Patent Infringement in Australia

A granted patent is one of the most commercially significant forms of intellectual property a business can own. Under Australian law, a patent confers a statutory monopoly that enables its owner to exclude others from exploiting the invention for a defined period, thereby supporting market exclusivity, licensing revenue, and strategic leverage. However, the value of a patent right is ultimately contingent on enforceability. Without a clear understanding of what constitutes infringement, when liability arises, and how rights may be enforced or resisted, even a strong patent may offer limited practical protection.

What Constitutes Patent Infringement?

Patent infringement in Australia occurs when a person, without the authority of the patentee or exclusive licensee, exploits a patented invention within Australia. Section 13 of the Patents Act 1990 (Cth) confers on the patentee the exclusive right to make, hire, sell, use, import, or otherwise exploit the invention. Infringement occurs when a third party, without license or permission from the patentee, performs any of these acts.

Infringement is a question of law informed by technical facts, and liability does not depend on intent. Even inadvertent or unintentional exploitation may constitute infringement, subject only to specific statutory limitations on remedies.

Interpreting Patent Claims

The most important part of any infringement analysis is the analysis of the patent’s claims. The claims define the legal boundaries of the invention. The claims are the legally operative part of the patent specification and determine what conduct is prohibited.

Australian courts determine infringement by:

• Construing the claims as a matter of law, and
• Comparing the properly construed claims with the allegedly infringing product or process.

Claim construction is not a purely literal exercise. Claims are construed through the eyes of the skilled person, in light of the specification as a whole and the common general knowledge at the priority date. Context, purpose, and technical meaning all play a role.

An infringement is established only if the alleged product or process contains all the essential features or integers of a claim. This is often referred to as an “all elements” test. The addition of extra features does not avoid infringement if all claimed integers are present; however, the absence of even one essential integer is fatal to an infringement claim.

Direct and Contributory Infringement

Infringement in Australia is not limited to the party who directly makes or sells the final infringing product. Australian patent law recognises both direct infringement and indirect (contributory) infringement, reflecting the realities of modern supply chains and distributed manufacturing. This is a vital concept for businesses operating anywhere in the supply chain.

Direct infringement is the most straightforward form. It occurs when a person’s product or process falls squarely within the scope of a patent claims. For example, if a patent claim covers a specific type of coffee machine with features A, B, and C, another company that manufactures, sells, or uses a coffee machine with features A, B, and C is a direct infringer, regardless of whether additional features are present.

Section 117 of the Patents Act 1990 (Cth) extends liability to persons who supply a product to another, where the use of that product would result in patent infringement. However, the supplier’s liability is not automatic and applies  only where the product is used to infringe, and one of the statutory conditions is satisfied. These include:

Single reasonable use

Where the product has only one reasonable use, and that use is infringing. A classic example is a component designed exclusively for use in a patented system.

Non-staple commercial products with knowledge

When the product is not a “staple commercial product,” and the supplier had reason to believe the person receiving it would use it to infringe. Staple commercial products such as basic chemicals, multi-use items like screws, or standard electronic components are excluded due to their ordinary, multi-purpose nature. If the product is specialized, and it’s clear that it will be used in an infringing manner, the supplier can be liable.

Instructions or inducement

Where the supplier provides instructions, directions, or inducements that encourge the infringing use. This could include a user manual that directs the customer to assemble or use the product in a way that infringes a patent.

Section 117 of the Patents Act 1990 (Cth) is particularly significant for manufacturers, distributors, and component suppliers, and requires careful assessment of product design, marketing, and downstream use.

Statutory Exemptions: when it’s not infringement

Although patent rights are broad, they are not absolute. The Patents Act 1990 (Cth) includes several important exemptions that permit certain activities that would otherwise be considered infringing. It is crucial for both patentees and potential infringers to be aware of these defenses.

Prior Use

Section 119 of the Patents Act 1990 (Cth) provides a defence if a person was secretly using an invention, or had taken definite steps to do so, in Australia before the patent’s priority date. This defence protects individuals and businesses who had independently developed and were already commercializing an invention before the patent was filed.

The defence is personal, does not invalidate the patent, and is strictly limited to the scope of the prior exploitation. The evidentiary burden is substantial and typically requires contemporaneous records and witness evidence.

Experimental Use

Section 119C of the Patents Act 1990 (Cth) exempts acts done for experimental purposes i.e., provides a “research exemption,” which allows for the use of a patented invention for experiments relating to the subject matter of the invention. This includes activities such as determining the invention’s properties, improving or modifying it, or even testing to see if a particular act would infringe the patent. This exemption is designed to encourage further innovation and research, but does not extend to commercial exploitation. The boundary between experimentation and commercial use is fact-specific and must be carefully assessed.

Regulatory Approval Exemptions

Sections 119A and 119B of the Patents Act 1990 (Cth) permit use of a patented invention for the sole purpose of generating data and information required for regulatory approval, such as from the Therapeutic Goods Administration  in Australia or similar bodies overseas. This allows generic pharmaceutical manufacturers, for example, to prepare for market entry as soon as a patent expires, promoting competition and access to medicines.

Temporary Presence

Section 118 of the Patents Act 1990 (Cth) provides an exemption for the use of patented inventions on foreign vessels, aircraft, or vehicles that are only temporarily or accidentally in Australia.

Enforcing Patent Rights

Where infringement is suspected, enforcement typically begins with careful factual and legal assessment, followed by strategic decision-making. The infringement proceedings may be initiated in a prescribed court by the patentee or an exclusive licensee. Section 120 of the Patents Act 1990 (Cth) requires that infringement proceedings for an innovation patent may only commence after certification.

There are strict time limits for starting proceedings i.e., within three years from the patent’s grant date or six years from the date of the infringing act, whichever is later.

Section 121A of the Patents Act 1990 (Cth) introduces a significant procedural mechanism for process patents. Where a patented process produces a new product and another person is supplying an identical product, the burden may shift to the respondent to prove that a different process was used. This can be a decisive advantage in enforcement.

Before litigation, patentees may choose to issue a carefully drafted cease-and-desist letter, which can lead to licensing or settlement if handled correctly. This can often lead to a resolution, such as a licensing agreement, without the need for costly and time-consuming court action. However, poorly framed correspondence can expose the sender to unjustified threats claims.

Remedies for Infringement

If infringement is proven in court, the patentee is entitled to significant relief. Section 122 of the Patents Act 1990 (Cth) outlines the primary remedies a court may grant.

Injunction

An injunction is a court order that legally compels the infringer to stop their infringing activities immediately. This is often the most important remedy, as it prevents ongoing damage to the patentee’s market position.

The court will also award monetary compensation. The plaintiff has a choice between two options-

• Damages- This is compensation for the loss the patentee has suffered due to the infringement, such as lost sales or a reduction in the price they could charge.
• An Account of Profits- This requires the infringer to surrender the profits they made from their infringing activities.

In cases of particularly flagrant or deliberate infringement, Section 122(1A) of the Patents Act 1990 (Cth) allows the court to award additional damages to punish the infringer and deter similar conduct in the future.

However, a defense of innocent infringement is available under Section 123 of the Patents Act 1990 (Cth). If a defendant can prove they were not aware and had no reason to believe a patent existed, a court may refuse to award damages or an account of profits, though an injunction may still be granted.

Securing Freedom to Operate

For businesses developing new products, a proactive approach is the best defence against infringement. Before investing heavily in manufacturing and marketing, it is wise to conduct a Freedom to Operate (FTO) search. An FTO analysis involves a comprehensive search of the patent landscape to identify and assess whether proposed activities may infringe any existing patents. FTO assessments are jurisdiction-specific and forward-looking, and are distinct from patentability searches.

Where risks are identified, options include design around the patent, challenge its validity, or approach the patentee to negotiate a license. Another powerful tool is the non-infringement declaration. Under Section 125 of the Patents Act 1990 (Cth), a person who intends to launch a product can apply to a court for a declaration that their activity would not infringe a particular patent. This provides legal certainty and can be a strategic move to preempt infringement threats from a patentee.

Why work with us?

Patent infringement law in Australia is a complex and high-stakes field. Understanding how infringement is assessed, when statutory exemptions apply, and what remedies are available is essential for both patentees and businesses operating in competitive technology markets.

Whether you are enforcing your hard-won patent rights or navigating the risks of bringing a new technology to market, having expert legal counsel is not just an advantage, it’s a necessity.

Our dedicated team of patent attorneys combines deep technical knowledge with sharp legal acumen to protect your interests. We are committed to providing clear, commercially focused advice tailored to your specific situation.

Contact us today for a free consultation to learn how we can help you safeguard your innovations and achieve your business objectives.