An extract from The Intellectual Property Review, 9th Edition

Enforcement of rights

This section provides a brief guide to how intellectual property rights may be asserted, focusing on patents. In the courts of the United Kingdom, issues of infringement and validity are almost always addressed together.

Pursuant to EU Directive 2004/48 on the enforcement of intellectual property rights (the IP Enforcement Directive), Member States shall provide for the measures, procedures and remedies necessary to ensure the enforcement of intellectual property rights. Such measures, procedures and remedies shall also be effective, proportionate and dissuasive and applied in such a manner as to avoid the creation of barriers to legitimate trade and to provide for safeguards against their abuse. The nature of available final and interim relief, as well as other aspects of litigation procedure, continues to evolve with the developing jurisprudence in respect of the IP Enforcement Directive, and also with developments in technology.

i Possible venues for enforcement

The United Kingdom has three jurisdictions: England and Wales, Scotland, and Northern Ireland. Each has its own legal system and procedures, the UK Supreme Court being the final court of appeal for all in civil cases. In the field of IP, legislated substantive law applies throughout the UK. The overwhelming majority of IP litigation in the UK takes place in the courts of England and Wales.

In England and Wales, the Intellectual Property Enterprise Court (IPEC) is the correct forum for less complex and smaller value IP claims. In the IPEC, damages are capped at £500,000 (per claim number), and recoverable costs are capped at £50,000 for the liability stage and £25,000 for the quantum stage. The IPEC procedure is distinct from that which is conventional under English legal practice, for example with less separation of argument and evidence. For more complex and valuable IP claims, the Patents Court hears claims concerning patents, SPCs, registered designs, plant varieties and semiconductor topography rights; other types of intellectual property dispute are heard in the High Court Chancery Division's General IP List. All of the courts and lists noted in this paragraph sit within the Business and Property Courts of the High Court of England and Wales.

Patent actions are heard in Scotland by the Court of Session, and in Northern Ireland by its High Court.

The UK IPO has jurisdiction to adjudicate upon some intellectual property issues and may issue opinions on the infringement and validity of patents.

If and when the Agreement on a Unified Patent Court (the UPC Agreement) and associated EU Regulations come into force, owners of European patents designating the countries participating in the UPC system will (subject to opting-out) be able to enforce those European patents (but not national patents) in the new court. However, although the UK ratified the UPC Agreement in 2018, in February 2020, following the UK's exit from the EU, the UK government was reported to have indicated that it would not be seeking involvement in the new system. Therefore, at the time of writing, the UK is not expected to be involved in the new system, should it become operational.

ii Requirements for jurisdiction and venue

The UK courts described in Section IV.i above have exclusive jurisdiction in respect of actions for revocation of intellectual property rights registered in the UK (including UK patents, UK designations of European patents, UK trademarks and UK registered designs), but not actions for revocation, or claims otherwise challenging the validity, of other countries' registrations or designations of European patents.

In respect of issues of infringement, jurisdiction may be founded by domicile or by the place where the harmful event occurred or may occur. Where a claim of infringement is made, the defendant may challenge the validity of the relevant right or rights. For EU intellectual property rights (including EUTMs and Community registered design rights), provisions in the relevant governing legislation also impact issues of jurisdiction.

It is possible for a party to seek a declaration of non-infringement from the court, and this may extend to non-UK rights. For example, in Actavis v. Eli Lilly, Lilly was found to have conceded jurisdiction, in the course of pre-action correspondence, such that the Patents Court had jurisdiction to award a declaration of non-infringement covering designations of a European patent for several other EPC states. In Eli Lilly v. Genentech, the Civil Procedure Rules enabled Lilly to commence proceedings for declarations of non-infringement in respect of a UK designation of a European patent and several non-UK designations of the same patent by service on Genentech, Inc, in the United States. (Lilly also challenged the validity of the UK designation of Genentech's European patent, but not the non-UK designations.) In contrast, in Parainan Pearl Shipping v. Kristian Gerhard Jebsen Skipsrederei, Parainan's attempt to commence proceedings against the Norwegian owners of several designations of a European patent for relief including declarations of non-infringement, by the employment of a different mechanism in the Civil Procedure Rules, was unsuccessful. This remains a developing area of the law.

iii Obtaining relevant evidence of infringement and discovery

In a civil claim, it is for the claimant to prove his or her case on the balance of probabilities. At the outset, the facts relied upon in support of the claim (or counterclaim) must provide reasonable grounds for making the claim. Without such grounds the claim may be struck out.

Disclosure

Discovery may be available in the course of litigation. (In unusual circumstances it may be available from a non-party or before litigation is commenced, or both.) A party discloses a document by stating that it exists. The party to whom disclosure is made is then entitled to inspect the document, except where it is no longer in the disclosing party's control or where the disclosing party has a right or duty to withhold inspection of it, for example because it is privileged. Confidentiality does not confer a right to withhold inspection, but the court may order disclosure of confidential documents on appropriate terms, for example to specified members of a 'confidentiality club'. The existence of a confidentiality club will reduce the likelihood that redaction of documents will be allowed.

Increasingly, disclosure requirements are tailored on a case-by-case basis. In patent cases, provision of a product or process description by the alleged infringer usually enables standard disclosure to be dispensed with in relation to infringement. In relation to validity, disclosure is usually constrained to a term two years either side of the earliest claimed priority date. In the context of quantum (even before litigation commences) licence agreements concluded by one party (or prospective party) with a third party may be disclosable. In every case, it is the court that orders the scope of disclosure, and there is no longer a prima facie rule of standard disclosure.

Evidence

Fact evidence is usually submitted to the court in the form of written witness statements, which stand as the witness's evidence in chief. A witness's oral testimony is usually limited to cross-examination and re-examination.

The court assesses the teachings and scope of a patent through the eyes of 'the person skilled in the art'. He or she is the hypothetical person to whom the patent is addressed. The skilled person has imputed to him or her the 'common general knowledge', which is, essentially, standard technical background of the art in question.

Expert evidence is generally required to assist the court in adopting the mantle of the person skilled in the art and to determine the scope of the common general knowledge. Parties tend to retain their own expert, although they may be ordered to agree upon a single expert. Expert witnesses owe a duty to the court, which overrides any duty they have to the party and its team of legal advisers, and bear a personal responsibility for their evidence. Expert evidence in chief is provided by way of a report, with opportunity to respond in writing to the report submitted by the other expert. Oral testimony is usually limited to cross-examination and re-examination. Cross-examination is considered by the courts to be an important tool by which expert evidence that is submitted to the court may be scrutinised. 'Hot-tubbing' (the hearing of evidence from the experts of opposing parties concurrently) may be employed.

Experiments

In appropriate cases, experiments may be ordered upon the application of a party that wishes to establish a fact by experimental proof.

Methods for obtaining evidence and information

In addition to the mechanisms discussed above, the Civil Procedure Rules provide a number of additional procedural mechanisms for obtaining further information in the course of litigation. The mechanisms available and employed may be relevant to any award or order subsequently made by the court. In appropriate circumstances, the court will award a search and seizure order or an order that a person provide information on others involved in the supply of infringing goods, or both.

iv Trial decision-maker

For the intellectual property rights listed above, civil claims are heard and determined by a judge.

In the courts of England and Wales at all instances, IP claims are usually heard by (or by panels including) specialist judges.

v Structure of the trial

Following the exchange of statements of case, the setting of case management directions and the conclusion of the steps ordered (for example, discovery and written evidence stages), the trial of the claim will be heard by the judge. At the hearing, the usual structure is that the claimant makes an opening statement, the parties cross-examine the witnesses relied upon by each other, and then each party makes a closing statement.

At the end of the hearing, the judge will either deliver his or her judgment or, more usually, he or she will retire to consider and write the judgment and reconvene the trial at a later date, when the judgment is handed down. An award of injunctive relief may be made with the substantive judgment or shortly afterwards following discussion between the parties or further consideration by the court.

Almost always, the trial is 'split', which means that the substantive legal claim is decided (as described above) and only where a claim is successful will the monetary relief claimed be considered. This consideration takes the form of a second stage to the litigation, involving further directions and a further trial on a damages inquiry or an account of profits, which may run in parallel with any appeal of the main judgment.

vi InfringementInfringing acts

It is a direct infringement of a patent to do any of the following in the UK without the consent of the patent proprietor:

  1. where the invention is a product, make, dispose of, offer to dispose of, use or import the product or keep it whether for disposal or otherwise;
  2. where the invention is a process, use the process or offer it for use in the United Kingdom with the knowledge, or when it is obvious to a reasonable person in the circumstances, that its use there without the consent of the proprietor would be an infringement of the patent; and
  3. where the invention is a process, dispose of, offer to dispose of, use or import any product obtained directly by means of that process or keep any such product whether for disposal or otherwise.

In Actavis v. Eli Lilly, the UK Supreme Court ruled that the assessment of infringement is a two-stage process asking first whether the variant infringes any of the claims of the patent as a matter of normal interpretation and, if not, then second, whether the variant nonetheless infringes because it varies from the invention in a way or ways that is or are immaterial. The Supreme Court also provided guidance on when an equivalent might infringe, that has since been interpreted by the Court of Appeal in Icescape v. Ice-World.

It is a contributory infringement of a patent to supply or offer to supply in the United Kingdom a person other than a licensee or other person entitled to work the invention with any of the means, relating to an essential element of the invention, for putting the invention into effect. In order to infringe in this way the alleged infringer must know, or it must be obvious to a reasonable person in the circumstances, that the means he or she has supplied are suitable for putting, and are intended to put, the invention into effect in the United Kingdom.

Further, a defendant will be liable as a joint tortfeasor if he or she has assisted in the commission of the tort by another person pursuant to a common design with that person to do an act that is, or turns out to be, tortious.

vii DefencesStatutory exceptions to infringement

An act that would constitute an infringement of the patent will not do so if:

  1. it is done privately and for purposes that are not commercial;
  2. it is done for experimental purposes relating to the subject matter of the invention;
  3. it consists of the preparation in a pharmacy of a medicine for an individual in accordance with a prescription;
  4. it consists of use on a ship or an aircraft temporarily in the territorial sea or air space of the UK; or
  5. it consists of a specified use by a farmer of the product of his or her harvest or an animal purchased with the consent of the patent proprietor.
Invalidity

An alleged infringer may counterclaim that the patent is invalid and seek an order for revocation of it. The grounds for revocation are:

  1. the invention is not a patentable invention;
  2. the specification of the patent does not disclose the invention clearly and completely enough for it to be performed by a person skilled in the art;
  3. the matter disclosed in the specification of the patent extends beyond that disclosed in the relevant application as filed; and
  4. the protection conferred by the patent has been extended by an amendment that should not have been allowed.

A person found to be entitled to be granted the patent may additionally seek its revocation on the basis that it was granted to someone who was not entitled to it, provided the application is filed within the legislated time limits.

Other defences

An act is only capable of infringing a patent if it is done without the consent of the proprietor. Consent, or licence, may be express or implied and may form the basis for a defence. In some (unusual) situations, licences of right or compulsory licences are available, or the Crown use defence may be invoked.

Where the patentee has already consented to the marketing of the goods within the scope of the claimed invention in the UK or the European Economic Area (EEA), the doctrine of exhaustion prevents subsequent enforcement of a patent in the UK in respect of the imported goods.

viii Time to first-instance decision

The time to trial has tended to depend upon the conduct of the parties, the complexity of the case and the diary of the court. The Patents Court intends to list trials within 12 months of commencement of the action, and parties are expected to start to consider potential trial dates as soon as reasonably practicable, which may be very soon after the proceedings are commenced. Where considered appropriate by the court, a trial can take place considerably sooner than this, for example, in Napp v. Dr Reddy's the trial hearing took place approximately four months after the litigation commenced, the full substantive judgment was handed down shortly afterwards and the second instance decision was given within six months of the litigation commencing.

A 'shorter trial scheme' (STS) is available in the Chancery Division of the High Court, including the Patents Court. For suitable cases, the STS packages a more streamlined procedure than is usually adopted with the intent of trial being listed within eight months of the case management conference and judgment being returned within six weeks.

Interim relief can be obtained in a matter of hours in urgent cases, although more usually interim hearings take place within a few days or weeks of the application being filed and served.

ix Remedies

If a patent is found to be infringed, or where a litigant's claim is otherwise successful, a range of remedies may be available. In keeping with the developing jurisprudence of the CJEU in respect of the IP Enforcement Directive, the proportionality and effectiveness of the relief are relevant factors in the court's assessment as to whether to grant the relief sought. Available remedies may include the following.

Injunctions

Following a finding of infringement (and validity), the court will usually award a 'final' injunction, provided this is proportionate. In more complex factual situations, for example involving the public interest in access to treatments, second medical use patents or standard essential patents, injunctive relief tends to be specifically tailored.

Injunctive relief may be available at an interim stage where the right owner shows an arguable case of infringement and that a later monetary remedy would not adequately compensate the patentee for the harm caused by the ongoing (alleged) infringement. The court considers the 'balance of harm' likely to be suffered by the respective parties before deciding whether to award interim relief and if so the terms of the order. For non-final injunctions, the applicant for the relief is usually required to provide a cross-undertaking as to damages.

Injunctions are usually prohibitory in nature although mandatory injunctions are possible.

Blocking orders

The High Court of England and Wales has developed a body of blocking order jurisprudence. This new type of relief has been granted to owners of intellectual property rights to restrain access to infringing platforms – for example, websites predominantly used to share infringing copyright content, and websites advertising and selling trademark-infringing products and ISP addresses directed at inhibiting unauthorised live streaming of broadcast events.

Delivery up

The court can order that infringing articles be delivered up to a party. This is commonly to facilitate destruction or prevent resale.

Damages or an account of profits

Damages compensate for loss and are intended to restore the right owner to the position they would have been in had no wrong been done to them. The award may be calculated according to the damage caused to the right owner's profits by the infringement or in accordance with a 'reasonable royalty'. In an account of profits, the profits made by the infringer from the infringement are awarded to the patentee. The court may order the infringer to give some financial disclosure, so that the patentee may make an informed decision as to which remedy to pursue (not both). Neither remedy will be available against an 'innocent' infringer of a patent, although few infringers are found to be innocent.

Declarations

The court can order declarations. Declarations can be, for example: of validity or contested validity, which can impact the award of legal costs in future challenges; of infringement or non-infringement; of essentiality to a technical standard; and that aspects of a party's product or process were obvious at a relevant date, which can create a squeeze between infringement and validity and may be of assistance to parties in 'clearing the way' in some circumstances.

Orders for dissemination and publication

The courts can also order a party to publicise the result of a case at its own expense.

Costs

Generally, the unsuccessful party to litigation is ordered to pay the costs of the successful party. However, in deciding what order to make about costs, the court will have regard to all the circumstances, including the conduct of all the parties, whether a party has succeeded on part of its case even if not wholly successful, and any admissible offer to settle made by a party that is drawn to the court's attention.

Where it falls to the court to assess the amount of payable costs, the usual basis for assessment is the 'standard' basis, pursuant to which the court will only allow costs that are considered to be proportionate to the matters in issue and to have been reasonably incurred. This tends to lead to 60–70 per cent recovery by the compensated party of its legal costs. However, cases in the IPEC are subject to capped costs recovery (as noted above), and in the High Court, the court's budgeting rules can lead to costs that are not approved by the court in the context of the costs management regime being considered disproportionate. Further, the Civil Procedure Rules provide, in Part 36, a mechanism intended to encourage settlement of civil disputes by imposing costs consequences where a compliant offer is not bettered, and where applicable this can impact costs recovery in any particular case.

x Appellate review

Decisions of the Comptroller General of Patents and interim decisions of the IPEC may be appealed to the Patents Court. Decisions of the Patents Court and final decisions of the IPEC may be appealed to the Court of Appeal. Decisions of the Court of Appeal relating to important issues of legal principle may be appealed to the Supreme Court. Experienced specialist patents judges Floyd LJ and Arnold LJ sit in the Court of Appeal; Lord Kitchin is the intellectual property specialist in the UK Supreme Court.

In order to appeal, the party wishing to do so needs permission from the court that has issued the decision in question, or from the court to which it wishes to appeal. Permission is granted if the court considers that the appeal has a real prospect of success or if there is some other compelling reason why it should be heard. Generally, only errors of law may be appealed. The Supreme Court has instructed appellate courts not to interfere with findings of fact unless compelled to do so. Generally, new evidence is not admissible at the appeal stage.

xi Alternatives to litigation

Alternative dispute resolution (ADR) methods include arbitration and mediation. The Arbitration Act 1996 governs the law relating to arbitration with its seat in England and Wales or Northern Ireland. ADR can enable flexibility in procedure and privacy.