Enforcing patents in the United Kingdom

22 August 2005

Morag Macdonald

What options are open to a European patent holder, whose rights cover your jurisdiction, when seeking to enforce its rights in your jurisdiction?

When seeking to enforce its rights in the United Kingdom, a European patent holder has four possible courts where it can bring infringement proceedings. The two main courts where infringement proceedings are conducted are the Patents Court of the High Court of England and Wales and the Patents County Court for England and Wales. Both courts can grant an injunction and award damages against an infringer for the whole of the United Kingdom. It is also possible to obtain this sort of relief against an infringer from the Court of Session in Scotland and from the High Court in Northern Ireland.

Does your jurisdiction have specialist patent courts? If not, what level of expertise can a patent owner expect from the courts?

The Patents High Court and the Patents County Court are specialist courts with specialist patents judges, but this is not the case in the courts in Scotland and Northern Ireland. At least one of the judges in each of the London-based specialist patents courts practised as a specialist intellectual property advocate in private practice before being appointed as a judge and, therefore, has many years of experience of patent litigation.

Is it possible to cross-examine witnesses at trial? How far are proceedings based on written evidence? Are there restrictions on the use of evidence from experts?

Prior to the trial of a patent action in the UK, the parties will provide written evidence from both expert witnesses and witnesses of fact. When any party wishes to rely at the trial of the action on any such evidence, it must offer the witness who has prepared that evidence for cross-examination by the other side. Just before the trial of the action, the parties also file with the court written briefs outlining their legal arguments and how the written evidence they have filed fits in with this. At the trial itself, both parties will cross-examine their choice of the other side’s witnesses and will make oral submissions in relation to the law and the evidence presented to the courts. Expert witnesses may provide evidence not only of fact but also, more importantly, of their opinions, since they are the ones who provide an insight to the judge of the thinking of a skilled person to whom the patent is addressed.

Are infringement and invalidity dealt with simultaneously? What level of proof is necessary to demonstrate one or the other?

Providing that each side has raised the issue, infringement and invalidity of the patent are dealt with together in the same action. Typically, if the patentee sues for infringement, the defendant will counterclaim for invalidity of the patent. Both infringement and validity must be proved on a balance of probabilities. This is to be compared with the criminal standard of proof in the UK, which is “beyond reasonable doubt”.

To what extent is pre-trial discovery permitted? If it is permitted, how is discovery conducted?

Documentary, but not oral, discovery is provided for in patent actions in the UK. The general rule in the patents courts is that both parties are to provide on discovery all documents in their power, custody or control relating to the issues between the parties dated in a four-year window plus or minus two years from the date of the patent.

The alleged defendant has to provide documentary discovery relating to the issue of infringement or can opt to provide in its place a detailed product and/or process description relating to the accused product or process. On application to the court, further specific discovery can also then be required, as well as the possibility of providing samples or allowing for an inspection of the product or process in question.

Several weeks after commencement of the proceedings, a court hearing, called a case management conference, is held where a timetable for the various stages in the action at trial is set. This provides for a date for discovery to occur after the initial exchange of written pleadings. On the date provided for, each side provides to the other a list of the documents they are required to give on discovery and offer to provide either copies of those documents or allow for inspection of the originals within a short period of time thereafter.

There are special streamlined procedures which can be adopted on the application of either party at the case management conference which can give rise to an order that discovery be dispensed with. This typically occurs in relation to the less complex cases where an early date for the trial is also desirable and where the cost of carrying out discovery is not really justified.

To what extent does any doctrine of equivalents apply in an infringement action?

There is no doctrine of equivalents in the UK in relation to an infringement action. In a recent case in the House of Lords (the Supreme Court for the United Kingdom) the judgment made it clear that in order to infringe it is necessary for a product or process to fall within the scope of the claims of the patent, and that there is no room for finding an infringement outside that scope. However, the judgment made it clear that when looking at the scope of a claim in the patent, the court must construe that claim “purposively”, bearing in mind how the skilled person in the art would read the claim and would read the purpose of that claim.

Are there certain types of patent right that may be granted by the EPO – biotech or computer software-related, for example – that are more difficult to enforce than others?

In the UK, when enforcing its patents a patentee needs to take into consideration the way in which evidence and, in particular, expert evidence and evidence of prior use, as well as evidence relating to the insufficiency of description of the invention, can be presented in detail to the patents court. In particular, with the availability of cross-examination it is possible for the specialist patents judges to deal with a clash of evidence from opposing expert witnesses and reach a conclusion in relation to, for example, what would or would not be obvious to the skilled person in the art. This means that, although there is no particular type of patent that is more vulnerable than another to a finding of invalidity in the UK specialist courts, various patents which are marginal in relation to their inventive step or in relation to sufficiency of their description of the invention will be more vulnerable to successful attacks.

To what extent are courts willing to consider, or are bound by, the opinions and decisions of other courts that have dealt with similar cases?

The courts in the UK are bound by the findings in the judgments of the Court of Appeal and the House of Lords, where the senior courts have already considered the same legal issues that are before the court. The UK courts at all levels will also take into consideration the case law of the European Patent Office, and more specifically that of the technical board of Appeal and the Enlarged Board of Appeal at the EPO.

To what extent are courts willing to consider the reasoning given by foreign courts that have handed down decisions in similar cases?

The House of Lords has made it clear that, since the UK courts operate under the treaty of the EPO (the European Patent Convention), they should strive to come to some of the same legal conclusions as the appeal boards of the EPC. If there is any case law from any other specialist patents courts in other European member states, the UK court will consider these on the basis that they may be helpful in developing a consistent approach to interpretation of the European Patent Convention. However, the case law of the EPO and other EU member states is not binding upon the UK court. Similarly, the UK courts sometimes finds the case law of other common law jurisdictions of assistance where a particular point of law has been considered and discussed which is now in front of the UK court for the first time. Once again, the UK court is not bound by such jurisprudence but can sometimes regard it as being of assistance in at least understanding how others have tackled the issues in question.

What options are open to a defendant seeking to delay a case? How can a plaintiff counter delaying tactics?

There are very few options open to a defendant to patent proceedings in front of a specialist patents court in the UK seeking to delay a case. At the case management conference a date is set after which the trial is to be fixed and shortly after the case management conference the parties will arrange to fix a date for the trial with the court. Once that date has been fixed it cannot be moved without the permission of the courts, even if both sides agree to the postponement. Therefore, where only one party is applying to postpone the trial, the court will only allow this in exceptional circumstances, such as where a key expert witness has fallen seriously ill.

A defendant can always seek to have the proceedings stayed pending the outcome of an opposition at the EPO. However, since the outcome of such opposition is often some way off, the court will only normally permit to this under certain stringent conditions, such as the defendant submitting to an interim injunction in the meantime.

How available are preliminary injunctions and how do you get them?

In patent actions it is unusual for the UK courts to grant preliminary injunctions. This is partly because it is normally possible to bring a patent action to trial within 12 months and partly because a patentee can normally be compensated in quantifiable damages if there is a finding in its favour.

In order to be able to obtain a preliminary injunction from the UK court the patentee has to be able to show that it will suffer unquantifiable harm if an interim injunction is not granted, and that either the defendant will suffer no unquantifiable harm if the preliminary injunction is granted or, on a balance of convenience, the patentee is liable to be more seriously harmed than the defendant. Once the patentee has shown that it has an arguable case, the court does not consider the merits of the case when deciding on the grant or otherwise of a preliminary injunction.

An example of the sort of situation in which a UK court will grant a preliminary injunction is as argued in the Apotex case. This was where a generic pharmaceutical company was introducing a generic product into the UK market and the patentee was able to show that this would reduce the price of the product in the market such that the patentee could not reinstate the original price. In that case the court said that to avoid the grant of a preliminary injunction the generic pharmaceutical company should have applied to revoke the relevant patent in good time prior to the launch of its product so that it had “cleared the path” prior to its launch.

How long does it take to get a decision at first instance? Is it possible to expedite this process?

Almost all patent actions before the specialist patents court in the UK will reach trial within 12 months and the judgments are normally produced within a few weeks of the end of the trial. In the case of the streamlined procedure referred to above, it is often possible for a case to come up for trial within as little as nine months of the issue of proceedings. Indeed, in the Patents County Court it can be possible for such a case to come up for trial in as little as six months and if an order for a speedy trial in either patents court is sought and obtained, it has been known for the matter to come up for trial within three months of the issue of proceedings.

However, one should note that in order to obtain an order for a speedy trial it is necessary to provide cogent reasons as to why matters have to be dealt with quite so quickly. Often this can be in a case where otherwise an interim injunction would have to be granted and it should be possible to truncate all the necessary procedures without prejudicing either side’s case.

What avenues for appeal are open to the defeated party in a first instance case? What criteria are there for granting an appeal? How long does the appeal process take?

Appeals from all of the courts dealing with patent infringement matters are to the Court of Appeal. However, it is only possible to appeal to the Court of Appeal on points of law or in relation to decisions of the first instance judge relating to fact or opinion, where a reasonable judge may not have come to that decision. It is also not possible to introduce new evidence between the first instance and the Court of Appeal unless that evidence was not available to the party wishing to introduce it and could not reasonably have been available to them at the time of trial.

In order to appeal to the Court of Appeal it is necessary to obtain either the permission of the first instance judge who heard the matter or, in the absence of such permission, from the Court of Appeal itself. It is then possible to appeal from the Court of Appeal to the House of Lords. However, in order to do so one has to obtain the permission of the House of Lords itself and this is rarely granted in patent cases. In recent years only a handful of patent cases have been heard by the House of Lords. An appeal to the Court of Appeal takes between 15 and 18 months from the date of the judgment at first instance and, if permission is given to do so, an appeal to the House of Lords will normally be heard between 18 months and two years following the judgment of the Court of Appeal in the UK

To take a case through to a first instance decision, what level of cost should a party to a litigation expect to incur?

The costs of bringing a patent action in the United Kingdom can vary enormously depending on what procedure is adopted, the complexity of the technology involved, the complexity of the case in general and the number of patents involved, the amount of expert evidence which is required and such things as whether experimental evidence is also required.

In the case of a simple mechanical patent for a product on a streamlined procedure before the Patents County Court it should be possible for a party to bring the matter to trial for as little as £150,000. That would be the cost for both infringement and invalidity proceedings to be heard at the same time. On the other hand, highly complex biotechnology or electronics patent cases involving experimental evidence and/or multiple patents will put the legal costs on either side into the millions of pounds bracket. The cost of appeal, on the other hand, is considerably reduced over the cost of first instance bearing in mind that the evidential aspects of the case are largely not rehearsed in front of the Court of Appeal.

Who can represent parties in court?

In the United Kingdom a company has to be represented by a legal professional. In the case of the Patents County Court, this can be either a solicitor or a chartered patent attorney, both of whom can handle the representation and the advocacy as desired. Barristers may also appear before the Patents County Court instructed by either a solicitor or a chartered patent attorney; this is frequently done where specialist cross-examination and advocacy are required.

In the Patents High Court, a solicitor or a chartered patent attorney who has a litigation certificate must represent a company. However, all advocacy and cross-examination at the trial of a patent action may only be conducted by the barrister or a solicitor with a higher advocacy certificate.

What remedies are available for infringement and how are these typically applied? Are punitive damages available and in whatcircumstances?

The most common relief sought for infringement of a patent is an injunction. Damages are not awarded following the first instance trial where the determination of a judge simply relates to the liability or otherwise of the alleged infringer; but at that point, as well as granting an injunction, the judge will also order there be an enquiry as to either damages or the loss of profits which has been suffered by the patentee prior to the enquiry commencing. The patentee then has to choose whether it will seek damages or lost profits. It cannot leave this choice until later in the proceedings. The court at first instance can also make several orders against the infringer, such as delivery up of infringing goods or items used for making infringing goods, and providing information relating to infringement that will assist the patentee in preventing further infringement by third parties. Finally, the court will make an award of legal costs in favour of the winning parties.

Are there any realistic alternatives to litigation in cases relating to patent disputes?

It is possible to have arbitrations relating to patent infringement and this is typically done where relief is sought in a variety of jurisdictions including those outside the European Union. However, such cases are rare as they tend to be considerably slower than the typical UK patent infringement proceedings and also, for whatever reason, tend to be considerably more expensive.

First published in the August 2005 issue of Patents in Europe.