Patent litigation in the United Kingdom: overview

A Q&A guide to patent litigation in United Kingdom.

The Q&A gives a high level overview of patent disputes, including how patent infringement is assessed; the conditions for a declaratory judgment; invalidation proceedings; preliminary relief and enforcement options.

To compare answers across multiple jurisdictions visit the patent litigation Country Q&A tool.

This Q&A is part of the global guide to Patent Litigation. For a full list of jurisdictional Q&As visit www.practicallaw.com/patentlitigation-guide.

Susie Middlemiss and Laura Balfour, Slaughter and May
Contents

Sources of law

1. What are the principal sources of law and regulation relating to patents and patent litigation?

The principal sources of law and regulation relating to patents and patent litigation are legislation and the decisions of the courts interpreting the legislation.

National legislation

The principal sources of national legislation in the UK are the:

  • Patents Act 1977 (as amended) (Patents Act), which gives effect to the European Patent Convention 1973 (EPC) in the UK. The Patents Act sets out the requirements for obtaining a patent, the resulting rights, and governs the remedies for infringement.

  • Patents Rules 2007 (as amended), which set out procedures for:

    • filing patent applications with the UK Patent Office (which since 2 April 2007 has operated under the name of the ''Intellectual Property Office", but for the purpose of this chapter will be referred to as the ''Patent Office'' as in UK legislation);

    • opposing the grant of a patent;

    • challenging the validity of a granted patent in the Patent Office; and

    • bringing infringement proceedings in the Patent Office, which is possible in limited circumstances.

  • Civil Procedure Rules (CPR), which set out the detailed court procedure for all civil litigation (including patent litigation) in the courts of England and Wales.

  • Intellectual Property Act 2014, which allows provision for the UK to implement the Agreement on a Unified Patent Court dated 19 February 2013 (document 16351/12 of 11 January 2013) (UPC Agreement) by way of secondary legislation, which will take effect from the date of entry into force of the UPC Agreement.

This legislation applies to the whole of the UK (that is, England and Wales, Scotland and Northern Ireland), with the exception of the CPR, which only applies to the courts of England and Wales. Procedural rules vary within the UK. England and Wales share common procedural rules and courts, but Scotland and Northern Ireland have separate courts and separate procedural rules.

International treaties

The following international treaties are relevant to patent law:

  • The Patent Cooperation Treaty 1970 (PCT), which is the centralised application system for patents in 148 countries.

  • The EPC, which is the centralised application and grant system and outlines a post-grant opposition procedure for European patents in 38 countries.

  • The WTO Agreement on Trade-Related Aspects of Intellectual Property Rights 1994 (TRIPS), which established minimum standards for enforcement and court procedures within the EU.

  • The European Convention on Human Rights (ECHR), which has no direct impact on patent litigation other than the increasing significance of human rights considerations on future legislation and court decisions.

  • The UPC Agreement, which contains the framework for the establishment of a new unified patent court of the European Union, which will hear infringement and revocation proceedings for European and unitary patents. The UK was one of the 25 EU member states to sign the agreement on 19 February 2013. To enter into force, the UPC Agreement must be ratified by at least 13 member states, including France, Germany and the UK.

The PCT, EPC and TRIPs have been implemented in the UK by the Patents Act. The Republic of Ireland is an independent country with wholly separate substantive and procedural rules, but has implemented the EPC, PCT and TRIPS.

Court decisions

England and Wales is a common law jurisdiction. Therefore non-statutory law and binding precedent judgments from prior cases form part of the law along with legislation.

Order of priority

The order of priority of sources of law in the event of a conflict is:

  • Legislation. While the EPC is not directly part of UK law, the Patents Act provides that certain of its provisions must be interpreted in a manner that is consistent with the EPC. In practice, the courts will look to the wording of the EPC where there is a parallel provision in the Patents Act.

  • Decisions of tribunals. The decisions of the tribunals have the following priority:

    • the Supreme Court, which in 2009 replaced the House of Lords as the highest domestic tribunal;

    • the Court of Appeal;

    • the Patents Court of the High Court;

    • the Intellectual Property Enterprise Court;

    • the Comptroller of Patents, which is an administrative official that has regulatory functions in respect of certain types of IP as well as a judicial role in connection with certain IP disputes.

It should be noted that:

  • The courts in England and Wales are not bound to follow a decision of the ECHR but they should ''take it into account'' when applying it. A conflicting Supreme Court decision must still be followed and national primary legislation that conflicts with the ECHR must still be enforced, (although efforts will always be made to construe the law in such a way as to be compatible with the ECHR).

  • The European Court of Justice (ECJ). The decisions of the ECJ take precedence over a conflicting provision of national law, but the ECJ does not have jurisdiction in respect of substantive patent law. However, some issues of law, such as aspects of enforcement that are the subject of an EU directive, rules on jurisdiction, rules on choice of forum and issues relating to the supplementary protection certificate (SPC) regime may come before it.

  • The Unified Patent Court (UPC), once in force, will have jurisdiction over all unitary patents and over European patents that have not been opted out of the court's exclusive competence under the transitional provisions. The decisions of the UPC will, in relation to unitary patents, be binding on all contracting member states and, in relation to European patents, on all those contracting member states in which the European patent has effect.

 

Court system

2. In which courts/government bodies are patents enforced?

Patents are enforced primarily in the Patents Court of the High Court (Patents Court) or the Intellectual Property Enterprise Court (previously the Patents County Court) (IPEC). Both are specialised courts, where cases are only assigned to a small group of judges with appropriate experience. Almost all of these judges have technical qualifications and were formerly specialist IP barristers.

The Patent Office (through the Comptroller of Patents) (see Question 1, Order of priority) can also deal with certain issues.

Patents Court

The Patents Court is part of the Chancery Division of the High Court and deals with all High Court patent cases.

IPEC

The IPEC is also part of the Chancery Division. It typically deals with more straightforward cases of a lower monetary value than those heard by the Patents Court. It is intended to provide a streamlined procedure for more straightforward claims that have a limit of GB£500,000 in value, with cost recovery capped (currently at GB£50,000). A decision to start a case in the IPEC should be made with careful consideration as to whether the value or complexity of a claim would require it to be subsequently transferred to the Patents Court.

Patent Office

While not a court, the Patent Office (through its head, the Comptroller of Patents) can also resolve disputes between different parties on most issues relating to patents, including issues relating to:

  • Ownership.

  • Compensation (for example, for inventors of patents beneficial to their employers).

  • Entitlement disputes.

  • Grant of compulsory licences.

  • Supplementary protection certificates.

  • In certain circumstances, infringement and validity disputes.

In practice, issues relating to infringement rarely come before the Comptroller as the Comptroller does not have the authority to grant injunctions (typically the most important form of relief being sought). However, the Comptroller can award damages. The Comptroller's decision can potentially be appealed to the High Court (and Court of Appeal and Supreme Court (see Question 36)). The Patent Office can also issue opinions relating to patent validity and infringement. While these are generally non-binding, the Comptroller has additional powers to revoke a patent on its own volition for lack of novelty and/or inventive step, following the issuing of an opinion under the Patents Opinion Service (see Question 21).

Unified Patent Court (UPC)

The UK will host in London a local division and a specialist section of the Central Division hearing cases relating to chemistry, including pharmaceuticals and the life sciences (patents classified under International Patent Classification classes A and C). Unitary patents and European patents that have not been opted out under the transitional provisions will be enforced in the UPC. Infringement actions will typically be heard by the local division and validity actions in the Central Division. However, during a transitional period of between seven and 14 years, infringement and validity actions in relation to a European patent designating the UK can still be brought before the national courts in the UK.

 
3. Do the courts/government bodies deal with infringement and invalidity simultaneously or must invalidity actions be brought in separate proceedings?

When both infringement and validity are raised, the courts will deal with them together. If the two issues are self-contained (which is unusual), the court may deal with one as a preliminary issue if this would dispose of the case. The validity of a patent is typically raised either as a counterclaim in infringement proceedings or in an action for a declaration of non-infringement.

Although invalidity proceedings can be brought before the Comptroller, if infringement proceedings already exist in the courts, validity must be dealt with by the court alongside the infringement question. However, the Comptroller may in any event refer cases to the courts if the issues can be dealt with better by the courts.

 
4. Who can represent parties before the court and/or government body?

In litigation before the Patents Court of the High Court, parties must be represented by an advocate (typically a barrister) who presents the case in court. A solicitor will be responsible for all other aspects of the case, in particular the conduct of the litigation and certain pre-trial hearings. Patent agents can also be involved, usually to assist with technical issues, although some may be qualified to conduct litigation. In cases involving complex technology, scientific advisers may be appointed to assist the court in understanding the expert reports or to answer the judges' questions. However, the court will generally obtain any technical information it requires from the expert witnesses retained by each of the parties (see Question 25).

In the Intellectual Property Enterprise Court, solicitors, patent agents and litigants in person can conduct litigation and appear as advocates as well as barristers. A party may appear in person or may appoint anyone to represent them before the Comptroller.

 
5. What is the language of the proceedings? Is there a choice of language?

The language of the proceedings in the national courts is English. No other choice is available.

In the UK local division of the Unified Patent Court, English will generally be the language used in proceedings. In the Central Division based in London, the language of the patent will determine the language of proceedings. This is likely to be English in most cases.

 
6. To what extent are courts willing to consider, or are bound by, the opinions of other national or foreign courts, or other national or international bodies, that have handed down decisions in similar cases?

English courts are bound by decisions of higher English courts and by decisions of the European Court of Justice (ECJ) (see Question 1, Order of priority). Scottish and Northern Irish courts are bound by decisions of higher courts in their own jurisdictions, the Supreme Court and the ECJ.

UK courts are not bound by the decisions of foreign courts but do consider and may adopt the reasoning of foreign courts concerning similar concepts. This is particularly true of the courts of Commonwealth jurisdictions such as Australia, Canada and South Africa and the major patent jurisdictions in Europe. Their influence and the influence of the European Patent Office (EPO) over UK court decisions has strengthened in recent years. In the case of Grimme Maschinenfabrik & Co LG v Scott [2010] EWCA Civ 1110, the Court of Appeal stated that when considering a point of patent law of general importance, such as the interpretation of a provision of the European Patent Convention 1973, and this point has been decided by a court (in particular, a higher court of another member state), it is important to consider that decision.

The English courts have also stressed the importance of following the EPO's case law, especially that of the Enlarged Boards of Appeal. This does not mean that the reasoning in each decision of the Board is binding. However, the Supreme Court has indicated that, where the Board has adopted a very consistent approach to a particular issue, which can be tracked through a number of decisions, very unusual facts would be needed to justify a national court from not following that approach.

 

Substantive law

7. How is patent infringement assessed?

Infringing acts

A patent is infringed if a person does certain acts in the UK, in relation to a patented invention, without the consent of the patent owner.

Potentially infringing acts can be broadly divided into three categories:

  • Primary acts, such as making, disposing, using or importing an invention.

  • Preparatory acts, such as supplying the means for putting an invention into effect.

  • Consequential acts, such as dealing with a product obtained directly from a patented process.

Assessment is objective, so the beliefs or motives of the alleged infringer are disregarded. Although the infringer's knowledge is relevant to some categories of infringement, the infringer cannot escape liability if the facts required to be known would have been obvious to a reasonable person, irrespective of the infringer's actual knowledge.

Construction: literal and equivalent infringement

As in other European jurisdictions, patents must be construed in the UK in accordance with Article 69 of the European Patent Convention 1973 (EPC) and the Protocol to that article. The scope of the patent is determined by the claims, as interpreted by the description and drawings. A balance must be struck to produce a construction which gives:

  • Fair protection to the patentee.

  • A reasonable degree of certainty to third parties who may wish to avoid infringement.

The key question for patent construction is: what would the person skilled in the art, reading the claims in context, have understood the patentee to mean by the language of the claims?

The test is objective. What the person skilled in the art would have understood the patentee to have meant is not necessarily what the patentee actually meant or subjectively intended. The (notional) person skilled in the art will have the common general knowledge of someone practising in the relevant field and a basic level of knowledge of patentability.

While the language of the patent is critical, patents must be construed in the light of their context and background. There is no English ''doctrine of equivalents''. Under the English approach (in contrast with the US approach of giving claims a literal interpretation and then determining the extent of protection surrounding the claims), the claims have a central role and are given a purposive construction. Equivalents form part of the background of facts known to the skilled person, which would affect what the claims are interpreted to mean. It is in this way that English law complies with the Protocol to Article 69 of the EPC, which specifically requires that due account be taken of any equivalents.

 
8. What defences are available to an alleged infringer?

The main defences are that the allegedly infringing act does not fall within the claims and/or that the relevant claims are invalid. Other defences may be available under national law and do not derive from the European Patent Convention 1973. These statutory exceptions to infringement relate to:

  • Acts carried out in private and not for commercial purposes. Even one commercial purpose will negate the defence.

  • Acts done simply for experimental purposes, whether or not with an ultimately commercial objective.

  • Acts of preparing a medicine for an individual in a pharmacy as prescribed by a doctor or dentist.

  • Acts carried out in relation to ships, aircrafts and other vehicles that are temporarily or accidentally in the UK territory.

  • Use of a harvest for propagation where there has been a sale of plant material to the farmer by a patent owner (or with the patent owner's consent) for agricultural use.

  • Use of an animal or animal reproductive material for an agricultural purpose following a sale to the farmer by a patent owner (or with the patent owner's consent) of breeding stock or similar material.

  • Studies, tests or trials relating to medicinal products in the human and animal sphere.

  • Uses that began in good faith before the priority date of a patent.

  • The right to continue use that began in other circumstances, such as, between expiry of a patent for failure to pay the renewal fee and restoration of that patent.

Other defences to infringement include:

  • Acts done with the consent of the patent owner (absence of the patent owner's consent is a prerequisite for infringement under the infringement provisions of the Patents Act 1977).

  • Anti-competitive practices of the patent owner can also be raised as a defence in certain patent infringement cases (see Question 22).

  • Exhaustion of rights. The resale of goods that have been placed on the market in the European Economic Area by or with the consent of the patent owner may not be prevented under Article 34 of the Treaty of the Functioning of the European Union.

 
9. On what grounds can a patent be invalidated?

A patent can be invalidated on a number of grounds, most of which reflect equivalent provisions of the European Patent Convention 1973 (EPC), and therefore apply throughout Europe. However, the interpretation and application of these grounds may vary between European jurisdictions.

A patent can be invalidated for:

  • Lack of novelty (anticipation).

  • Lack of inventive step (obviousness).

  • Lack of industrial applicability.

  • Being in respect of excluded subject matter (which broadly encompasses discoveries, literary, dramatic, musical or artistic works, business methods, computer programs per se and presentations of information).

  • Lack of title (that is, where the challenger argues that they, rather than the patent owner, are entitled to the patent).

  • Insufficiency (where the specification is not sufficiently clear and complete to enable the invention to be performed).

  • Containing added matter (where the specification of the granted patent is wider than that in the application as first published).

 
10. Can a court only partially invalidate a patent or transform it into a utility model?

A court can find a patent partially invalid. In such cases, the court may require amendment of the specification. Partially valid patents (including those declared partially invalid by the European Patent Office) can still be infringed but in determining whether to grant relief for infringement, the court will take into account the following:

  • Whether at the date of infringement the defendant knew or had reasonable grounds to know that it was infringing the patent.

  • Whether the initial specification was drawn up in good faith and with reasonable skill and knowledge.

  • Whether the proceedings were brought in good faith.

Any relief granted will relate solely to infringement of the remaining valid part of the patent.

There is no concept in the UK of protection by utility model and no equivalent system protecting so-called ''minor'' inventions. Therefore there is no option to transform a patent into a utility model.

 
11. Is it possible to amend patent claims during proceedings?

Claims can be amended during legal proceedings (for infringement or revocation) at the discretion of the court. The patent owner must follow a prescribed procedure when applying to amend, which involves both:

  • Giving particulars of the amendment and on what grounds this is sought.

  • Stating whether it contends that the claims before amendment are valid.

Following publication of the amendment, third parties have a period in which to oppose the amendment. Generally, the application to amend is heard at the trial of the action, to avoid any unnecessary duplication of evidence.

In exercising its discretion, the court previously took into account factors such as the conduct of the patentee (for example good faith and undue delay) and imposed cost penalties. However, with the requirement to apply the principles of the European Patent Convention 1973, this discretion has been limited.

The appropriate test is one of procedural fairness and the party objecting to the amendment must prove the lack of such fairness. An abuse of process may be found where a party fails to put forward a case it could have asserted much earlier without any proper justification. Therefore, amendments sought well in advance of the trial are likely to be acceptable but amendments made post trial where all the claims of the patent have been held to be invalid, but the patent owner wishes to re-write the claims in a form which it hopes will be valid, are likely to be refused.

 
12. Are there any grounds on which an otherwise valid patent can be deemed unenforceable?

A patent owner may be unable to enforce its rights if it has previously brought proceedings in which the same issue could and should have been raised. In common with most other torts, proceedings for infringement must be brought within six years of the date on which the infringing acts occur.

Relief may be refused where enforcement of a patent amounts to a breach of competition rules.

 

Parties to litigation

13. Who can sue for patent infringement?

Patent holder

A patent owner (who may not necessarily be the owner registered on the patents register) has a right to sue. If a patent is owned by more than one person, each of the co-owners can bring infringement proceedings without the consent of the other co-owner(s). Any co-owner who is not a claimant must be joined as a party, but will not be liable for costs.

Exclusive licensee

Subject to the terms of the licence, an exclusive licensee can sue for infringement occurring after the grant of the exclusive licence (provided the owner is joined as a party).

There is no requirement that an exclusive licensee be registered as a condition of starting infringement proceedings, although it is sensible to do so. Failure to register an exclusive licence within six months of the date of the licence may affect the licensee's right to recover costs.

Non-exclusive licensee

Non-exclusive licensees do not have any right to enforce the patent if the patent owner declines to do so.

Distributor

There is no statutory right for a distributor to bring proceedings.

Other

Certain other licensees (essentially those to whom the patent owner must grant licences) can call on the patent owner to sue on their behalf, failing which they can sue in their own name (joining the patent owner as a party).

 
14. Under what conditions, if any, can an alleged infringer bring proceedings to obtain a declaratory judgment on non-infringement?

A declaration of non-infringement can be sought through the Patents Court of the High Court, the Intellectual Property Enterprise Court or before the Comptroller, provided that both:

  • Written confirmation has first been sought from the patent owner that the alleged infringer's activities do not infringe the patent (including sufficient detail of the activities to enable the patent owner to assess this).

  • The patent owner has failed to give such confirmation.

This application can bring certainty and/or choice of forum but also puts the burden of proof (at least initially) on the potential infringer.

 
15. Who can be sued for patent infringement?

Any person who has committed an infringing act (whether himself or through an agent) can be sued for patent infringement.

A director can be sued personally for an act of infringement by a company if it is clear that the company's act was that of the director acting through the company as a mere conduit for his own activities. Personal liability will depend on the extent of control and involvement of the director.

Alternatively, a director can be sued jointly with the company if the director authorised the performance of a potentially infringing act knowing that it would be potentially infringing with both company and director acting in concert.

When two or more parties combine to infringe they can be sued as joint tortfeasors.

 
16. Is it possible to add or remove parties during litigation?

Parties can be added during litigation if desirable, to resolve issues in dispute. This is subject to the consent of the court and the party being joined as claimant. The new party must be given every opportunity to participate fully in the litigation and cannot be added at a late stage.

Where the court is satisfied that it is no longer desirable for a person or entity to be a party, they can be removed.

 

Enforcement options

17. What options are open to a patent holder when seeking to enforce its rights in your jurisdiction?

Civil proceedings

Patents are enforced in civil proceedings brought by the patent owner or, in some cases, the exclusive licensee (see Question 13).

Criminal proceedings

In the UK, the infringement of patent rights does not give rise to a criminal liability.

However, it is a criminal offence to make certain false claims in relation to patents, such as falsely claiming that a product is the subject of a patent or patent application.

Border measures

Goods (except those for personal use) that infringe patents and supplementary protection certificates are subject to border measures. Customs officials may take action (which may be at the request of the rights owner) by detaining or suspending the release of potentially infringing or suspicious goods to:

  • Give the rights owner the opportunity to start legal proceedings for infringement.

  • Seek consent from the importer that the goods can be destroyed.

If no response is received from the importer to this request, customs officials can deem consent to have been received and the patent owner may authorise the customs officials to destroy the goods. If consent is refused by the importer, the patent owner must initiate proceedings for infringement.

Other

The Comptroller of Patents can decide on infringement disputes but its powers in infringement proceedings are limited. Therefore, civil actions are usually brought in the Patents Court of the High Court or the Intellectual Property Enterprise Court (see Question 2).

 
18. Is it compulsory to send a cease and desist letter to an alleged infringer before commencing patent proceedings?

It is not compulsory to send a cease and desist letter in advance of commencing proceedings. Patent owners must consider whether to do so in the particular circumstances and take advice on the consequences.

A cease and desist letter can amount to a groundless threat of infringement proceedings, which is in itself actionable (potentially even if made outside the UK but in respect of UK proceedings). A declaration that threats were made, an injunction to restrain the threats and damages may be available as remedies in a threats action, which can be brought by anyone aggrieved by the threat.

On the other hand, certain liabilities for patent infringement can only accrue if the potential defendant has knowledge of certain matters and in some cases there can be a benefit in raising these issues in correspondence, subject to the threats risk.

 
19. To what extent are courts willing to grant cross-border or extra-territorial injunctions (preliminary or permanent)?

It is possible for English courts to hear infringement actions in relation to foreign patents. The English courts have recently confirmed jurisdiction to try a claim for a declaration of non-infringement of the foreign designations of a European patent where validity had not been raised. However, where validity is raised, the courts of the state where the patent is registered will have exclusive jurisdiction and the English courts have taken this to prevent the grant of cross-border injunctions. This approach was effectively endorsed by the European Court of Justice (ECJ). However, this position is subject to a number of further exceptions and nuances, as discussed below.

Regulation (EC) 44/2001 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters (Brussels Regulation), Regulation (EU) 1215/2012 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters (Recast Brussels Regulation) (which applies to proceedings commenced after 10 January 2015) and the EFTA Convention on Jurisdiction and Enforcement of Judgments in Civil and Commercial Matters 1988 allow for the consolidation of actions where there is a risk of irreconcilable judgments because the claims are so closely connected. Despite this, the ECJ in Roche Nederland BV v Primus & Goldenberg Case C-539/03 held that, where patents are involved, there are unavoidable legal differences between infringements in different jurisdictions that are sufficient to preclude such actions being heard together.

The case of Roche dealt with proceedings against multiple connected defendants in respect of infringing acts carried out in their respective states of domicile. However, a different scenario was referred to the ECJ in Solvay S.A. v Honeywell Fluorine Products Europe BV and Ors (Case C-616/10). In this case, the ECJ held that, where two or more companies established in different member states are each accused of infringing the same national part of a European patent in respect of the same product, in their own state and also in other member states, this would be a situation capable of consolidation to avoid the risk of irreconcilable judgments. It is for the referring court to assess whether such a risk exists, taking into account all the relevant information.

The ECJ in Solvay also held that the exclusive jurisdiction rule (invoked when the validity of the patent is raised) does not preclude a court from making a provisional or interim injunction ordering a defendant to stop infringing a foreign patent under Article 31 of the Brussels Regulation (Article 35, Recast Brussels Regulation). These provisions provide that one national court may have jurisdiction in relation to provisional measures even where another national court would have jurisdiction as to the substance of the matter.

 
20. To what extent do courts recognise the blocking effect of "torpedo" actions abroad?

The English courts are subject to the lis pendens rules under Article 27 of Regulation (EC) 44/2001 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters (Brussels Regulation), Article 29, Regulation (EU) 1215/2012 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters (Recast Brussels Regulation) and the equivalent rules in the EFTA Convention on Jurisdiction and Enforcement of Judgments in Civil and Commercial Matters 1988, which require the courts to stay a case where another court is first seised to avoid the risk of irreconcilable judgments.

The use of a ''torpedo'' action (that is, an action where a defendant, by way of an application for a declaration of non-infringement, in relation to multiple foreign patents seeks to bring the matter first in a forum where proceedings are likely to be slow, to stop the claimant from bringing infringement proceedings in another, faster forum) has been considered by the English courts. The courts have stated that a torpedo action is not an abuse of process as such and a party should not be criticised for ''elaborate game playing'' as it may stand to gain commercially from such a tactic.

With recent improvements in the speed of Italian and Belgian proceedings where ''torpedoes'' were often launched, this strategy is less common. The Recast Brussels Regulation has also introduced an additional exception to the lis pendens rules. Under the Brussels Regulation, only a court with exclusive jurisdiction had priority over the court first seised. However, under Article 31 of the Recast Brussels Regulation, where the parties have entered into an exclusive jurisdiction agreement, a court seised on the basis of that agreement will also have priority over the court first seised. Therefore, a party will not be able to make use of a ''torpedo'' action before a court of its own choosing where it has entered into an exclusive jurisdiction agreement in favour of a different court.

 
21. To what extent are arbitration, and alternative dispute resolution (ADR) methods (such as mediation), available to resolve patent disputes?

ADR encompasses a range of procedures including arbitration, mediation, expert determination, early neutral evaluation and mini-trial. The courts do not have the power to force parties to use ADR but do encourage it. They require ADR to be considered at various stages of litigation and failure to engage in ADR can have an adverse impact on costs recovery.

Arbitration

The Patents Act 1977 provides that validity may only be put in issue in specified proceedings (all heard by the courts or the Comptroller). Validity can be dealt with in arbitration but the arbitral tribunal cannot affect the patent register, so the result could only be effective in the following circumstances:

  • The parties agreed that a patent be surrendered or consent be given to its revocation.

  • The parties agreed that the patent would not be enforced between them.

  • Resulting conclusions and evidence were presented to the Patent Office for consideration in revocation proceedings (although the Patent Office would not necessarily reach the same conclusion).

See Arbitration procedures and practice in the UK: overview.

ADR

The Patent Office has an ADR service for patent disputes by which the hearing officer gives a non-binding opinion on validity or infringement that can be useful in negotiations. The High Court has jurisdiction to hear appeals of these opinions in certain circumstances.

Over 150 opinions have been issued since 2005, many being requested by small and medium-sized enterprises. Since October 2014 the Comptroller has additional powers to revoke a patent on its own volition for lack of novelty and/or inventive step following the issuing of an opinion under the Patents Opinion Service.

See Litigation and enforcement in the UK: overview

 

Competition and anti-trust

22. Can a patent holder bring proceedings claiming both patent infringement and unfair competition for the same set of facts?

A patent infringement action can be combined with a number of other claims including unfair competition (typically in the form of an action for passing off or breach of confidence), anti-competition claims, trade mark infringement and breach of contract, provided they can be heard by the same forum (generally the High Court).

 
23. To what extent can enforcement of a patent expose the patent holder to liability for an anti-trust violation?

The patent regime provides a statutory monopoly. However, in certain circumstances that monopoly can be enforced in a way which can be in breach of anti-trust law. Although there are no specific statutory anti-trust related defences, in practice a competition argument may be raised as a defence to a patent action in appropriate circumstances.

The competition issues can either be raised and decided in the litigation itself or by lodging a complaint to the European Commission (or national competition authority), in which case court proceedings may be stayed pending that resolution.

The patent owner's conduct must itself be anti-competitive. Typically, a violation of Article 102 of the Treaty of the Functioning of the European Union (abuse of a dominant position) is alleged, for example, where excessive prices are charged or a new product is kept off the market. In AstraZeneca v Commission Case C-457/10, the European Court of Justice (ECJ) confirmed the General Court's decision that Astra Zeneca had abused its dominant position by, among other things, making misleading representations to national patent offices when applying for supplementary protection certificates (to which they were not entitled) for its drug Losec in order to keep generic product manufacturers off the market.

Abuse of dominance issues are particularly likely to arise where the patent owner's rights relate to a de jure or de facto standard product or process, or an invention that is the subject of ''pooled'' rights. Two recent Commission decisions (Case AT.39985-Motorola and Case AT.39939-Samsung) have confirmed that, where the owner of a standards-essential patent (SEP) has given a commitment to license on fair, reasonable and non-discriminatory terms, seeking an injunction against a willing licensee may constitute abuse of a dominant position. In Huawei v ZTE (Case C-170/13) the ECJ considered the circumstances in which a SEP holder will not abuse its position when seeking injunctive relief. The judgment provides guidance regarding how licence negotiations between a SEP holder and potential licensee should be conducted and confirms that if no agreement is reached, the parties can, by common agreement, request a third party determination of the licence terms. Third party determination was a key element in the Samsung and Motorola decisions, in which the European Commission created a ''safe harbour'' from injunctive relief. Although the Huawei case provides helpful practical guidance, it still leaves open a number of areas of uncertainty that will in due course need to be resolved by national courts in future SEP litigation.

 

Procedure in civil courts

24. What is the format of patent infringement proceedings?

In contrast with other European jurisdictions, the civil court process in England is adversarial rather than inquisitorial and is governed by rules designed to promote an ''open'' approach, which avoids the possibility of either side surprising the other with an ambush at trial.

Cases in the Patents Court of the High Court (Patents Court) are heard by a single specialist judge who will typically have scientific as well as legal qualifications. Three judges sit in appeal cases and one is a specialist patents judge. Juries are not used.

Patent infringement proceedings in the Patents Court will typically involve the steps outlined below.

Pleadings

These are high-level formal statements of each side's case (for example, the claimant must identify specific examples of infringing acts and the claims infringed but need not propose a particular construction of the claims or produce evidence). Typically, pleadings are less detailed than in continental Europe so it is possible to develop and change arguments during the litigation.

Case management conference

The case management conference occurs after the close of pleadings. It sets the timetable for the case and addresses issues such as scope of disclosure, use of expert evidence and experiments.

Disclosure

''Discovery'' is termed ''disclosure'' in English courts, and typically takes place once all parties have filed their pleadings (see Question 28). Disclosure comprises:

  • Identification of relevant documents that can help or hinder either side's case.

  • Exchange of lists of such documents in the possession or control of each party.

  • Inspection of the listed documents, other than privileged documents.

In principle, the parties must make a reasonable search and produce any documents which help or hinder their case. However, disclosure in patent cases is generally very limited and disclosure in relation to infringement will be given by way of a written description of the relevant aspects of the allegedly infringing product or process.

The court may order broader disclosure to deal with specific issues and/or documents. It can also restrict or dispose of disclosure (see Question 30).

Experiments

Experiments may be used in patent litigation to establish a fact or argument. The other party can inspect a repetition of the experiments and the results of that will become primary evidence in the case. However, care should be taken in conducting experiments, as all relevant experiments must be disclosed.

Preparation and exchange of evidence (witness statements and expert reports) and evidence in reply

The witness statements and expert reports set out in detail the ''evidence in chief'' intended to be given by each witness, including experts (that is, the evidence each witness would give in response to an examination by his own side's barrister in court).

Pre-trial review

This is used to set an agenda for the hearing (for trials of more than five days) or to encourage settlement.

Skeleton arguments

Shortly before the trial, the parties must file skeleton arguments, which set out their arguments in some detail with reference to the supporting witness statements and disclosure documents.

Trial

The trial is an oral hearing typically lasting between a few days and several weeks, at which experts and fact witnesses are heard and oral arguments made. Generally, the court will deal with multiple patents that are at issue between the parties at the same trial. However, if there are a large number in issue and particularly where they involve different technologies and different expert witnesses, the court can split the action into separate trials.

 
25. What are the rules and practice concerning evidence in patent infringement proceedings in your jurisdiction?

Documents

Witness statements and expert reports are prepared and exchanged with the other parties to the proceedings. These set out in detail the evidence that is intended to be given by each witness/expert at trial.

Witness evidence

Witnesses give evidence in writing and orally. Unless a witness wishes to add additional matter (which is permissible only to a limited extent), the written witness statement stands as the witness's evidence in chief and the oral testimony begins with cross-examination by the opposing party. The party who called the witness can then ''re-examine'' to assist the witness in answering any points raised in cross-examination.

Expert evidence

The parties may use expert witnesses with the permission of the court and may use more than one, where there is a need for several different areas of expertise. In theory, a court can appoint a joint expert to act as an adviser, but in practice this is not done in patent proceedings. All experts (despite being paid by one party) have a special duty to the court to be independent and to produce their own report, which gives their opinion on technical matters, explains what alternative views are possible and the reason for adopting the particular view recommended in the report. The experts must seek to agree on what issues they can, and sometimes a technical primer is produced to explain the relevant technology to the court. Experts are cross examined and re-examined in the same way as other witnesses.

Expert evidence is often crucial to the outcome of a patent dispute. A good expert who gives clear and independent evidence can play an important role in helping the court reach a view on technical issues.

 
26. Is evidence obtained in criminal proceedings admissible in civil proceedings and vice versa?

In the UK, the infringement of patent rights does not give rise to a criminal liability. However, criminal proceedings can be issued relating to trade mark, copyright and registered design offences.

Generally, evidence that is given in open court in civil or criminal proceedings (and is therefore not confidential) or recorded in a judgment, may be referred to in other proceedings. Alternatively, permission can be sought from the court to use the material.

Documents that are obtained on disclosure can only be used for the purposes of the particular proceedings (whether criminal or civil), unless either:

  • They are read to the court or by the court in a public hearing.

  • The court or disclosing party gives permission.

Criminal convictions can be relied on to prove that certain conduct took place, which can be relevant in a civil action.

 
27. Is evidence obtained in civil proceedings admissible in other civil proceedings?
 
28. To what extent is pre-trial disclosure permitted and what other mechanisms are available for obtaining evidence from an adverse party or third parties?

Pre-trial discovery

Disclosure may be ordered at the court's discretion at a very early stage in proceedings, or before a claim has been formally commenced, provided various requirements are met.

An example of a successful application for pre-action disclosure was in a case involving a patent owner, whose business was to license the patent in question. The potential defendant sought disclosure of licences granted by the patent owner to assess whether it should continue to assert non-infringement and invalidity, which would likely result in proceedings or whether to settle the action by taking a licence. The High Court held that it was desirable to avoid litigation, the costs of which would be much greater than the sums sought (The Big Bus Company Ltd v Ticketogo Ltd [2015] EWHC 1094 (Pat)).

Once proceedings are in prospect, the parties and their legal representatives have strict duties to ensure that potentially disclosable documents are retained (including halting routine destruction programmes). Duties of disclosure continue until proceedings are concluded. A party cannot (without leave of the court) rely on documents that have not been disclosed to or made available for inspection by the other party.

Other mechanisms

See Question 31, Search and preservation orders.

 
29. What level of proof is required for establishing infringement or invalidity?

The burden of proving infringement is on the balance of probabilities (that is, that an allegation is more likely to be true than not) and this burden initially lies on the claimant. However, in some circumstances the burden may shift to the defendant if the claimant has made out a prima facie case from which it may be inferred that infringement has occurred. The defendant must in all cases prove invalidity on the balance of probabilities.

The claimant must also prove damage (usually after the trial on liability), but the courts are often willing to infer that damage has been caused by the wrongful invasion of a patentee's monopoly and will not be deterred from awarding substantial damages simply because of the difficulty or impossibility of proving precise figures for calculating such damages.

If a declaration of non-infringement is sought, the burden of proof lies on the person seeking that declaration.

 
30. How long do patent infringement proceedings typically last?

Patent proceedings typically last around a year. The precise time will depend on the:

  • Length and complexity of the case.

  • Attitude of the parties.

  • Amount of active case management by the court.

  • Availability of court time.

If there is an assessment of damages, a further period will be required although most parties deal with damages by agreement.

Fast-track procedures

Proceedings can be expedited in the following ways:

  • A speedy trial. Where a degree of urgency can be shown, the court can shorten the timetable. Certain aspects (in particular disclosure) can be limited. However, the procedure is usually the same as normal so cases are very intensive and can come to a full, oral trial within six to nine months of commencement of the case.

  • A streamlined procedure. Any party may at any time apply to the court for permission that a special streamlined procedure is adopted for all or part of the case. This is intended to cut the costs and time for patent litigation in smaller, straightforward cases. Typically in such a case:

    • evidence (both factual and expert) is given entirely in written form;

    • cross-examination of witnesses is limited or absent;

    • disclosure of documents is either disposed of or severely limited; and

    • there are no experiments.

Cases under the streamlined procedure can be expected to come to trial about six months from commencement of proceedings and the hearing usually lasts no more than a day. Given that proceedings in the Patents Court of the High Court generally come to trial within about a year, the streamlined procedure is not commonly used in practice.

The procedure in the Intellectual Property Enterprise Court is effectively a streamlined procedure. There is a greater emphasis on the completeness of a party's initial statement of case and stronger judicial control of the case management procedure (such as a greater focus on written submissions with far less oral argument both pre-trial and at trial and in most cases no disclosure). There is a limit of two days for trials, although in practice, between half a day and a day is normal.

  • Interim injunctions. In practice, successful interim injunction applications are rare in patent cases. This application introduces an additional step, which can lengthen the overall timetable (see Question 33). However, the practical effect is often a speedier resolution because:

    • where an interim injunction is granted, an early remedy is obtained and the parties often then negotiate and settle the matter without further proceedings; and

    • where an interim injunction is refused, the court may acknowledge the urgency of a matter by instead granting a speedy trial.

  • The hearing of a preliminary issue. If a decision on a particular issue may dispose of an action altogether, the court can hear this issue on its own, before the rest of the case, in the interests of saving time and costs.

  • Summary judgment. Summary judgment (or the striking out of part of the case) can be given in very clear cases at an early stage of the procedure in favour of the claimant or defendant, if:

    • the other party has no real prospect of succeeding on its case; and

    • there is no other compelling reason for the case to be tried.

The case must proceed to trial if either the viability of a claim or defence turns on a factual matter about which there is any doubt, or a complex question of law or fact requires consideration of all the evidence. Given the nature of patent cases, these requirements for summary judgment or strike-out are rarely satisfied.

Timetable

An initial timetable for proceedings is ordered at the case management conference (see Question 24). So far as is possible, the parties will agree the proposed timetable in advance of that conference and will prepare a draft order to be signed by the judge at the hearing, which sets out the agreed timetable. Most changes to this timetable require the approval of the court.

Delay

The defendant can introduce some delay (particularly in the early stages before the court has set a timetable) by applying for extensions of time allowed for different steps in the action to be completed. This is more difficult once the court has set the timetable at the case management conference and in particular once a date for trial is set. The pace with which the action proceeds will depend on:

  • The attitude of both parties.

  • The attitude of the particular judge.

  • The availability of court time for hearings.

  • Any genuine justification for delay, such as the:

    • complexity of the matter;

    • extent of the factual issues;

    • need for experiments;

    • scale of disclosure; and

    • urgency of the case.

The opportunities for delay are minimal in a speedy trial. In certain circumstances, a defendant can delay by having the action stayed (that is, temporarily halted) pending some development outside the action. For example, an action may be stayed pending a decision on the validity of the patent to suit by the:

  • Comptroller of Patents. This outcome is rare and generally both issues would be heard by the High Court.

  • European Patent Office (EPO). The court will weigh up all the circumstances of the case such as the:

    • stage reached in the national and EPO hearings;

    • likely time to resolution;

    • harm caused to a party by the delay;

    • impact on the public of the uncertainty over validity of the patent;

    • promotion of settlement.

 

Preliminary relief

31. Is preliminary relief available, and if so what measures are available and under what conditions?

Preliminary relief is available. The parties must show urgency, or that the relief is otherwise necessary in the interests of justice. A variety of preliminary relief is available pending trial.

Search and preservation orders

A search and seizure order (formerly known as an Anton Piller order) requires the defendant to admit the claimant's solicitor, together with an independent supervising solicitor, to its premises and to allow a search to be made for infringing items and material that is relevant to the infringement (such as sales records, infringing products and equipment used to make infringing products) and to seize, copy or photograph such material.

This order will be granted if the following conditions are met:

  • The claimant provides an extremely strong prima facie case.

  • The actual or potential damage to the claimant is very serious.

  • There is clear evidence that the defendant has possession of incriminating documents or things and there is a real possibility that the material may be destroyed before any inter partes application can be made.

Certain safeguards are provided for the defendant (for example, there must be a hearing shortly after the search).The disclosed material must only be used for the purpose of the proper conduct of the action. A court can also make a freezing order (Mareva injunction) to retain the defendant's assets that may be needed to satisfy judgment.

Injunctions

A preliminary or interim injunction is available pending trial. Without notice (ex parte relief) (such as an injunction or search and seizure order) is available in exceptional cases either:

  • Where the matter is so urgent that the defendant may not be notified.

  • Where there is real concern that the defendant may dispose of evidence.

However, the injunction will be granted for a short time, until the matter can come back before the court on an inter partes basis, where both parties will be heard. The applicant for a without notice order has special duties to investigate the facts, present the evidence of the case fully and fairly and include the arguments both for and against the application.

To determine whether an interim injunction should be granted, the court looks at the following factors:

  • Whether there is a serious question to be tried.

  • Whether damages will be an adequate remedy (due to the nature of the infringement or the defendant's financial position).

  • Where the balance of convenience lies (that is, what is just and convenient given the position of both parties).

  • Whether there has been delay by the claimant in seeking the remedy since he discovered the infringement (the length and nature of the delay that is acceptable will depend on the circumstances).

  • Where other factors are evenly balanced, the court will tend to maintain the status quo.

In some cases, the court may also take into account the relative strength of the parties' cases, based on any undisputed evidence available. It can be difficult to satisfy these requirements in a patent matter given the complexity of the technical and legal issues.

Typically, the claimant must give an undertaking to pay damages to the defendant for loss resulting from the injunction if it transpires it ought not to have been granted. It is possible to seek an interim injunction even before an infringement has commenced, based on a clear and imminent threat to infringe. Interim injunctions maybe granted in respect of non-UK designations of European patents (see Question 19).

The claimant must commence main proceedings when any interim relief is sought and generally before or simultaneously with seeking such relief, except in very urgent cases.

Other

An order for early disclosure or inspection may be made before commencement of proceedings (see Question 28).

 
32. Can a protective writ be filed at the court at which an ex parte application may be filed against that defendant?

It is not possible to file a protective writ at court in anticipation of a potential application for interim relief. However, without notice relief is rare in patent cases (see Question 31, Injunctions) so a defendant would normally expect to have an opportunity to defend itself and be heard at an early stage. If the defendant wanted certainty, it may be appropriate in some cases to make an application for a declaration of non-infringement or an application to challenge the validity of the patent.

 
33. What is the format/procedure of preliminary injunction proceedings?

General

Proceedings for an interim injunction typically comprise:

  • Service of an application notice with details of the order sought and evidence in the form of a witness statement(s).

  • A preliminary timetable hearing.

  • Service of evidence in reply by the defendant.

  • Service of evidence in reply by the claimant.

  • Exchange of written arguments.

  • An oral hearing at which each party's counsel make submissions but no witnesses are heard

Level of proof

The claimant must establish that there is a serious question to be tried. The application is not intended to be a ''mini trial'' of the issues but an injunction is most likely to be granted when the merits of the claimant's case are demonstrably strong.

Evidence

Generally evidence is given in written witness statements in all preliminary applications. The parties can provide documents together with their evidence but there is no provision for disclosure at this stage (except under without notice applications, see Question 31) and no oral witness testimony.

Patent validity

A defendant can raise the issue of validity but it will not be determined at that stage. However, clear evidence may be taken into account (see Question 31, Injunctions).

Length of proceedings

The length of preliminary proceedings will vary depending on the circumstances of the case. If the matter is sufficiently urgent, an inter partes injunction hearing can be granted within weeks (or even days). The normal course though is for the parties to exchange evidence and written arguments (see above, General) and for an oral hearing to take place within a few months. However, where the court accepts that there is a degree of urgency, a speedy trial may be granted instead (see Question 30).

 
34. If a preliminary injunction is granted and the main infringement action is finally lost, can the defendant claim damages for the unjustified preliminary injunction?

A defendant who has been wrongly injuncted may claim damages, which are assessed in separate proceedings based on the evidence of the market, its likely sales had the injunction not been granted and the impact of the injunction (generally assessed by expert evidence from an economist or an accountant). At the time the interim injunction is sought, the claimant must present evidence that it would be able to pay the damages if the injunction were later found to be wrongly granted.

 

Final remedies

35. What remedies are available against a patent infringer?

Permanent injunction

A permanent injunction is a discretionary remedy but is generally granted in most cases. It relates to goods in the possession and control of the defendant. Therefore, where any injunction would cause great public inconvenience, a declaration of infringement may be granted instead.

The court has discretion to refuse an injunction and award damages in lieu. The exercise of the discretion will depend on the particular circumstances of the case, including:

  • The subject matter of the patent.

  • The nature of the market.

  • Whether the claimant is working the invention or offering licences.

An injunction can sometimes be refused where the infringing acts have ceased and it is normally granted in wide form, restraining the defendant from ''infringing'' the patent, rather than being limited to specific acts.

The practice of the courts is to phrase an injunction to restrict the defendant, its agents and its servants and it may extend to prevent importation of products from countries where there is no corresponding patent. An injunction will not be directly effective against the infringer's suppliers or customers unless they are specifically joined as parties (on the basis of their own infringing acts) and named on the order. However, aiding or abetting breach of an injunction (with knowledge of the injunction) is (like the breach itself) a contempt of court, punishable by fines and/or imprisonment.

The English courts have jurisdiction to grant cross-border injunctions but only in very limited circumstances (see Question 19). Once in force, the Unified Patent Court will order pan-European injunctions.

Monetary remedies

A claimant can be awarded a monetary remedy in respect of infringement and must elect between an account of profits and damages

The assessment of these amounts can be made by the judge at the time of the decision on liability, but in most cases, the parties will either agree a sum to be paid by way of damages or damages will be assessed in a separate set of proceedings. The claimant must choose between an enquiry as to damages and an account of profits, but the defendant can initially be required to give some financial details to allow the claimant to make an informed choice. There is no punitive element to these monetary remedies. The payment of compensation can be limited (for example, where the patent is only partially valid).

The general principle is that the patent owner must be put in the same position as if the infringement had not happened. This means the patent owner must be compensated for all reasonably foreseeable losses suffered as a result of the infringement. Where the parties compete, damages can include the loss of direct sales, sales of ancillary unpatented products and compensation for erosion of the patent owner's prices. On non-competing sales, compensation will typically be assessed by reference to a reasonable royalty.

In an account of profits, the profits attributable to the unauthorised use of the patent are paid over. The remedy has been rarely used, being complex and unpredictable, but it has resulted in significant payments.

Delivery up or destruction of infringing goods

Delivery up or destruction of any patented product in relation to which the patent is infringed or any article in which that product is inextricably comprised or which can only be used in an infringing manner can be ordered.

Publication of the decision

Virtually all decisions are published in law reports and in some cases the courts will order that wider publicity be given to the decision.

Recall order

If a defendant has already released infringing goods from its possession and control, the court will not generally grant an order requiring them to be recalled.

Declaration of infringement and validity

A court may grant a declaration that a particular activity amounts to infringement. This generally relates to past infringement, but where the activity has ceased or the patent owner has acquiesced in the defendant's conduct it is possible that a court will grant a declaration in place of an injunction.

A court may also grant a declaration that the patent is valid. Where validity is challenged and upheld, a certificate of contested validity may be issued and if validity is contested by any third party in subsequent proceedings, the second challenger will face substantial costs penalties if the patent is again upheld as valid.

 

Appeal procedure

36. What avenues of appeal are available for a defeated party and under what conditions?

A decision of the Comptroller may be appealed to the Patents Court of the High Court (Patents Court).

A decision of the Patents Court may be appealed to the Court of Appeal and appealed further to the Supreme Court on points of law (if the matter is one of general public importance or if the Court of Appeal gives permission). It is rare for permission to appeal to the Supreme Court to be granted in patent cases.

Final orders of the Intellectual Property Enterprise Court are appealed directly to the Court of Appeal and permission to appeal is regularly given. An appeal takes the form of a review rather than a re-hearing so it is rare that new evidence is considered on appeal. The appeal proceeds only on the written evidence already filed at first instance, transcripts of the first instance proceedings and written and oral arguments. Appeal proceedings in England from the Patents Court to the Court of Appeal will typically take about a year. Any further appeal to the Supreme Court is likely to take between one and two years.

 

Litigation costs

37. What level of cost should a party expect to incur to take a case through to a first instance decision, preliminary injunction proceedings and appeal proceedings?

Costs of patent litigation in England will vary, depending on the:

  • Complexity of the technology.

  • Number of patents involved.

  • Number of witnesses and experts.

  • Nature of the representation.

  • Length of the trial.

  • Nature of the issues.

For example, a streamlined procedure in the Intellectual Property Enterprise Court (IPEC) on a single patent would take a day whereas a full High Court trial with multiple parties and patents and complex technology may take up to five weeks. The attorney costs in a patent case in the High Court (with a one-week trial) typically range from about GB£500,000 to GB£2 million. Appeal costs are typically significantly less (in the region of a third of the first instance costs). Court fees are a combination of fixed and value-based fees. Claims for money are based on the value of the claim with the maximum fee payable being GB£10,000. Non-money claims (that is, a claim for an injunction) have a fixed fee of GB£480.

The general principle is that the loser pays the winner's costs (in practice a proportion of them) incurred in relation to the issues on which the paying party lost. Costs are awarded at the court's discretion and in a way that reflects the extent to which the winner has been successful on particular issues. Generally, a party who was successful on all or most issues would recover between 50% and 70% of its costs. The court will look at all the circumstances of the case (including the conduct of the parties and offers to settle). The precise level of costs will be determined by a detailed assessment procedure. Generally, the courts will allow costs that have been reasonably and proportionately incurred.

In the IPEC, the normal rules on costs do not apply. Recoverable costs for all claims in the IPEC are capped at GB£50,000 for liability and GB£25,000 for an inquiry as to damages or account of profits. The court rules set out the maximum costs that a court will award at each stage of a claim.

 

Reform

38. What are the important developing and emerging trends in your country's patent law?

The introduction of the unitary patent and the Unified Patent Court (UPC) planned for early 2017 will give parties a new and different forum to litigate in, with part of the Central Division in London able to deal with infringement and validity in cases relating to chemistry, including pharmaceuticals and the life sciences. While it is likely that substantive patent law will not change dramatically (given the sources of law on which the court must base its decisions), a new body of case law from the court will inevitably emerge. However, patent procedure will be different from the procedures currently used in the English courts and this will affect the tactics and litigation strategy of patent owners seeking to enforce their patents. Given the uncertainties that the new system presents, it is expected that many patent owners will opt out of the system for at least some of their patents and monitor how it develops. Before ratification of the Agreement on a Unified Patent Court dated 19 February 2013 (document 16351/12 of 11 January 2013) (UPC Agreement) in the UK, certain changes must be made to UK law so that it is compliant with the UPC Agreement and the Regulations establishing the unitary patent. Draft legislation has been published. This includes amendments to the Patents Act 1977 addressing:

  • UPC jurisdictional issues.

  • Transitional arrangements.

  • New exceptions to infringement (in relation to software decompilation and plant breeding).

The legislative changes will take effect from the date of entry into force of the UPC Agreement (see Question 1).

At national level, following a wide-ranging review and consultation on the threats provisions in UK IP legislation (see Question 18), draft legislation has been published. If, as expected, these provisions come into force, amendments will be made to the Patents Act. One of the aims of the draft legislation is to provide more certainty for rights owners as to what can and cannot be said to secondary infringers when enforcing their rights. This will provide some much needed clarity in this area, although it is likely that difficult areas of interpretation will still remain. The draft legislation also includes changes to the law to take into account the new unitary patent.

At domestic level, it will be interesting to see whether the increased powers given to the Patent Office regarding its patent opinion service will affect litigation strategies (see Questions 2 and 21). The Comptroller's new power to revoke a patent of its own volition where it has issued an opinion that the patent is not new or inventive can provide a quick and low-cost option to potential infringers to invalidate the patent of a competitor without the need to initiate court proceedings. Of course, patent owners may in turn be less likely to seek a validity opinion from the Patent Office given the risk of revocation.

Finally, legislative changes are being introduced to amend the Patent Box rules. The UK Patent Box provides an incentive for companies to patent IP developed in the UK by giving companies a reduced rate of tax on their profits from patents and similar IP while also making sure that new and existing patents are further developed and commercialised in the UK. There will be some necessary changes to this regime to ensure it remains consistent with the new international framework for tax favoured IP regimes set out by the Organisation for Economic Co-operation and Development in October 2015, and in particular that profits qualifying for a reduced rate of corporation tax are determined by reference to the company's direct engagement in R&D. The changes will generally have effect from 1 July 2016, although some IP acquired after 1 January 2016 will also be affected.

 

Online resources

Intellectual Property Office Website

W www.gov.uk/government/organisations/intellectual-property-office

Description. Official website maintained by the UK Intellectual Property Office.

Civil Procedure Rules

W www.justice.gov.uk/courts/procedure-rules/civil/rules

Description. Official website maintained by the Ministry of Justice containing the Civil Procedure Rules applicable to all civil proceedings, including patent infringement proceedings. See Part 63 for rules applicable to IP claims in particular.

Chancery Division Information

W www.justice.gov.uk/courts/rcj-rolls-building/chancery-division

Description. Official website maintained by the Ministry of Justice containing the court guides for the Chancery Division of the High Court of Justice. The procedure in the Patent Court follows broadly that of the Chancery Division with some differences (see below).

Patents Court Guide

W www.gov.uk/government/publications/patents-court-guide

Description. Official guide maintained by the HM Courts and Tribunals Service that sets out the court procedure applicable to the Patents Court. This should be read alongside the Chancery Division information and the Civil Procedure Rules (see above).

Intellectual Property Enterprise Court Guide

W www.gov.uk/government/publications/intellectual-property-enterprise-court-guide

Description. Official guide maintained by the HM Courts and Tribunals Service that sets out the court procedure applicable to the Intellectual Property Enterprise Court. This should be read alongside the Chancery Division information and the Civil Procedure Rules (see above).

The British Library Collection of Patent Resources

W www.bl.uk/collection-guides/patents Description. Official website of the British Library containing a comprehensive collection of British and foreign patent documentation.

British and Irish Legal Information Institute W www.bailii.org

Description. Official website of the British and Irish Legal Information Institute containing a database of British and Irish case law and legislation, EU case law, Law Commission reports, and other law-related British and Irish material.



Contributor profiles

Susie Middlemiss, Partner

Slaughter and May

T + 44 (0)20 7090 4038
F + 44 (0)20 7090 5000
E susie.middlemiss@slaughterandmay.com
W www.slaughterandmay.com

Professional qualifications. England and Wales, Solicitor; Bachelor of Law

Areas of practice. IP; patents; dispute resolution; licensing; IP in commercial agreements and transactions.

Non-professional qualifications. Bachelor of Science (Genetics and Biological Sciences), University of Sydney

Recent transactions.

  • Court and Court of Appeal litigation involving Smith & Nephew and ConvaTec concerning multiple patents and a range of other IP rights.
  • Acting for a major international healthcare company in High Court proceedings and multijurisdictional patent litigation.

Professional associations/memberships.

  • Member of the IPAC Committee of the BioIndustry Association.
  • Member of the Editorial Board of the Bio-Science Law Review.
  • City of London Law Society – IP Committee.
  • European Patent Reform Consultation Group.

Laura Balfour, Lawyer

Slaughter and May

T + 44 (0)20 7090 4018
F + 44 (0)20 7090 5000
E laura.balfour@slaughterandmay.com
W www.slaughterandmay.com

Professional qualifications. England and Wales, Solicitor; IP Diploma, University of Bristol.

Areas of practice. IP; monitoring and writing on new developments in intellectual property law including cross border litigation; consulting and advising on the Unitary Patent and Unified Court System throughout its development.

Non-professional qualifications. BA (Hons) Music, Worcester College, Oxford University.

Publications.

  • The EU Competition Rules on Intellectual Property Licensing (Slaughter and May).
  • Intellectual Property Act 2014: Changes to Design and Patent Law (PLC Magazine, July 2014).
  • The Unitary Patent: Central enforcement of patents in Europe (PLC Magazine, 2013).
  • The Unitary Patent: A new patent and court system for Europe (PLC Magazine, 2013).

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