In the last judicial year, 20 decisions have been handed down in the UK by the Patents Court (part of the English High Court) and the Patents County Court (a specialist jurisdiction within the County Court system). Those 20 decisions in fact involved determinations to be made on 23 patents (two cases involved 2 actions which had been joined together and a third involved two patents in suit). The statistics can be extracted from the table below. In summary:
- Seven patents were held to be valid of which two were also held to be infringed and the remaining five were held not to be infringed.
- Fourteen patents were held to be invalid of which three were also held not to be infringed, five were held to be infringed and in the remaining six cases, infringement was not in issue.
- In two cases, patents were held not be infringed where validity was not in issue.
It would be wrong however to conclude on the basis of these statistics alone that, compared with other European countries, England is an unfavourable jurisdiction for patentee. There are two main reasons for this.
First, statistics for other European countries are simply not as readily available (or even available at all) . Inter-country comparisons based on facts and figures are therefore simply not possible.
Second, in any event, it is misleading to consider the results of only those cases which come to trial. A proper comparison can only be gained from also taking into account the number of cases which settle before trial. However, unlike a court decision which depends purely on a consideration of the law, the patentee's decision to commence an action and the parties' decision to settle an action are both driven by a combination of commercial and legal factors. Furthermore the terms of most settlements are confidential.
The difficulty therefore is estimating the proportion of actions that are settled on terms favourable to the patentee (ie, either an undertaking not to infringe or payment of a royalty). The starting point is the fact the prospects of succeeding in a patent infringement action will normally be weighted in the patentee's favour: first, having been granted the patent in the first place by the Patent Office, there is a de facto presumption of validity; second, the patentee will have had the opportunity to consider the strength of the infringement and validity arguments before making the commercial decision to start the action. It should also be borne in mind that the consequences of losing a patent infringement action are in most cases far more damaging to the alleged infringer than the patentee. Finally, of course settlements virtually never result in the patent in suit being surrendered by the patentee.
Another consideration is that one of the strengths of the English patent system is the relative speed with which patent actions come to trial (approximately one year compared to two or more years for most other European countries), This makes England an attractive jurisdiction for anyone wishing to revoke a weak patent. Such revocation actions tend to proceed to trial rather than settle despite the weakness of the patentees' arguments on validity because of the commercial position of the parties.
Bearing of these points in mind, it is reasonable to conclude first, that the majority of patent cases which are settled before trial are likely to be on terms which are favourable to the patentee and second, that those cases which do proceed to trial are likely to be those which are driven more by commercial factors than the strength of the patentee's case.
What then is the position of England if the proportion of actions which are settled before trial is taken into account? In England, there are roughly 130 (infringement/revocation) patent cases started each year and
20 trials each year (the number of patent trials in 2000/2001 was above average), About 85% to 90% of patent cases are therefore settled before trial. On the basis that the majority of settlements are on terms which are favourable to the patentee (for the reasons set out above), then the figures suggest that England is in fact a favourable jurisdiction for patentees - well over 50% of cases result in a favourable outcome for patentees. The question is whether it is more or less favourable than other European jurisdictions.
Although it is understood that the proportion of cases which settle before trial in other European countries (all, of which apart from Ireland) have civil as opposed to common law legal systems) is much lower than in England, the difficulty again is obtaining the statistics for those other European countries on which to base any inter-country comparisons. Although comparisons based on heresay should obviously be treated with caution, it is interesting to note that anecdotally, many, cases which proceed to trial elsewhere in Europe are, precisely those which would normally be, expected to settle in favour of the patentee before trial in England.
Patents Court and Patents County Court Judgments on Validity and Infringement for Court Year September 2000 - July 2001.
| 03/10/00||Dyson v. Hoover|| Vacuum Cleaners|| Fysh QC||Yes || Yes|
| 25/10/00||City Technology v. Alphasense Gas Sensor|| Electro-chemical|| Young QC|| Yes|| Yes|
| 26/10/00||Amersham v. Amicon||Chromatography apparatus|| Laddie J||No for both mark I and mark II on both patents (except as admitted on one claim of second patent)||No except for second patent. Obvious (except as admitted on one claim). Validity of first patent not in issue given finding of non-infringement|
| 31/10/00||3M v. (1) ATI Atlas Ltd (2) North America Science Associates Inc. (t/a NAMSA)||Method for determining the efficacy of a sterilisation cycle by the amount of activity of an enzyme after subjected to the cycle|| Pumfrey J|| Yes|| No. Obvious|
| 08/11/00||Lilly-ICOS v. Pfizer||Second Medical Use of PDE V inhibitors|| Laddie J|| N/A|| No. Obvious|
| 09/11/00||Marshalltown v. CEKA|| Trowel handles|| Laddie J|| N/A|| No. Obvious|
| 20/11/00||Cadcam v. Proel|| Software|| Prescott QC (PCC)|| N/A|| No. Obvious|
| 05/12/00||Ashai Medical v. Macopharma|| Blood Separation|| Laddie J|| N/A|| No. Obvious|
| 21/12/00||Novo Nordisk v. DSM|| Enzymes|| Neuberger J|| N/A|| No. Obvious and Insufficient|
| 28/02/01||McGhan v. Nagor and Biosil|| Silicone implant|| Fysh QC|| No|| Yes|
| 15/03/01||Panduit v. Bandit-IT|| Cable tie|| Prescott QC (PCC)|| Yes|| No. Obvious|
| 11/04/01||Kirin Amgen v. TKT & Roche|| EPO gene|| Neuberger J|| Yes||Yes (save for 2 subsidiary claims held invalid for insufficiency)|
| ||Roche v. Kirin Amgen|| EPO gene|| Neuberger J|| N/A|| No. Anticipated and obvious|
| 24/04/01|| Agilent v Waters|| HPLC pump|| Pumfrey J|| No|| Yes|
| 27/04/01||Deutsche Institute für Textil und Faserforschungs Stuttgart v. Fibre Guide||Textile yarn processing machine||Floyd QC (PCC)|| No|| No. Obvious|
| 09/05/01||Micromatic v. DSI|| Beer keg valve|| Neuberger J|| Yes|| No. Anticipated and obvious|
| 30/05/01||Spring Form World's Apart and Finecard|| Children's tent|| Pumfery J|| Yes (2 out of 3)|| Yes|
|World's Apart v. Finecard|| Children's tent|| Pumfrey J|| Yes|| No. Obvious|
| 20/06/01||Inhale Therapeutic v. Quadrant|| Degradation resistant product|| Laddie J|| No|| No. Anticipated and obvious|
| 20/06/01|| Icon v. Precise|| Exercise machine|| Laddie J|| No|| N/A|
| 31/07/01|| SABAFF v. MFI|| Gas hob burners|| Laddie J|| Yes|| No. Obvious|
| 31/07/01|| Sapey v. Trianco|| Boiler|| Pumfrey J|| C1 - Yes, C3 - No|| C1 - No, C3 - Yes|
Court of Appeal Judgments on Valididty and Infringement for Court Year September 2000 - July 2001.
| Date|| Parties|| Subject Matter||Panel ||Judge Upheld ||Infringement ||Validity |
| 20/12/00||Rocky Mountain Traders v. Hewlett Packard || Labelling device||Aldous LJ, May LJ and Slade LJ|| Yes|| Yes||No x 2 - obvious |
| 29/06/01||Instance v. Denny|| Leaflet label||Aldous LJ, Rix LJ and Lloyd LJ|| Yes|| N/A|| No. Obvious|
| 05/07/01||Amersham v. Amicon||Chromatography charging and discharging column bed||Aldous LJ, Hale LJ and Parker LJ|| Yes|| No||Yes (not considered by judge at first instance)|
| 12/07/01|| Taylor v. Ishida||Packaging machine||Aldous LJ, Hale LJ and Parker LJ||Yes (NB cross-appeal allowed on scope of injunction)|| Yes|| Yes|
First published in the American Lawyer in January 2002.