1.1 What are the principal sources of law and regulation relating to patents and patent litigation? (Briefly describe the role of international, federal or state laws and relevance of court decisions, list and briefly describe relevant statutes and international treaties)
The principal sources of law and regulation relating to patents and patent litigation are:
National legislation
International treaties
The following international treaties are relevant to patent law:
(4) The Agreement on Trade-Related Aspects of Intellectual Property Rights (‘TRIPs’). This
established minimum standards for enforcement and court procedures within the EU. The PCT, EPC and TRIPS have been implemented in the UK by the Patents Act. With one exception, the national legislation above applies throughout the entire UK – ie
England and Wales, Scotland and Northern Ireland. (The exception is the CPR, which apply only to the courts of England and Wales.) UK patents are similarly granted in respect of the entire UK. However, 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. The Republic of Ireland is an independent country with wholly separate substantive and procedural rules, but has also implemented the EPC, PCT and TRIPs.
Court decisions
England and Wales is a common law jurisdiction. This means that non-statutory law and binding precedent judgments from prior cases form part of the law along with legislation.
1.2 What is the order of priority of the relevant sources, ie which take precedence in the event of a conflict?
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 must be interpreted in a manner which is consistent with the EPC and in practice, the courts will look to the wording of the EPC.
Decisions of tribunals
Decisions of these tribunals have priority as follows:
Courts in England and Wales are not bound to follow a decision of the European Court of Human Rights but they should ‘take it into account’ when applying the ECHR. A conflicting House of Lords 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 ECJ would take priority but does not have jurisdiction in respect of substantive patent law though some issues of law (eg aspects of enforcement which are the subject of an EC Directive and the rules on jurisdiction and choice of forum) may come before it.
2.1 In which courts are patents enforced? Are they specialised patent courts? If not, what level of expertise can a patent holder expect from the courts?
Patents are enforced primarily in the Patents Court or the PCC. The Patent Office (through the Comptroller of Patents) can 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.
Patents county court
The PCC typically deals with more straightforward cases of a lower monetary value than those heard by the Patents Court.
Patent Office
While not a court, the UK Patent Office can also resolve disputes between different parties on most issues relating to patents, including issues relating to ownership, compensation (eg for inventors of patents beneficial to their employers), entitlement disputes, the grant of compulsory licences and (in certain circumstances) disputes as to infringement and validity. In practice, issues relating to infringement rarely come before the Comptroller as the Comptroller is not empowered to grant injunctions (typically the most important form of relief being sought), although the Comptroller may award damages.
Bringing a case before the Comptroller is initially cheaper than bringing an action before the courts but, in the long term, a dispute commenced before the Comptroller may be more expensive. Ultimately, the Patent Office may simply be an additional stage that the case moves through before proceeding to the Patents Court (and perhaps the Court of Appeal thereafter) on appeal.
Both the Patents Court and the PCC are specialised courts in that 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 intellectual property barristers.
2.2 To what extent are courts willing to consider, or are bound by, the opinions of other national or foreign courts that have handed down decisions in similar cases?
English courts are bound by decisions of higher English courts (as indicated by the order of priority given above) and by the ECJ. Scottish and Northern Irish courts are bound by decisions of higher courts in their own jurisdictions, the House of Lords 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 where they are considering similar concepts. This is particularly true of the courts of Commonwealth jurisdictions such as Australia, Canada and South Africa.
2.3 Do the courts deal with infringement and validity simultaneously? Or must invalidity actions be brought in separate proceedings? If so, before which court or government agency (eg the Patent Office)?
The courts deal with infringement and validity together when both issues are raised. If the two issues are self-contained (which is unusual), it might be possible to deal with one as a preliminary issue if it would dispose of the case. The validity of a patent is typically raised as a counterclaim in infringement proceedings (or in an action for a declaration of non-infringement). While 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. The Comptroller can in any event refer cases to the courts if the issues can be better dealt with by the courts.
2.4 Who can represent parties before the courts handling patent litigation and/or the government agency dealing with patent validity issues?
In Patents Court litigation, parties must be represented by a barrister who presents the case in court (solicitors can also qualify to act as advocates but they rarely appear in patent trials). 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 may be involved, typically assisting with technical issues (though some may qualify to conduct litigation, but not as advocates, in practice they generally do not).
In the PCC, solicitors and patent agents can conduct litigation and appear as advocates though this is unusual. Before the Comptroller a party may appear personally or appoint anyone to represent them.
The language of the proceedings is English. No other choice is available.
2.6 To what extent are courts willing to grant cross-border or extraterritorial injunctions?
In theory it is possible for English courts to hear infringement actions in relation to foreign patents and to grant injunctions in respect of those patents. However, where validity is raised, the courts of the state where the patent is registered have exclusive jurisdiction and the English courts have taken this to prevent the grant of cross-border injunctions where the validity of the foreign patent(s) is in question. This approach, established in Coin Controls v Suzo (UK) Ltd [1999] Ch 33, has been effectively endorsed by the ECJ in Gesellschaft für Antriebstechnik mbH & Co KG v Lamellen und Kupplungsbau Beteiligungs KG Case C-4/03. Further, where there are multiple defendants alleged to infringe a series of patents in multiple jurisdictions, they cannot be sued together in one jurisdiction even where they are part of the same group and acting in concert. Although the Brussels Convention, Lugano Convention and EC Jurisdiction and Judgments Regulation allow for the consolidation of actions where there is a risk of irreconcilable judgments because the claims are so closely connected, 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. Accordingly, it would appear that cross-border injunctions only remain a possibility where (1) there is a single defendant being sued in respect of infringements in multiple jurisdictions and (2) the validity of the foreign patents in suit is not contested.
2.7 To what extent do courts recognise the blocking effect of ‘torpedo’ actions abroad?
The English courts have not specifically considered a ‘torpedo’ application – that is, an action where a defendant seeks to bring the matter first before the court of its choosing (by way of an application for a declaration of non-infringement in relation to multiple foreign patents) in a forum where proceedings are likely to be slow, in order to stop the plaintiff (known as the ‘claimant’ in England and Wales) from bringing infringement proceedings in another faster forum. The English courts are however subject to the lis pendens rules under Art 21 of the Brussels Convention and the equivalent rules in the Lugano Convention and the EC Jurisdiction and Judgments Regulation (all of which require the courts to stay a case where another court is first seised in order to avoid the risk of irreconcilable judgments). So it is likely that they would give effect to such a strategy, though it may be expected that they would be unsympathetic and strive to find a way to avoid it. With recent improvements in the speed of Italian and Belgian proceedings where ‘torpedoes’ were often launched, this strategy has in any event fallen out of favour with litigants. Given the ECJ cases discussed in question 2.6, this strategy is unlikely to be successful.
3.1 How is patent infringement assessed? To what extent does the doctrine of equivalents apply in an infringement action?
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.
When assessing infringement, the first step is to look to the activities causing the patent
owner concern. Potentially infringing acts can be broadly divided into three categories:
Assessment is objective, so the beliefs or motives of the alleged infringer are disregarded. While the infringer’s knowledge is relevant to some categories of infringement, the infringer can never 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 Art 69 of the European Patents Convention 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:
The House of Lords stated in Kirin Amgen v Hoechst Marion Roussel [2004] UKHL 46 that 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’. The House of Lords in Amgen specifically contrasted the US approach (of giving claims a literal interpretation and then determining the extent of protection surrounding the claims) and the English approach (in which the claims have a central role and are given a purposive construction).
Naturally, the main defences are that the allegedly infringing act does not fall within the claims and/or that the relevant claims are invalid.
Even where an act might fall within the scope of valid claims, other defences may be available under national law and do not derive from the EPC. These relate to:
3.3 To what extent can enforcement of a patent expose the patent holder to liability for an antitrust violation?
Although the patent regime provides a statutory monopoly it is still possible in certain circumstances for that monopoly to be enforced in a way which falls foul of competition law (the European equivalent to antitrust law). While there are no specific antitrust related defences, in practice a competition argument can be raised as a defence to a patent action in appropriate circumstances.
The competition issues may be raised and decided in the litigation or through a complaint to the EU Commission (or national competition authority), in which case court proceedings may be stayed pending that resolution.
The patentee’s conduct itself must be anti-competitive. Typically, an abuse of Art 82 of the EC Treaty (abuse of a dominant position) is alleged, for example where excessive prices are charged or a new product is kept off the market (IMS Health v NDC Health Case C-418/01). These issues are particularly likely to arise where the patent owner’s rights relate to a de jure or de facto standard product or process (see IMS) or an invention that is the subject of ‘pooled’ rights (as in Philips Electronics v Ingman [1999] FSR 72), where any failure by the patentee to grant licences on fair, reasonable and non-discriminatory terms may amount to an anti-competitive abuse. The courts are now more willing to entertain such ‘Euro defences’ as valid defences to allegations of infringement.
A patent may be invalidated on a number of grounds, most of which reflect equivalent provisions of the EPC, and therefore apply throughout Europe (although the interpretation and application of these grounds may vary between European jurisdictions).
A patent may be invalidated for:
(1) lack of novelty (anticipation);
(2) lack of inventive step (obviousness);
(3) lack of industrial applicability;
(4) concerning only excluded subject matter (which broadly encompasses discoveries, literary, dramatic, musical or artistic works, business methods, computer programs (per se) and presentations of information);
(5) lack of title (ie where the challenger argues that they, rather than the patentee, are entitled to the patent: this ground is particular to the UK and does not ref lect a provision of the EPC);
(6) insufficiency (where the specification is not sufficiently clear and complete to enable the invention to be performed); or
(7) containing added matter (where the specification of the granted patent is wider than that in the application as first published).
3.5 Can a court only partially invalidate a patent? Can it transform the patent into a utility model?
A court can find a patent to be partially invalid. In such cases, the court may, at its discretion, require amendment of the specification. Partially valid patents (including those declared partially invalid by the EPO) may still be infringed, but in order to obtain relief for infringement, the patentee must show that the initial specification was drawn up in good faith and with reasonable skill and knowledge, and any relief will of course 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, a patent cannot be transformed into a utility model (though this will change in line with proposed EC legislation).
Claims may be amended during legal proceedings (for infringement or revocation) at the discretion of the court, though within limits and subject to cost penalties (Smith, Kline and French Laboratories Ltd v Evans Medical Ltd [1989] FSR 561 at 569; affirmed in Bonzel v Intervention [1991] RPC 553).
3.7 Are there any grounds on which an otherwise valid patent can be deemed unenforceable, owing to misconduct by the patent holder, or for some other reason (eg expiry of time limit?
A patent holder 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.
It is possible that relief will be refused where enforcement of a patent amounts to a breach of competition rules.
3.8 Can a patent holder bring a law suit 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 (primarily the High Court).
4.1 Who can sue for patent infringement (patent holder, executive licensee, non-exclusive licensee, distributor)? Does a licensee need to be registered to sue?
A patent owner has a right to sue. An exclusive licensee can sue for infringement occurring after the grant of the exclusive licence (provided the owner is joined as a party).
In the majority of cases, an exclusive licensee must have a registered licence at the start of proceedings in order to sue and failure promptly to register may affect the licensee’s right to damages.
Certain other licensees (essentially those to whom the patentee is obliged to grant licences) can call on a patent owner to sue on their behalf, failing which they can sue in their own name (joining the patentee as a party). Other non-exclusive licensees do not have any such right to enforce the patent if the patentee declines to do so.
4.2 Under what conditions, if any, can an alleged infringer bring a law suit to obtain a declaratory judgment on non-infringement?
A declaration of non-infringement can be sought (through the court or the Comptroller) provided that:
Such an application may bring certainty and/or choice of forum but also put the burden of proof (at least initially) on the potential infringer.
4.3 Who can be sued for patent infringement? Can the company directors be sued personally? Under what conditions, if any, can someone be sued for inducing or contributing to patent infringement by someone else?
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 the act was clearly that of the director acting through the company as a mere conduit for his own activities. (Mentmore Manufacturing Co Ltd v National Merchandising Manufacturing Co Ltd (1978) 89 DLR (3d) 195). Personal liability will depend on the extent of control and involvement of the director (Springsteen v Flute International [1999] EMLR 199).
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 as acting in concert. (British-Thompson Houston Co v Sterling Assoc (1924)).
When two or more parties combine to infringe they may be sued as joint tortfeasors.
Parties can be added during UK litigation if desirable to resolve issues in dispute. The new party must be given every opportunity to participate fully in the litigation and they may not 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 may be removed.
5.1 What options are open to a patent holder when seeking to enforce its rights in your country?
Patents are enforced by civil proceedings brought by the patent owner.
A warning letter is not required though often desirable (and sometimes necessary to establish that the infringer had knowledge of the patent, as required to obtain damages). It may also reduce the risk of adverse costs awards and of course encourage settlement discussions. In some circumstances such notice may amount to an unjustified threat of litigation (which is itself actionable).
In the UK, the infringement of patent rights does not give rise to a criminal liability.
Goods (except those for personal use) which infringe patents and supplementary protection certificates are subject to border measures. Customs officials may detain or suspend goods and may obtain (either on their own initiative or at the request of the right-holder or certain licensees) an order that they be forfeited.
5.4 To what extent are alternative dispute resolution (ADR) methods (such as arbitration or mediation) available to resolve patent disputes? If arbitration is available to assess invalidity, will your Patent Office recognise and execute an arbitral award declaring a patent invalid?
Alternative dispute resolution (‘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; the court rules require it to be considered at various stages of litigation and failure to engage in ADR may have an adverse impact on costs recovery (Dunnett v Railtrack [2002] 2 All ER 850).
The UK Patent Office has a new ADR service for patent disputes by which the hearing officer gives a non-binding opinion on validity or infringement.
The Patents Act provides that validity may only be put in issue in specified proceedings (all heard by the court or the Comptroller) and that validity may not be put in issue in other proceedings. It is not clear whether validity can nonetheless be dealt with in an arbitration. In any event in practice, if the issue were dealt with in arbitration, the Arbitral tribunal could not affect the Register so the result could only be effective if:
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.
Two key aspects of the English court approach are (1) the use of oral evidence and cross-examination of witnesses and (2) extensive documentary disclosure by each party of material that both helps and hinders their case.
Patent infringement proceedings will typically involve the following steps (an alternative, more limited, procedure is discussed below):
Cases are heard by a single specialist judge who will typically have some scientific as well as legal qualifications. Three judges sit in appeal cases and one is a specialist patents judge. Juries are not used.
6.3 To what extent are documents, affidavits, witnesses and/or (court-appointed or private) experts used? Is it possible to cross-examine witnesses?
Witnesses give evidence in writing and orally. Unless a witness wishes to add additional matter (which is permissible only to a limited extent) the 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 may then ‘re-examine’ to assist the witness in answering any points raised in cross-examination.
The parties may, with the permission of the court, use expert witnesses and may use more than one where there is a need for several different areas of expertise. In theory, it is possible for a court instead to 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 giving their opinion on technical matters, explaining what alternative views are possible and the reason for adopting the particular view recommended in the report. The experts are required to seek to agree on what issues they can. Expert evidence is often crucial to the outcome of a patent dispute.
6.4 To what extent is pre-trial discovery permitted? If it is permitted, how is discovery conducted? If it is not permitted, what other, if any, mechanisms are available for obtaining evidence from an adverse party or from third parties?
‘Discovery’ is termed ‘disclosure’ in English courts, and typically takes place once all parties have filed their pleadings.
The parties are required to make a reasonable search for all relevant documents in their possession or control. Standard disclosure requires a party to disclose all the documents on which it relies, which adversely affect its own case and which adversely affect or support another party’s case other than those protected by legal privilege. Disclosure is now contained. In particular, a description of the allegedly infringing product or process may be used to fulfil the defendant’s disclosure obligations as regards the nature of its allegedly infringing activities. Disclosure in relation to validity is limited to documents created within the two years before or after the priority date.
The court may order broader disclosure to deal with specific issues and/or documents. It can also restrict or dispose of disclosure (see the streamlined procedure discussed below).
Third parties may be ordered to give disclosure where their documents are likely to support the case of the applicant or adversely affect the case of one of the other parties. In exceptional cases, disclosure may be ordered at a very early stage in proceedings, or before a claim has been formally commenced.
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) and adverse inferences are likely to be drawn if relevant material has been disposed of. Duties of disclosure continue until proceedings are concluded. A party may not (without leave of the court) rely on documents which have not been disclosed to or made available for inspection by the other party.
It is also possible to obtain an inspection of the defendant’s allegedly infringing machinery or apparatus.
6.5 What level of proof is required for establishing infringement or invalidity?
The burden of proving infringement is on the balance of probabilities, ie that an allegation is more likely to be true than not, and this burden initially lies on the plaintiff. However, in some circumstances the burden may shift to the defendant if the plaintiff has made out a prima facie case from which it may be inferred that infringement has occurred (eg Saccharin Corp v Dawson (1902) 19 RPC 169) and the defendant will then be required to adduce evidence sufficient to displace that inference. The defendant must in all cases prove invalidity on the balance of probabilities.
If the patented invention is a process for obtaining a new product, the same product produced by the non-patentee shall be taken as having been produced by the same patented process unless the producer can prove otherwise.
The plaintiff must also prove damage (after the trial on liability), but the courts are 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 (see Gerber Garment Technology v Lectra Systems [1997] RPC 443CA).
If a declaration of non-infringement is sought, the burden of proof lies on the person seeking that declaration (Rohm & Haas Co v Collaq Ltd [2001] FSR 28).
6.6 How long do patent infringement proceedings typically last? Is it possible to expedite this process?
Patent proceedings typically last around a year. The precise time will depend upon the length and complexity of the case, the attitude of the parties, the amount of active case management by the court and the availability of court time. If there is an assessment of damages, a further period will be required though most parties deal with damages by agreement.
Proceedings can be expedited in a number of ways:
(a) Speedy trial
Where a degree of urgency can be shown, the court may shorten the timetable.
Though of necessity some aspects (in particular disclosure) may be dealt with in a more limited way, in general terms the procedure is the same as normal, so such cases are very intensive and a case may come to (a full oral) trial within six to nine months of commencement of the case.
(b) Streamlined procedure
The court may order 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:
Recent cases which have used this procedure successfully include Mayne Pharma v Pharmacia Italia SpA [2005] EWCA Civ 137 and Canady v ERBE Elektromedizin GmbH [2005] EWHC 2946. In the latter case, the infringement element of the proceedings was split from the other issues and tried separately using the streamlined procedure.
(c) Interim injunctions
In practice, successful interim injunction applications
are rare in patent cases. Such an application introduces an additional step which may in fact lengthen the overall timetable.
Nonetheless, the practical effect is often a speedier resolution because:
(1) where an interim injunction is granted, an early remedy is obtained and the parties often then negotiate and settle the matter without further
(2) proceedings; and where an interim injunction is refused, the court may acknowledge the urgency of a matter by instead granting a speedy trial.
(d) The hearing of a preliminary issue
Where a decision on a particular issue may dispose of an action altogether, the court may hear this issue on its own before the rest of the case in the interests of saving time and costs.
(e) Summary judgment
Summary judgement (or the striking out of part of the case) may be given in very clear cases at an early stage of the procedure in favour of the plaintiff 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). Where the viability of a claim or defence turns on a factual matter about which there is any doubt, the case must proceed to trial. Given the nature of patent cases, these requirements for summary judgment or strike-out are rarely satisfied.
6.7 What options, if any, are available to a defendant seeking to delay the proceedings? Under what conditions, if any, can proceedings be stayed? How can a plaintiff counter delaying tactics of defendant?
The defendant can generally introduce 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. The pace with which the action proceeds will depend upon the attitude of both parties, the attitude of the particular judge, the availability of court time for hearings and any genuine justification for delay, such as complexity of the matter (eg the number of patents involved and the extent of the factual issues (eg non-patent related defences), the need for experiments and scale of disclosure), the unavailability of key witnesses (eg clients located abroad) and urgency. The opportunities for delay are minimal where the court has decided that the matter is sufficiently urgent to require a speedy trial.
In certain circumstances, a defendant can obtain a delay by having the action stayed (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:
A plaintiff can press forward with the pleadings and make applications to court to keep extensions short and set the timetable as early as possible. Securing an early trial date is crucial. If there is real urgency, a shortened timetable may be obtained. Where appropriate, an interim hearing, may force the defendant (eg on a preliminary issue) to press ahead.
7.1 What remedies are available against a patent infringer (final injunction, delivery up or destruction of infringing goods, publication of the decision, recall-order, monetary remedies, etc)?
There are a number of remedies potentially open to the patent owner:
Virtually all decisions are published. Though this is not specifically regarded as a ‘remedy’ in its own right it can obviously have a significant impact on the losing party’s commercial position.
7.2 To the extent it is possible to obtain a final injunction against future infringement, is it effective against the infringer’s suppliers or customers?
The practice of the courts is to phrase an injunction to restrict the defendant and its agents and servants and it may extend to prevent importation of products from countries where there is no corresponding patent (Thetford v Fiamma [1989] FSR 57). 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.
7.3 What monetary remedies are available against a patent infringer (reasonable royalty, lost profits, account of profits, or some other basis)? Are punitive damages available? If so, under what conditions?
A plaintiff is entitled to a monetary remedy in respect of infringement and must elect between:
The assessment of these amounts may 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 plaintiff must choose between an enquiry as to damages and an account of profits, but the defendant may 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 (eg where the patent is only partially valid or, in certain circumstances, where the defendant was unaware of the patent and had no reason to be aware of it).
The general principle is that the patentee should be put in the same position as if the infringement had not happened. This means the patentee is to 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 patentee’s prices. On non-competing sales, compensation will typically be assessed by reference to a reasonable royalty (Gerber Garment Technology Inc v Lectra Systems Ltd [1997] RPC 443).
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 (Hoescht Celanese v BP Chemicals [1998] FSR 586).
8.1 Is preliminary relief available? If so, what preliminary measures are available (eg preliminary injunction) and under what conditions?
Preliminary relief is available. It is necessary to show urgency, or that the relief is otherwise necessary in the interests of justice. A variety of preliminary relief is available pending trial:
Such an order will be made if the plaintiff:
The plaintiff will generally be required to 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. Interim injunctions are rare, largely because full proceedings can be rapid if necessary and because damages are often an adequate remedy. It is possible to seek an interim injunction even before an infringement has commenced, based on a clear and imminent threat to infringe.
8.2 Is ex parte relief available, where defendant is given no notice at all? If so, under what conditions?
Ex parte relief (eg an injunction or search and seizure order ) is available in exceptional cases, where the matter is so urgent that the defendant may not be notified or 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. The applicant for an ex parte order has special duties to investigate the facts and fully and fairly to present the evidence of the case (and include the arguments both for and against the application).
8.3 Is plaintiff entitled to ask for an order that defendant’s premises are searched and a description of the infringing goods (and the accounting relating thereto) is made in order to establish proof of infringement (saisie-contrefaçon)? If not, what other mechanisms, if any, are available for seizing and preserving evidence for trial?
See the search and seizure orders discussed under question 8.1 above.
8.4 Can the defendant put the validity of a patent in issue in preliminary injunction proceedings?
A defendant can raise the issue of validity but it will not be determined at that stage.
Proceedings for an interim injunction typically comprise:
8.6 To what extent are documents, affidavits, witnesses, and/or (court-appointed or private) experts used in preliminary injunction proceedings?
Generally evidence is given in written witness statements in all preliminary applications (in some cases formally sworn affidavits are required). The parties are entitled to provide documents along with their evidence but there is no provision for disclosure at this stage (except under question 8.1(1) and (2)).
8.7 What level of proof is required for establishing infringement or invalidity in preliminary injunction proceedings?
The plaintiff must establish that there is a serious question to be tried but practice is changing and, where the merits of the case are demonstrably strong, an injunction is probably more likely.
The length of preliminary proceedings will vary depending upon the circumstances of the case.
In theory, an injunction is an inter partes action which may be granted within weeks (or even days). Generally speaking, however, an interim application could expect to be heard within about two months. It is more usual however, where the court accepts that there is a degree of urgency, for a speedy trial to be granted (see above).
8.9 Where a preliminary injunction is granted, is it necessary to start main proceedings to confirm the preliminary injunction?
It is necessary to start main proceedings when any interim relief is sought (and generally before or simultaneously with seeking such relief except in very urgent cases).
9.1 What avenues of appeal are available for a defeated party in main proceedings or preliminary injunction proceedings? Under what conditions?
A decision of the Comptroller may be appealed to the Patents Court (High Court).
Decisions of the PCC are appealed directly to the Court of Appeal and permission to appeal is regularly given. Decisions of the Patents Court may be appealed to the Court of Appeal and there may be a further appeal to the House of Lords on points of law, where the Court of Appeal gives permission or generally where the House of Lords regards the issue as one of general public importance.
An appeal takes the form of a review rather than a rehearing and so it is rare that new evidence is considered on appeal. The appeal proceeds on the written evidence only, transcripts of the first instance proceedings and written and oral arguments. Any appeal from the Court of Appeal will be to the House of Lords, although it is rare for permission to appeal to be granted in the sphere of patent cases reach the House of Lords.
9.2 How long do appeal proceedings typically last?
Appeal proceedings in England from the High Court to the Court of Appeal will typically take about a year. Any further appeal to the House of Lords is likely to take one to two years.
10. LITIGATION COSTS
10.1 What level of cost should one expect to incur to take a case through to a first instance decision, preliminary injunction proceedings and/or appeal proceedings?
Costs of patent litigation in England will vary depending upon the complexity of the technology, number of patents involved, the number of witnesses and experts, the nature of the representation, and the nature of the issues. For example, a streamlined procedure in the PCC on a single patent would take a day, a full High Court trial with multiple parties and patents and complex technology might take five weeks (and cost millions of euros). Typically costs would be expected to be within the following range: High Court: to trial at first instance – standard procedure €700,000–1,500,000 (say one week trial) High Court: to trial – streamlined procedure (one day trial) €100,000–450,000 PCC: to trial €100,000 (if streamlined) – €1,500,000 Proceedings for preliminary injunction €70,000–450,000 Court of Appeal €150,000–1,000,000 House of Lords €150,000–1,000,000
The European Patent Office Study on the Assessment of the impact of the European Patent Litigation Agreement on Litigation of European Patents (February 2006) includes cost estimates for patent litigation in different jurisdictions. The estimates given apply to average small-to medium-scale patent cases where the sums in dispute are between €200,000 and €1m. The study notes that the average sum in dispute in Great Britain is well over €1m and estimates costs for small-to-medium at €150,000 (streamlined procedure) to €1.5m at first instance and €150,000–1,000,000 at second instance (estimates given by Jacobs LJ of the Court of Appeal). The study also notes that the costs are higher than Germany and Netherlands, reflecting special features of the common law system (eg discovery and hearings of witnesses) and the tendency of large innovative companies to take their important cases to UK courts.
10.2 Are costs recoverable from the losing party?
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 in the court’s discretion and in a way which reflects the extent to which the winner has been successful. The court will look at all the circumstances (including the conduct of the parties and offers to settle). The precise level of costs will be determined by a detailed assessment procedure. Generally, those costs which have been reasonably and proportionately incurred will be allowed. forthcoming legislation
11.1 What are the important developing and emerging trends in your country’s patent law?
Over recent years there have been significant changes in procedure relating to patent litigation and it is now increasingly possible to vary procedural steps to make litigation more focused and efficient and contain costs. Cases are coming to trial more quickly on time scales that compare favourably with other jurisdictions. Having fallen from favour some years ago, competition law based defences are becoming increasingly relevant.
11.2 To the extent it relates to patent enforcement, please outline any major patent legislation in the pipeline.
Although there are various reviews looking at certain aspects of patent law, these are some way from any change in legislation. There is no forthcoming legislation relating specifically to patent enforcement. While some way from becoming the subject of legislation, the continuing discussions over the potential introduction of a Community Patent and the proposal for establishment of a European patent litigation system which would provide an integrated judicial system and centralised enforcement for European Patents (and now looks more likely to come to fruition) are the most important developments for Great Britain, along with the rest of Europe.
12. USEFUL REFERENCES
12.1 Please identify any useful works of reference relating to patent
law and patent litigation in your country including useful websites
Reference books
Campbell, Birss, Burkill, Miller, Thorley Terrell on the law of patents (16th edn, 2006) CIPA Guide to the Patents Acts (5th edn, 2001) with supplements
Websites
Civil Procedure Rules, Part 63, Patents and other Intellectual Property Claims:
www.dca.gov.uk (also available as a book)
Patent Office website: www.patent.gov.uk
www.ip-institute.org.uk
The British Library collection of patent resources (see ‘Patents and other Links’ and
‘Litigation’ for further useful links): www.bl.uk/patents
