The Issues
This example relates to the agrochemical sector, but similar problems are faced in the pharmaceutical sector.
Our client, A, was a major R&D based chemicals manufacturer with interests in agricultural chemicals. A was concerned about the activities of a well-funded UK-based individual, B, who had obtained marketing authorisation for various companies controlled by him to sell under their own names a parallel imported patented pesticide product manufactured by A. The active ingredient concerned was the subject of a UK patent owned by A. Given the price at which the products were being sold, our client suspected that they were in fact counterfeit. Furthermore, the client also suspected that B was also involved with the supply of other counterfeit goods infringing its patents.
A’s objectives were to discover whether the products being sold were indeed counterfeit, and if so to obtain injunctions and damages from B, and also to deter B from selling counterfeit products in the future.
How we helped achieve those goals
We obtained samples from a distributor of the product we believed infringed, and advised the client which analytical techniques should be employed in order to establish the provenance of the goods. The tests revealed that the product did contain the patented substance, but that the products were not the same as A’s. The products being sold were therefore counterfeit.
Proceedings were commenced against the infringer. Initially, B attempted to defend the action and to counterclaim for revocation of A’s patent. However, by destroying the credibility of B’s experimental data which sought to show that the patent was invalid for lack of novelty, we were able to compel B to discontinue his counterclaim. We also put forward our own robust experimental data proving both infringement and that the products were not genuine parallel imports. The matter eventually settled without a trial, and with B agreeing not to infringe the patent in future.
Shortly afterwards, our client discovered that the same individual was selling products which infringed another of its patents. Proceedings were again commenced, but this time B did not attempt to defend the action and immediately admitted the claim. We are currently in negotiation with his solicitors as to a suitable settlement, which we expect to contain severe penalties for future infringing activities, in order to deter him from infringing in the future.
This example illustrates the importance of patentees protecting their intellectual property rights in a robust and consistent manner. By doing so, even the most recalcitrant infringer can be stopped quickly, and deterred from carrying out similar infringing activities in the future.