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Enforcement through the courts

At trial What level of expertise can a patent owner expect from the courts? The IP Enterprise Court and Patents Court are overseen by specialist IP judges who have a high level of technical and patent expertise. 

Are cases decided by one judge, a panel of judges or a jury? IP Enterprise Court and Patents Court cases are decided by one judge and no jury. Cases may be appealed to the Court of Appeal, where three judges will decide the case (usually led by a specialist IP judge). 

If jury trials do exist, what is the process for deciding whether a case should be put to a jury? There are no juries for patent trials in the United Kingdom.  

What role can and do expert witnesses play in proceedings? Experts play a significant role in Patents Court proceedings. The parties will normally appoint one or two independent experts each, who will provide written evidence to the court and be made available for cross-examination at trial. Often, most of the evidence in a patent trial is in the form of expert opinions. The role of expert evidence in IP Enterprise Court proceedings is more limited in scope and confined to key issues determined in advance by the court.

Does your jurisdiction apply a doctrine of equivalents and, if so, how? There is no doctrine of equivalents in the United Kingdom. However, the courts adopt a purposive rather than a literal approach to claim construction. 

Is it possible to obtain preliminary injunctions? If so, under what circumstances? Preliminary injunctions are available in the United Kingdom. The award of a preliminary injunction is at the court’s discretion, taking into account a number of principles, including whether:

  • there is a serious issue to be tried; and
  • granting or withholding an injunction is more or less likely to cause irremediable harm and to which party. 

In recent years preliminary injunctions have been awarded readily against generic pharmaceuticals that have been launched without first attempting to ‘clear the way’ of relevant third-party patents.

Where a patentee obtains a preliminary injunction, it will normally be expected to provide a cross-undertaking in damages, to compensate the counterparty for any loss suffered should it emerge that the injunction should not have been granted (ie, because the patent is later held to be invalid or not infringed at trial).   

How are issues around infringement and validity treated in your jurisdiction? Where there are both infringement and revocation proceedings in relation to the same patent, the courts will normally hear them together as part of the same action.

Will courts consider decisions in cases involving similar issues from other jurisdictions? The courts will consider decisions from other jurisdictions – particularly where they relate to similar legal principles or the application of issues of European law. In particular, the courts will consider settled case law of the Technical Boards of Appeal of the European Patent Office.

Damages and remedies Can the successful party obtain costs from the losing party? The losing party normally must pay the successful party a significant proportion of its costs, which will be determined on an issue-by-issue basis.

What are the typical remedies granted to a successful plaintiff? A successful claimant is typically granted a final injunction, damages, an order for destruction or delivery of the infringing goods and declarations of infringement and validity. 

How are damages awards calculated? Are punitive damages available? A successful claimant may choose between:

  • damages (to compensate it for any loss it may have suffered as a result of the infringement); and
  • an account of profits (to recover any profits made by the defendant as a result of its infringement). 

There is no concept of punitive damages for patent infringement in UK patent law. The appropriate level of damages is often determined by considering the level of royalty that would have been paid by a willing licensee in comparable circumstances.

How common is it for courts to grant permanent injunctions to successful plaintiffs and under what circumstances will they do this? In normal circumstances, the courts will grant permanent injunctions to successful claimants as a matter of course. However, injunctions are often stayed pending the outcome of appeals. 

Timescale and costs How long does it take to obtain a decision at first instance and is it possible to expedite this process? The Patents Court seeks to bring cases to trial quickly – where possible, within 12 months of the claim being issued. Expedition is possible where the court considers it warranted. 

How much should a litigant plan to pay to take a case through to a first-instance decision? A litigant before the Patents Court should expect to pay at least £500,000, and often considerably more where the issues are more complex. Single patent actions involving issues of infringement and revocation typically exceed £1 million in legal fees. If successful, a significant proportion of these fees can be recovered from the other side. However, if unsuccessful, the litigant will likely be ordered to compensate the other party for a significant proportion of its legal fees. Litigants before the IP Enterprise Court should expect to pay considerably less and costs awards are normally capped at £50,000.

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