so as to try and minimize any inconvenience on the defendant and its operations. Where experiments are required, the court will endeavour to ensure that the defendant is allowed to observe the experiment, have access to the results and/or otherwise have access to any resources necessary to support its case in rebuttal.
Stay tuned for the next article in this series on patent infringement.
This article is for information purposes only and does not constitute legal or professional advice.
Author: Kenneth Hanna
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Tags: Kenneth Hanna, Litigation, Patent Infringement