Enforcing IP rights

Enforcing IP rights

The issues

Our client, A, was a major R&D based chemicals manufacturer 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 and that B was 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 deter B from selling counterfeit products, in the future.

How we helped achieve our client’s 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 we were able to compel B to discontinue his counterclaim. Our own robust experimental data confirmed 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. This time, B immediately admitted the claim. An innovative and commercial settlement was then achieved, which imposed substantial incentives not to infringe in the future any of A’s patents and a strong signal to the rest of the industry to steer clear of infringing A’s patents.

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.

This example relates to the agrochemical sector, but similar problems are faced in the pharmaceutical sector.