Litigation / Foreign Patent Litigation / United Kingdom

Patent Litigation in the United Kingdom

Most patent actions in the United Kingdom are head by a specialist patent court in London. Infringement and validity are dealt with in the same proceedings. Discovery of document forming part of the proceedings, but tends to be less extensive than in the United States. There are normally no depositions. Proceedings are normally a little slower than France or Germany and more expensive.

Scope of Protection Provided by Patent

Although traditionally claim construction in England tended to be narrower than in other countries, this has changed in recent years. First, the 1977 Patents Act was specifically worded to try to provide for more "European" interpretation of claims (and specifically provided for remedies for contributory infringement for the first time).[1] Second, the House of Lords has adopted a so-called "purposive" construction of patent claims indicating that one should look at the purpose of what is being specified in a claim to determine whether there is infringement and not just to the literal wording of the claim.[2]

Since the coming into force of the Patent Act 1977, contributory and induced infringement have been actionable.

The 1977 law also makes it clear that simple keeping of an infringing material if done for a commercial purpose is an infringement. This fact can be useful in disrupting an infringers distribution scheme if goods pass through the United Kingdom even though they are not produced or used there. In the absence of any condition imposed or the purchaser at the time of sale, importation into the United Kingdom of a product that is the subject of a patent that has been purchased abroad from the patentee is not an infringement of a British patent.[3] Subject to the requirements of EEC law discussed below, however, import of a product made abroad by a licensee of the patentee may well be an infringement.[4]

Patent Enforcement

The United Kingdom comprises three separate jurisdictions: (1) England and Wales, patent actions for which are normally brought before either the Patents Court or the Patents County Court, both of which are in London, (2) Scotland, where patent actions are brought before the Outer House of the Court of Session and (3) Northern Ireland where they are brought before the Northern Ireland High Court. As a practical matter, most patent actions in the United Kingdom are brought in London and further discussion will focus on the two London Courts.

The Patent Court forms part of the Chancery Division of the High Court. Appeal from decisions of the Patent Court lies to the Court of Appeal and, if leave is given, from the Court of Appeal to the House of Lords.

The Patents County Court is a relatively new court, having bee created by the Copyright, Designs and Patents Act 1988. It originally sat in the London suburb of Wood Green but has recently moved to new premises in the West end of London. Unlike most county courts there is no limit on the amount of damages it can impose, although at the time it was created it was made clear that the objective was that it should provide a cheaper means for dealing with "simple" cases than was possible in the High Court. Provisions were therefore made for the county court to transfer more complex cases to the High Court and vice versa. Appeals from both the High Court and the County Court lie to the Court of Appeal. Following substantial criticisms of the County Court, its prceedures are being revised to try to place greater emphasis on alternative dispute resolution techniques and concilliation as a means to secure speedy and relatively inexpensive disposal of actions brought before it.

English common law required that a tort action could be brought in England in respect of wrongs committed abroad only if the act complained of was wrong both in England and in the place where the wrong was committed. This rule has inhibited the English courts from excersising jurisdiction over, say, the infringement of a French patent even when the court had personal jurisdiction over the defendant since the infringement of a French patent was not a tort in England. This common law rule has now been abrogated for all actions except defamation actions by the Private International Law (Miscellaneous Provisions) Act 1995. The effect of this is that courts in the United Kingdom will now be able to exercise jurisdiction inter alia to the full extent permitted by the Brussels Convention on Jurisdiction and Enforcement of Judgments in Civil and Commercial matters. This convention, which is effective between members of the EU, sets out as a basic rule that EU defendants should be sued in the country of their domicile unless some other jurisdiction is specifically permitted. In the case of actions for tort or delict, an additional possible forum is permitted namely the courts of the location where the harmful event occurred. The convention also gives all EU courts the right to grant provisional relief even if they would not otherwise have jurisdiction, this being the basis on which the Dutch courts have achieved fame by granting Europe-wide injunctions against patent infringement. The recent change to British law now opens the door to the possibility of British courts following in the steps of the Dutch Courts.

The Patent Court in the High Court is staffed by two judges who normally sits by themselves.[5] Both had long experience at the patent bar before elevation to the bench. Following recent changws, audience before the Patent Court in infringement actions is confined to barristers and a few solicitors who have qualified as advocates. In infringement matters, must still be be briefed by solicitors. Normally patent agents are also retained to assist in dealing with technical aspects of the case. All of this tends to result in English proceedings being expensive.

The judge in the Patents County Court is a former chairman of the Legal Appeal Board in the European Patent Office. In the County Court both solicitors and patent agents have rights of audience and can act as advocates without the need to use barristers, although in practice barristers are employed in many cases. The new court makes greater use of written proceedings than the High Court to try to reduce costs. One consequence of this is that pleadings in the County Court have to be set out with a much greater degree of precision in the County Court than in the High Court.

In recent years, the English courts have devised two forms of order that may be of use to a patentee, even prior to commencing an infringement action, namely, the Anton Piller Order[6] and the Mareva injunction.[7] The former may be granted ex parte and is an order enabling the plaintiff's solicitors, and possibly others, to inspect the defendant's premises for evidence of infringement. Such an order is only granted following evidence showing that these are clear grounds for suspecting that the premises in question are being used for infringement and that there is a real possibility of destruction of evidence if the prospective defendant were to be given notice of an impending search. At one time, a defense existed to Anton Piller orders, namely, that by complying the defendant was in effect being required to incriminate himself since the evidence revealed might give rise to criminal proceedings. This defense was removed by statute.[8] However, evidence obtained in accordance with an Anton Piller order cannot be used in criminal proceedings. A perception that the use of Anton Piller orders was leading to abuses has recently led to changes in the procedure and now the execution of such orders requires the presence of an independent "supervising" solicitor.

The second of the new Orders, the Mareva injunction is an injunction restraining a party who is being sued in a civil action from moving his property outside the jurisdiction if there is a risk that by doing so that party might be able to render useless any final order for payment of damages that might be made.

Proceedings are commenced with a writ and a statement of claim. A letter before action is normal, but not strictly necessary. Invalidity of a patent is a defense to an infringement action and the defendant may counterclaim for revocation of the patent.

Interlocutory injunctions are relatively easily available, the House of Lords having held in the 1970's that in deciding whether to grant an interlocutory injunction, if the plaintiff had presented a case that had serious merit (i.e., there was a real issue to be tried and the claim was not frivolous) the determining factor was the balance of convenience.[9] A few recent cases have, however, acknowledged that the threshold question set out in this test set too low a burden on the plaintiff and that some consideration of the relative strengths of the parties cases might be appropriate.[10]

Interlocutory proceedings typically take a few months and are normally decided on affidavit evidence. Costs of a typical interlocutory motion in a patent case are likely to be in the range $15 - 25,000, but may be more. A successful plaintiff who obtains such an interlocutory injunction must, however, give a cross undertaking in damages in case the defendant proves successful at trial. If the plaintiff has insufficient assets in the United Kingdom, it may be required to post a bond for this purpose.

Discovery does exist in English proceedings, although it is not as extensive as in the United States (for example, there is no deposition practice). In High Court proceedings, each party is required on oath automatically to provide a list of all documents in its control or possession or formerly in its control and possession that relate to the issues pleaded. Those still under its control must be made available to the other side.[11] This general rule was, however, modified for patent infringement actions by new rules which came into efect on December 1, 1995 under which automatic discovery was limited to documents relating to infringement validity and commercial success. Papers for which privilege is claimed must be listed, but do not have to be made available to the other party. Legal professional privilege may be claimed inter alia for three classes of documents

1) communications between a client and its professional legal advisers relating to matters of legal advice

2) communications between a client or its legal advisers and third parties for the purposes of obtaining information for use in pending or contemplated legal proceedings

3) communications between a patent agent and a client relating to patent proceedings.[12]

If a party believes the other is holding back something it can apply to the court for an order for further discovery. The courts have, however, taken the view that for a document to be discoverable because it "relates to" the proceedings, the relationship must be fairly close. The courts are reluctant to permit fishing expeditions.

In county court proceedings, in general, a party will only have to produce a document during discovery if specifically asked for by the other side. This is supposed to reduce costs by reducing the amount of paper that needs to be looked at. This feature of the county court practice has been subject to criticism, although the experience in our London Office is that this difference from High Court proceedings does not cause too much of a problem.

Following the issue of a summons for directions in High Court proceedings, the court will lay down a timetable in which any experiments that are required in order to prove infringement must be carried out. Such experiments must take place in the presence of the other party and if required can substantially add to the cost and duration of the proceedings. Once it appears that experiments are necessary, costs can run away very quickly, especially if the experiments are carried out outside England so that both party's representatives have to travel to a remote location to witness them.

In County Court proceedings, unlike the High Court, a pre-trial conference will take place at which the judge tries to narrow the issues and make clear what he believes is necessary to come to a conclusion on the case.

The proceedings conclude with a formal trial in which evidence is normally given live with cross examination by the opposing party (although the rules of court do provide for testimony to be given by affidavit as long as the affiant is made available to the court for cross examination). The evidence is followed by counsel's submissions on the law. Following this, the judge normally retires and gives his decision a few weeks later.

If during proceedings it becomes clear that one's claims are drafted too broadly, it is possible to effect amendment during the proceedings.[13] Any such amendment is, however, open to opposition not only by the defendant, but by third parties. For this reason, applications to amend must be advertised. For patents granted on applications filed after June 1, 1978, such amendments cannot add new matter or broaden the claims. For older patents, amendment may be by way of disclaimer, explanation or correction, but must not broaden the claims unless the original claim contained an obvious error and the correction being made is the obvious way to correct the error. In any case, the allowability of the amendment is subject to the discretion of the court and may not be allowed if the patentee has known of the invalidity of its claims as granted for a long period or the claims as originally granted were grossly overreaching.

In addition to an injunction, damages or an account of the infringer's profits may be awarded to the successful plaintiff. Damage awards are based on the damage actually suffered by the plaintiff The limitation period for damage awards is six years. Attorney fees and other costs are recoverable by the successful party from the loser. These are, however, subject to review by a taxing master to ensure that the recovery is "reasonable". Typically, a successful party can expect to recover about 2/3 of what he actually spent.

Typically proceedings in England take 2-3 years to come to trial. County Court proceedings tend to be quicker and the hearings significantly shorter.