Patent enforcement proceedings

Lawsuits and courts

What legal or administrative proceedings are available for enforcing patent rights against an infringer? Are there specialised courts in which a patent infringement lawsuit can or must be brought?

Patents are usually enforced against an infringer by issuing a claim in one of two courts. Claims with a value of over £500,000 or that are technically or legally complex are generally brought in the Patents Court division of the High Court. Simpler claims worth less than £500,000 are generally brought in the Intellectual Property Enterprise Court (IPEC), which has a streamlined procedure designed to be more cost effective than the Patents Court. Parties to a claim can request that the case be transferred to the other court at which point the court will consider whether it appropriate to do so. Both courts have judges who are technically trained and have extensive experience working in patent law.

Trial format and timing

What is the format of a patent infringement trial?

Factual witness statements and expert reports are prepared and exchanged between the parties in advance of trial. These form the evidence-in-chief for the trial. Parties may be permitted to provide reports from more than one expert depending on the technical nature of the case. The parties then exchange skeleton legal arguments in the few days before trial. 

Trial starts with opening legal oral submissions to the Judge. Cross-examination of witnesses and experts then takes place, usually undertaken by skilled barristers. The expert evidence is usually the most important part of a patent trial and takes up the majority of the time in court. Trial ends with closing legal oral submissions to the judge. The judge then decides all of the issues in the case alone.

Trials in the Patents Court commonly take between five to seven days per patent. In the IPEC, trials are limited to no more than two days in length.

Proof requirements

What are the burdens of proof for establishing infringement, invalidity and unenforceability of a patent?

Any party seeking relief from the court has the burden of proof, whether that is for infringement, invalidity or otherwise. The standard to which that party must prove its case is on the balance of probabilities. 

Standing to sue

Who may sue for patent infringement? Under what conditions can an accused infringer bring a lawsuit to obtain a judicial ruling or declaration on the accusation?

A patent owner or an exclusive licensee of the patent can bring a claim for infringement against anyone it accuses of infringing. The accused infringer can defend the claim by arguing they do not infringe.

Any party, regardless of whether they have been accused of infringement or not, can bring a claim for a declaration of non-infringement in respect of any act, but only after they have first written to the patent owner, with full particulars of the relevant act, asking for an acknowledgement that such act does not infringe and the patent owner has not provided the acknowledgement sought.

Any party that has been aggrieved by a communication that reasonably indicates that another party intends to bring a claim for patent infringement, other than for making or importing a product for disposal or using a process, can bring a claim for unjustified threats. Merely giving notice of the existence of a patent is not an unjustified threat. An unjustified threats claim can seek an injunction and damages.

Inducement, and contributory and multiple party infringement

To what extent can someone be liable for inducing or contributing to patent infringement? Can multiple parties be jointly liable for infringement if each practises only some of the elements of a patent claim, but together they practise all the elements?

A party that supplies another party with anything (‘means’) relating to an essential element of the invention, for putting the invention into effect when they know or it is obvious to a reasonable person that such means is or are suitable for and intended to put the invention into effect in the UK is liable for secondary patent infringement.

If multiple parties act together to do an act that infringes a patent, even when no individual party carries out all of the elements of the patent claim, they are each jointly and severally liable for patent infringement as joint tortfeasors.

Joinder of multiple defendants

Can multiple parties be joined as defendants in the same lawsuit? If so, what are the requirements? Must all of the defendants be accused of infringing all of the same patents?

Multiple defendants can be included in the same claim. Related claims against related parties should be brought in the same claim or lawsuit. The court has discretion to hear separate claims together where it is convenient and to also separate unrelated claims where it is convenient.

Infringement by foreign activities

To what extent can activities that take place outside the jurisdiction support a charge of patent infringement?

For a patent to be infringed in the UK the acts of infringement must take place in the UK. There are two exceptions to this. The first relates to products by process patents – where the process takes place outside the UK but the product is then imported into the UK, the acts in relation to the product in the UK will be infringing acts. The second is where a party outside the UK has directed or assisted an infringing act in the UK it may be liable for patent infringement as a joint tortfeasor.

Infringement by equivalents

To what extent can ‘equivalents’ of the claimed subject matter be shown to infringe?

A doctrine of equivalents in the UK was established by the Supreme Court in the Actavis v Eli Lilly case in 2017 when considering the Protocol on interpretation of article 69 EPC. The test to be applied for patent infringement where the alleged infringement does not fall within the normal purposive interpretation of the patent claims is now:

  • Does the variant achieve substantially the same result in substantially the same way as the inventive concept?
  • If yes, would it be obvious to a skilled person who knew that it achieved substantially the same result that it did so in substantially the same way?
  • If yes, there is infringement by equivalence so long as the skilled person would not consider that the patent requires strict compliance with the normal meaning of the claims.
Discovery of evidence

What mechanisms are available for obtaining evidence from an opponent, from third parties or from outside the country for proving infringement, damages or invalidity?

Disclosure of documents can be ordered by the UK court. Parties then have a duty to conduct a reasonable and proportionate search for the relevant documents, which must include adverse documents. The courts commonly attempt to limit disclosure to only those documents that are directed to a real issue in the case.  Alleged patent infringers usually produce and provide a product and process description of the relevant act in lieu of disclosure in relation to infringement. Disclosure in relation to patent validity is limited to two years either side of the claimed priority date.

If liability of the defendants is determined at trial, a damages (or account of profits) inquiry will follow. The same disclosure rules apply in this inquiry, which means that relevant financial documents will usually be disclosed.

Litigation timetable

What is the typical timetable for a patent infringement lawsuit in the trial and appellate courts?

Both the Patents Court and the IPEC seek to hold a trial within 12 months of the claim being issued. In practice trial usually takes between 12-18 months. If urgency can be demonstrated to the court cases can proceed to trial more quickly than 12 months.

The Court of Appeal usually hears appeals within 12 months of the first instance judgment. Expedition is also possible in the Court of Appeal.

Litigation costs

What is the typical range of costs of a patent infringement lawsuit before trial, during trial and for an appeal? Are contingency fees permitted?

Patent cases in the IPEC usually cost a party between £100,000 and £200,000. The successful party is usually able to recover up to £50,000 of its costs in the IPEC.

In the Patents Court patent cases can cost around 5-10 times the cost of IPEC cases. A party that is successful in the majority of the aspects of the case is usually able to recover the vast majority (commonly 70-90 per cent) of its costs from the unsuccessful party or parties.

Costs in the Court of Appeal are commonly 20-30 per cent of the costs at first instance.

Contingency fee and conditional fee arrangements are permitted but they are not that common.

Court appeals

What avenues of appeal are available following an adverse decision in a patent infringement lawsuit? Is new evidence allowed at the appellate stage?

Appeals from the Patents Court and the IPEC are heard in the Court of Appeal. Permission to appeal must be granted either from the first instance court or directly from the Court of Appeal. Further appeals to the Supreme Court are possible for cases of public importance.

New evidence is not usually permitted on appeal.

Competition considerations

To what extent can enforcement of a patent expose the patent owner to liability for a competition violation, unfair competition, or a business-related tort?

Patent owners need to ensure that they comply with the relevant competition laws. Some exceptions apply to arrangements involved in the settlement of patent disputes but care needs to be taken to ensure that these are complied with.

In certain sectors (particularly those involving standard-essential patents, ie, telecoms), a declaration of essentiality by the patent owner may be accompanied by a requirement to provide FRAND licences. Failure to offer such a licence can be viewed as anticompetitive.

The making of a communication indicating an intention to bring a claim for patent infringement can, in certain circumstances, be an actionable unjustified threat.

Alternative dispute resolution

To what extent are alternative dispute resolution techniques available to resolve patent disputes?

Parties to UK litigation are required to consider alternative dispute resolution and the court encourages parties to try to resolve the dispute at every stage of the case whether by negotiation or by more formal procedures such as mediation. 

Law stated date

Correct on

Give the date on which the information above is accurate.

March 2021.