28 Oct
2014

United Kingdom

What options are open to a patent owner seeking to enforce its rights in your jurisdiction?

The United Kingdom has three distinct jurisdictions: England and Wales, Scotland and Northern Ireland. Substantive patent law is the same throughout the United Kingdom, but each jurisdiction has its own procedural laws. In practice, nearly all patent cases are heard in the courts of England and Wales, so the responses below focus on the laws of England and Wales.

There are two courts in England and Wales in which a patent owner may enforce its rights: the Patents Court and the Intellectual Property and Enterprise Court (IPEC), both of which are based in London. The IPEC is suitable for cases of lower value, such as those involving small and medium-sized enterprises, as the damages recoverable from an infringer are capped at £500,000 (unless otherwise agreed).

If the parties agree, they may refer a patent infringement dispute to the UK Intellectual Property Office (UKIPO) for determination in accordance with its less formal procedures. However, this is uncommon as the UKIPO can only award damages as a remedy.

Are parties obliged to undertake mediation/arbitration prior to bringing a case before the courts? Is this a realistic alternative to litigation?

The courts encourage parties to attempt to resolve disputes before commencing litigation – in particular, by considering some form of alternative dispute resolution (ADR). The courts may impose sanctions on a party that has unreasonably refused to consider ADR. Generally, these sanctions require the party at fault to contribute to the costs of the other party. However, the courts recognise that in some cases there is no realistic alternative to litigation and will not necessarily penalise a party for not having considered ADR.

A range of ADR options are available in the United Kingdom, including mediation, early neutral evaluation (by an expert in the technical field or a lawyer) and arbitration. The UKIPO offers ADR services itself and the IPEC maintains a list of suitable mediators.

Are there specialist patent or IP courts in your jurisdiction? If not, what level of expertise can litigants expect from the courts?

Both the Patents Court and the IPEC are specialist IP courts, with technically qualified judges who specialise in IP law available to hear the more complex patent cases. The Court of Appeal includes two specialist IP judges who usually take the lead in writing the judgments in patent appeals.

If necessary, a court may appoint an independent scientific adviser to assist the judge(s) in understanding the technical background to the dispute. This is rarely necessary, given the technical backgrounds of the Patents Court judges and the reliance by the parties on opinions from experts in the field; but it has sometimes been welcomed by the appeal courts where the technology at issue is particularly complex.

Are validity and infringement dealt with together, or does your country have a bifurcated system?

If both validity and infringement are disputed, they are almost always addressed together.

Who may represent parties engaged in a dispute?

In the Patents Court and the IPEC, parties may be represented by solicitors and barristers. Solicitors’ firms undertake the bulk of the legal work, instructing barristers or solicitor-advocates to present the case in court. Solicitors may perform advocacy in the IPEC and in the European Court of Justice (ECJ), but not in the Patents Court or appeal courts, unless they are qualified as a solicitor-advocate. Patent agents may represent clients in the IPEC and may also obtain a litigation qualification which allows them to present cases before the higher courts.

To what extent is pre-trial discovery permitted in cases?

Disclosure (documentary discovery) is an important element of civil litigation and the courts have wide-ranging powers in this regard.

The courts may order disclosure before litigation begins, but only in relation to specified documents or classes of document – so-called ‘fishing expeditions’ are not allowed. Third parties based in the United Kingdom may be ordered to give disclosure and disclosure may be sought overseas, with overseas courts conducting the procedure.

Disclosure is usually ordered once litigation has commenced, with the parties being required to disclose for inspection any relevant documents (ie, documents that support or adversely affect either party’s case). The parties are required to carry out a reasonable search for documents that are, or have been, in their control. The alleged infringer may, at its option, prepare a full description of the relevant features of its product and/or process in lieu of giving disclosure in relation to infringement. Disclosure in relation to validity is limited to a four-year window around the priority date.

Disclosure is subject to the right of the disclosing party to withhold documents on the grounds of privilege. Further, the courts may order that documents containing confidential information be disclosed only to members of a ‘confidentiality club’, being those who must see the information for the litigation.

Is cross-examination of witnesses allowed during court proceedings? If so, what form does this take?

Witnesses of fact and expert witnesses must be available for cross-examination at trial. Cross-examination takes the form of a succession of oral questions put to and answered by the witness. If a party disagrees with any aspect of the evidence in chief, that party must put its disagreement to the witness in cross-examination.

At trial, the courts have the power to limit cross-examination of witnesses to particular issues. In the IPEC, cross-examination is strictly controlled to keep costs down.

What use of expert witnesses is permitted?

The court must adopt the perspective of a skilled person in order to address many of the key issues in patent cases. It is commonly assisted in this task by one or more expert witnesses. The issues in relation to which expert evidence is admissible include the scope of common general knowledge, the working of the invention and disclosures in the prior art. The conclusions of expert witnesses on key issues of law – such as claim construction, obviousness and sufficiency – carry little weight with the court, although their rationale in reaching those conclusions may be relevant.

Generally, each party is permitted to rely on evidence given by an expert witness engaged on its behalf. If the court considers a patent to be directed to a team with expertise in more than one discipline, it may allow the parties to call several expert witnesses.

Expert witnesses have an overriding duty to assist the court on matters within their expertise and their opinions must be given independently; they are not advocates for any of the parties.

Is the doctrine of equivalents applied by courts in your jurisdiction? If so, what form does it take?

The scope of protection conferred by a patent is determined by its claims, as interpreted in light of the description and drawings. The key question is: what would the skilled person have understood the inventor to have been using the claim language to mean? This is referred to as ‘purposive construction’. It is considered to strike a fair balance between providing third parties with a reasonable degree of legal certainty and giving the patentee fair protection of its monopoly. There is no doctrine of equivalents in the United Kingdom.

Are there problems in enforcing certain types of patent relating to, for example, biotechnology, business methods and software?

Some types of invention are not patentable in Europe – specifically, inventions that consist of one or more of the following, as such:

  • discoveries, scientific theories or mathematical methods;
  • literary, dramatic, musical or artistic works, or other aesthetic creations;
  • business methods, computer programs or methods for performing a mental act or playing a game; and
  • the presentation of information.

The following biotechnological inventions are excluded from patentability in Europe:

  • the discovery of a gene sequence, unless the industrial application of that discovery is also disclosed;
  • processes for cloning human beings or for modifying genetic material in the germ line of human beings;
  • the use of human embryos for industrial purposes;
  • processes for modifying the genetic identity of animals that are likely to cause them suffering without substantial medical benefit; and
  • animal or plant varieties, or any essentially biological process for their production.

Also excluded from patentability are:

  • methods of treatment of the human or animal body by surgery or therapy (though not a substance used in treatment);
  • methods of diagnosis practised on the human or animal body; and
  • inventions whose commercial exploitation would be contrary to public policy or morality.

To what extent are courts obliged to consider previous cases that have covered issues similar to those pertaining to a dispute?

The courts observe the doctrine of binding precedent. This means that a statement made by a court on a point of law is generally binding on courts at the same level or lower. However, whereas statements of the rationale for the court’s decision are binding, statements made in passing are only persuasive. Moreover, a decision may be distinguished if its factual background was sufficiently different from the facts of the present case that the point which was decided does not arise.

The highest court in the United Kingdom, the Supreme Court, is not bound by its own decisions or those of its predecessor (the House of Lords).

All courts are bound by decisions of the ECJ in relation to the interpretation of EU law.

Although not bound by European Patent Office case law, UK courts have confirmed that they will follow the settled approaches of the European Patent Office’s Technical Board of Appeal.

To what extent are courts willing to consider the way in which the same or similar cases have been dealt with in other jurisdictions? Are decisions from some jurisdictions more persuasive than those from others?

The courts consider decisions of overseas courts on similar issues to be persuasive and may specifically address them in their judgments. Decisions in other European jurisdictions tend to be the most relevant because European patents generally have the same claims throughout Europe and the courts are applying harmonised law based on the European Patent Convention. Of these, decisions of the courts of Germany and the Netherlands are considered to be the most persuasive. The courts may also consider decisions of courts in other Commonwealth countries, particularly Australia, Canada and South Africa. Decisions of courts in the United States may also be reviewed if a new issue arises.

What realistic options are available to defendants seeking to delay a case? How might a plaintiff counter these?

Around 15 years ago, civil litigation was reformed wholesale by the Civil Procedure Rules. Under the rules the courts control case management. Further reforms were implemented in 2013, addressing the potential for litigants to delay cases. Since then, the courts have taken a strict approach to non-compliance with court timetables, striking out late-filed pleadings and refusing to admit late-filed evidence. It is therefore more difficult than ever for defendants to delay litigation.

Under what circumstances, if any, will a court consider granting a preliminary injunction? How often does this happen?

The courts can order interim injunctions against defendants where it is just and convenient to do so and the claimant has not delayed in making its application. An interim injunction should not be ordered unless the claimant can establish that there is a serious question to be tried (a low threshold), and that damages would not be an adequate remedy for infringement. If these requirements are met, then provided that damages would adequately compensate the defendant if it were injuncted until trial but found not to infringe, the court should order an interim injunction. Otherwise, the court will reach a decision by weighing up the factors favouring the grant or refusal of the injunction, including the status quo.

Interim injunctions are relatively common in pharmaceutical cases, because any prolonged disturbance to the monopoly held by the innovator product often results in an irreversible decrease in its price. In other sectors, interim injunctions are uncommon.

Recent case law suggests that the courts can grant injunctions having effect in other European countries.

How much should a litigant budget for in order to take a case through to a decision at first instance?

It is likely to cost between £500,000 and £2 million to take a case to trial in the Patents Court, depending on the number and complexity of disputed issues and the strategies employed by the litigants. Costs in the IPEC are lower, ranging between £50,000 and £300,000.

How long should parties expect to wait for a decision to be handed down at first instance?

Cases in the Patents Court typically take between 12 and 15 months to reach trial, with judgment between two and three months later. Actions in the IPEC often take between six and nine months to reach trial, with judgments issued between one and three months later.

To what extent are the winning party’s costs recoverable from the losing party?

The general rule is that the successful party is entitled to recover a proportion of its costs from the losing party – between 60% and 70% costs recovery is common. However, the courts have the discretion to look at other factors when assessing and allocating costs – in particular, any settlement offers made or refused, whether the losing party succeeded on some of the issues and the conduct of the parties during the litigation. In the IPEC, costs recovery is capped at £50,000.

The 2013 civil litigation reforms have given the courts greater powers to manage costs. Going forward, litigants are generally required to file costs budgets at an early stage in the litigation, which they may be held to when costs are assessed after trial.

What remedies are available to a successful plaintiff?

A successful claimant is generally granted a broad final injunction to restrain the defendant from infringing the patent until it expires and an order for delivery up or destruction of any infringing products still in the defendant’s control. The claimant is entitled to damages in respect of past infringement (except where infringement was innocent), but at the court’s discretion may instead elect for an account of the profits made by the defendant that are attributable to its past infringement. The court will also make a declaration that the defendant’s acts infringed the patent and, if validity was disputed, issue a certificate of contested validity.

How are damages awards calculated? Is it possible to obtain punitive damages?

Damages are intended to restore the claimant to the position it would have been in but for the defendant’s infringing acts. The claimant may recover only losses that were reasonably foreseeable consequences of the defendant’s infringing acts.

Where the claimant has exploited its invention through licensing, the court generally awards damages based on its assessment of the royalty that the defendant would have had to pay for a licence in light of royalties paid by others. Where the claimant manufactures products implementing the invention, damages may be based on an assessment of the profits that the claimant would have made on product sales but for competition from the infringing products. If the claimant does not license its invention and cannot prove lost profits, the court will award damages based on its assessment of what a reasonable royalty would have been.

The courts do not award punitive damages for patent infringement.

Under what circumstances might a court grant a permanent injunction? How often does this happen?

A successful claimant is normally granted a final injunction to restrain the defendant from infringing its patent. In circumstances where the enforcement of a final injunction would have a disproportionate effect on the defendant’s business, additional damages may be awarded in lieu of an injunction.

Does the losing party at first instance have an automatic right of appeal? If not, under what circumstances might leave to appeal be granted?

The losing party must obtain permission to appeal from the first-instance court or, if that court refuses permission, from the court which would hear the appeal.

Permission to appeal may be given where the court considers that the appeal would have a real prospect of success or there is some other compelling reason why the appeal should be heard.

How long does it typically take for the appellate decision to be handed down?

Court of Appeal hearings usually take place between nine and 12 months after the first-instance court delivers its judgment, with the appeal judgment issued between one and two months later. Appeals on urgent issues have been determined within two weeks of permission to appeal being given.

Is it possible to take cases beyond the second instance?

Judgments of the Court of Appeal may be appealed to the Supreme Court, but permission to appeal is given only for cases that raise an arguable point of law of general public importance which ought to be considered by the Supreme Court at that time.

To what extent do the courts in your jurisdiction have a reputation for being pro-patentee?

The courts are characterised by an intellectually rigorous approach and a fair process for all parties. They are not considered to favour either patentees or infringers.

As a rough guide, in cases in which both validity and infringement are contested, the defendant is held to infringe a valid claim around 30% of the time. The patent is found invalid in around 50% of such cases.

Is your jurisdiction a signatory to the London Agreement on Translations?

Yes.

Has your jurisdiction signed the Agreement on the Unified Patent Court? If so, when do you expect it to be ratified?

The United Kingdom has signed the Unified Patent Court Agreement and enacted the legislation necessary to ratify it. Ratification is currently expected to take place shortly before the next general election in May 2015. It is expected that the United Kingdom will delay deposit of the instrument of ratification until all practical preparations for the Unified Patent Court have been completed.

Are there any other issues relating to the enforcement system in your country that you would like to raise?

A patentee that threatens a third party with an action for patent infringement is liable to a person aggrieved by the threats unless the patentee establishes that the patent is valid and infringed. Patentees must therefore take care when corresponding with alleged infringers.

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Penny Gilbert

Partner

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Penny Gilbert is a founding partner of Powell Gilbert LLP. She obtained an MA in biochemistry and a DPhil in molecular biology from Oxford University before qualifying as a lawyer. Dr Gilbert specialises in patent litigation, particularly in the life sciences, and represents clients before the UK Patents Courts and the European Court of Justice. She also advises on European patent litigation strategy and has a wealth of experience in coordinating multinational patent litigation. Dr Gilbert is a vice president of the European Patent Lawyers Association and a member of the International Association for the Protection of Intellectual Property and UK IP Lawyers’ Association. She frequently lectures on IP law and is a tutor on the Oxford University postgraduate diploma in IP law and practice.

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Alex May

Associate

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Alex May is a specialist IP litigator with particular experience of multi-jurisdictional patent litigation. He acts in disputes relating to patents in all technical fields and his recent experience includes actions concerning smartphones, television set-top boxes, offshore drilling and pharmaceuticals. Mr May is experienced in reviewing patent portfolios to identify patents for assertion and in obtaining evidence from overseas jurisdictions. Before joining Powell Gilbert, Mr May moved to Melbourne, Australia to work as an overseas IP lawyer. His technical background is in genetics and he has studied at the universities of Oxford, Sydney and Nottingham.

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Dennis Waller

Associate

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Dennis Waller is a specialist IP lawyer with a strong technical background, having completed a master’s in chemistry at the University of Cambridge. He has worked with clients across a range of industry sectors and has been involved with several cases before the UK Patents Court. In particular, he has experience of working on multi-jurisdictional patent actions within the pharmaceutical and telecommunications industries, as well as copyright, trademark and design disputes in the retail industry.