UK: New Weapon To Use Against Patent Trolls

Last Updated: 11 May 2015
Article by Ian Wood

Summary and Implications

In an application that the Judge himself characterises as unprecedented, a company accused of infringing a patent applied to the High Court for the owner of the patent to disclose the commercial contracts it had with existing licensees under the patent even before court proceedings were brought. It sought this information in order to assess whether it should defend the claim (which would be expensive) or seek a commercial settlement in advance of legal action. The Judge agreed that the owner of the patent should disclose the licence agreements to enable the applicant to quantify the value of the claim for patent infringement. The case raises an important point of principle which may have profound implications, namely:

  • the judgment establishes a new weapon for potential litigants to use against patent trolls, forcing such trolls to disclose licence terms, levelling the playing field between alleged infringers and patent proprietors.
  • the result strengthens the English courts' position as the venue of choice for applicants seeking to prevent unmerited claims from patent trolls.
  • the requirement for parties to keep the overriding objectives at the forefront of their minds and consider whether pre-action disclosure will ensure that parties are on an equal footing, saving time and expense for all parties and the court.

Parties can all too often spend large sums of money litigating issues which can be entirely disproportionate to the size of the claim. This is especially familiar in proceedings in the USA, where a party can use the prospect of a claim as a means of forcing a settlement payment. This decision is a big step in helping establish a level playing field, fairly balancing the position of parties where one holds important, relevant information not otherwise available to the other. It could dramatically change the way such claims are dealt with.

What happened?

The Big Bus Company Limited ("Big Bus") operates open top bus sightseeing tours. Ticketogo Ltd ("Ticketogo") is the proprietor of United Kingdom Patent No. 2 391 101 entitled "Ticketing system" (the "Patent"). The Patent discloses and claims a method of issuing over the internet a ticket containing a bar code in an image file format. Ticketogo's lawyer claimed at the hearing that Ticketogo has now granted in excess of 60 licences for its Patent.

The parties had engaged in pre-action correspondence as a result of Ticketogo's assertion that Big Bus' method of issuing tickets infringed its granted Patent. Despite Ticketogo repeatedly relying on the fact that other companies have taken licences in an effort to persuade Big Bus to take a licence under the Patent, Big Bus remained resolute that its own ticketing system did not fall within the claims of the Patent. There was also that question whether Ticketogo's Patent was even valid. Nevertheless Big Bus considered it desirable to resolve the dispute through a commercial agreement in the face of the considerable expense of patent litigation and irrecoverable costs it may incur. Big Bus therefore requested pre-action disclosure of certain documents to enable it to establish the value of Ticketogo's claim and thus assist the resolution of the dispute by way of an informed settlement. Ticketogo refused to give disclosure therefore Big Bus made what is known as a "Pre-Action Disclosure" application of Ticketogo's completed licences through the courts i.e. applied for the disclosure of certain, requested documents before legal proceedings have commenced.

After weighing up the merits of both parties cases, the Judge ordered Ticketogo to give disclosure of the licences it had granted to companies operating in the transport sector.

Legal summary

This judgment has wide applicability and is not confined to patent and intellectual property cases.

Essentially it means that the courts must now consider the desirability of pre-action disclosure of documents which concern the value of the claim to see if such disclosure will (i) dispose fairly of any anticipated proceedings; (ii) assist the dispute to be resolved without proceedings being commenced; and, ultimately (iii) save costs by avoiding drawn out litigation. It must however be noted that an application for pre-action disclosure may not be used as a "fishing" exercise and disclosure will only be awarded under specific circumstances (depending on the facts of the case). A claimant must specify the documents or classes of documents which it desires the defendant to disclose as part of the application.

It is well established that the test for pre-action disclosure requires a two-stage approach. The first stage is to consider whether the applicant and respondent are likely to be parties to any subsequent proceedings, whether the respondent's duty of standard disclosure would extend to the documents or classes of documents subject to the pre-action application if proceedings had started, and whether disclosure would dispose fairly of the anticipated proceedings, assisting the court by negating the need for legal proceedings and save costs.

The Judge considered that the jurisdictional tests were plainly satisfied. Ticketogo was the owner of the Patent and Big Bus was the alleged infringer. If proceedings for infringement were to commence, these companies would be the parties to those proceedings. Counsel for Big Bus submitted that the duty of standard disclosure related to the proceedings as a whole and not just the liability stage in the event that a split trial was ordered. The Judge felt that this test was satisfied, but only in relation to a sub-set of documents sought by Big Bus; standard disclosure extends to documents which adversely affect the disclosing party's case or which support another party's case. This includes the case on quantum. The Judge also felt that any such award would allow Big Bus to assess what was at stake in terms of quantum (often disproportionate to the costs of litigation).

If the jurisdictional test is satisfied, the second stage is to consider whether, as a matter of discretion, an order should be made. Ticketogo asserted that its existing licensees had entered into licences without the benefit of disclosure of licence terms and that it would be time-consuming and costly to seek the consent of third party licensees to the disclosure. The Judge however dismissed this argument – all that would be required was a letter to licensees notifying them of their right to object to inspection of the licences.

Ticketogo also asserted that Big Bus could form its own view of the commercial value of Ticketogo's claim and that any pre-action disclosure impinged heavily on the freedom of negotiation ordinarily enjoyed by parties seeking a commercial agreement. In this respect, the Judge said there were two points to be made: Big Bus did not have access to the key information in this case – the terms of the comparable licences granted by Ticketogo to third parties; and it is not an answer to an application for pre-action disclosure for the patentee to argue that it would be deprived of the ability to negotiate terms with a prospective licensee freely (without the licensee knowing what other licensees have agreed to pay for the licence). On the contrary, the Judge said that, "transparency is a virtue," where price information is concerned.

This judgment may be seen as an extension of the principles established in Huawei Technologies Co Ltd v ZTE Corp ZTE Deutschland GmbH [2014] E.C.C. 13 where the judge decided that before a standard essential patent owner takes action against a potential patent infringer, it must first alert the alleged infringer to that fact in writing, specifying the way in which the patent has been infringed, and present the alleged infringer with a written offer for a licence on fair, reasonable, and non-discriminatory terms that contains all the terms normally included within a licence in the sector in question, including in particular the precise amount of the royalty and the way in which that amount is calculated.

Practical considerations?

Parties should consider if the disclosure of certain documents, even before proceedings have commenced if such documents would assist negotiations and avoid adversarial proceedings. Parties should always consider what steps they can take to assist the resolution of a dispute without incurring lengthy and costly court proceedings which can take up a vast amount of time. The disclosure of documents by way of pre-action disclosure is now one of those steps.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Ian Wood
In association with
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at and we will use commercially reasonable efforts to determine and correct the problem promptly.