Answer ... A UK or European (UK) patent is infringed by a person doing any of the following in the United Kingdom without the patent owner’s consent:

• Where the invention is a product: making, disposing of, offering to dispose of, using, importing or keeping (whether for disposal or otherwise) the product;
• Where the invention is a process: using the process or offering it for use in the United Kingdom in the knowledge, or where it would be obvious to a reasonable person in the circumstances, that such use without the consent of the patent owner would infringe the patent; or
• Where the invention is a process: disposing of, offering to dispose of, using or importing any product obtained directly by means of that process or keeping any such product (whether for disposal or otherwise).

In addition, a person infringes a patent for an invention if, without the consent of the patent owner, it supplies or offers 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 the knowledge, or where it would be obvious to a reasonable person in the circumstances, that those means are suitable for putting, and are intended to put, the invention into effect in the United Kingdom.

In all cases, it is necessary to show that the invention has been taken in some way. The ‘invention’ is defined as that “specified in a claim of the specification of the application or patent, as the case may be, as interpreted by the description and any drawings contained in that specification”. This involves construing the claims of the patent in order to determine whether the allegedly infringing product or process falls within the scope of the claims.

Answer ... Yes, following the Supreme Court’s decision in July 2017 in Actavis v Eli Lilly [2017] UKSC 48, the United Kingdom now applies the doctrine of equivalents.

There is a two-stage test for determining whether a patent has been infringed in the United Kingdom:

• First, does the product/process (or ‘variant’) fall under the scope of the claims by a matter of normal interpretation? If so, the patent is infringed. The Court of Appeal recently confirmed in Icescape v Ice-World [2018] EWCA Civ 2219 that this question requires a ‘purposive’ construction of the claim, as has traditionally been adopted in the United Kingdom since the decision of the House of Lords in Catnic v Hill & Smith [1982] RPC 183.
• If not, does the product/process (or ‘variant’) nonetheless infringe because it varies in a way or ways which is or are immaterial? This question is approached by following a three-stage test, as follows:
  • Notwithstanding that it is not within the literal meaning of the relevant claim(s) of the patent, does the variant achieve substantially the same result in substantially the same way as the invention - that is, the inventive concept revealed by the patent?
  • Would it be obvious to the person skilled in the art, reading the patent at the priority date, but knowing that the variant achieves substantially the same result as the invention, that it does so in substantially the same way as the invention?
  • Would such a reader of the patent have concluded that the patentee nonetheless intended that strict compliance with the literal meaning of the relevant claim(s) of the patent was an essential requirement of the invention?

To establish infringement in a case where there is no infringement as a matter of normal interpretation, a patent owner would have to establish that the answer to the first and second questions is ‘yes’ and the answer to the third question is ‘no’.

As this test was only introduced in July 2017, there is limited case law in the United Kingdom applying the doctrine of equivalents, although the Court of Appeal applied the test in Icescape v Ice-World [2018] EWCA Civ 2219.

Answer ... No, for infringement of a UK patent, there must be an infringing act taking place in the United Kingdom.

However, a party that does not itself carry out an infringing act in the United Kingdom may be held liable as a joint tortfeasor if it has acted in concert with another party that has carried out an infringing act in the United Kingdom.

Answer ... Patent infringement in the United Kingdom is in most cases a strict liability tort, so it does not usually matter whether the act was intentional or wilful. There are some exceptions where it is necessary to establish that the infringer had knowledge of the patent or that the infringer intended to infringe the patent (eg, offering a process for use and contributory/indirect infringement).

Innocence may also prevent an award of damages or an order for an account of profits, even where knowledge or intention is not required for the finding of infringement. To avail of the defence, the defendant must prove that it was not aware of the patent and had no reasonable grounds for supposing it existed.

Answer ... An infringement action will normally be brought by the patent owner. Where there are co-owners, one co-owner may start an infringement action without the consent of the others, but the other co-owners must be joined as either claimants or defendants (in the latter case a co-owner will not be liable for any costs unless it acknowledges service and participates in the proceedings).

An exclusive licensee can also bring proceedings for infringement, in which case the patent owner must be joined as either claimant or defendant (in the latter case the patent owner will not be liable for any costs unless it acknowledges service and participates in the proceedings).

Any person infringing a patent may be named as a defendant, including joint tortfeasors.

Answer ... The timeframe for bringing a claim for patent infringement is six years from the date of the infringing act.

If the defendant has deliberately concealed any fact relevant to the infringement from the claimant, then the six-year period does not start until the claimant has discovered the concealment or could with reasonable diligence have discovered it.

Answer ... In the Patents Court, the claimant in an infringement action must set out in its particulars of claim a concise statement of the facts on which it relies, which must be verified by a statement of truth. Particulars of the alleged infringement are usually provided as a separate document, the particulars of infringement, which must set out the claims of the patent that are alleged to be infringed and give at least one example of each type of infringement alleged. At least one infringing act (or threat to carry out an infringing act) must be identified; otherwise, the statement of case is liable to be struck out. It should also be specified whether the infringement is alleged to be direct or indirect. It is not necessary for the claimant to explain its construction of the claims in the statement of case.

The above rules also apply in the IP Enterprise Court (IPEC), but with the important exception that the statement of case must set out concisely all facts and arguments upon which the party relies, including claim construction arguments (although it is accepted in the IPEC that claim construction arguments are likely to develop during the course of proceedings). This is to allow more detailed case management to take place at an early stage in IPEC proceedings. The IPEC Guide also states that it is likely to be necessary to break down a patent claim into integers in order to explain a case on infringement with reference to specific elements of the alleged infringing product or process, which may be most conveniently done in the form of a claim chart.

Answer ... There are two courts in England and Wales in which a patent infringement action can be brought: the Patents Court and the IPEC.

The IPEC was set up to handle cases that are smaller, shorter, less complex and of lower value. The procedure in the IPEC is focused on these types of cases, with greater case management to limit the extent of disclosure, written evidence and the length of the trial. The damages awarded at the IPEC are capped at £500,000 and recoverable costs are capped at £50,000 for the liability stage. Because of these features, more complex and higher-value patent cases are usually filed in the Patents Court.

It is also possible for parties to an infringement action to agree to refer the infringement case to the comptroller at the UK IPO, although the comptroller may decline to deal with a case if he considers that the matters involved would more properly be determined by the court. However, the comptroller cannot grant injunctions, so it is very rare in practice for infringement issues to be referred to the comptroller.

Where infringing acts take place in Scotland or Northern Ireland, cases are heard in the Court of Session or the Chancery Division of the High Court of Northern Ireland, respectively. The procedures in these courts are beyond the scope of this guide.

Answer ... The jurisdictional requirements for the Patents Court and the IPEC are the same: namely, that there is an infringing act in England and Wales. The claimant may choose whether to start proceedings in the Patents Court or the IPEC based on the factors set out above.

Answer ... A judge will be the fact finder in the Patents Court and the IPEC. Jury trials are not used in patents cases in the United Kingdom.

Answer ... No, in both the Patents Court and the IPEC patent cases are heard by a single judge.

Cases in the Patents Court will be heard by one of the designated Patents Court judges or by suitably qualified deputy High Court judges. Cases with a high technology complexity rating will normally be heard by Justice Arnold, Justice Birss or Justice Henry Carr*, or by suitably qualified deputy High Court judges.

Patent cases in the IPEC are usually heard by the enterprise judge - currently Judge Hacon - although other judges of the High Court, including the Patents Court, can sit as judges of the IPEC as necessary and certain senior IP barristers are also qualified to sit in the IPEC when necessary.

Answer ... The main steps leading up to a trial in patent cases are as follows:

• The first stage is for the parties to file and serve their statements of case. The claimant is required to file and serve a claim form, with (or shortly followed by) particulars of claim and particulars of infringement. The defendant will then file its defence along with a counterclaim for revocation (including its grounds for invalidity) if it wishes to challenge the validity of the patent.
• Following this, the parties will either agree directions to trial or attend a case management conference, at which the court determines the directions for trial. These directions will include the length, technical complexity rating and approximate timing for the trial, as well as the intermediate stages and when these will take place. Such intermediate stages usually include disclosure, experiments (if appropriate) and exchange of fact and expert evidence.
• Disclosure will typically follow next, if agreed and/or ordered, as well as experiments (if needed).
• The exchange of factual witness statements and expert reports will follow. Parties typically retain their own experts, but such experts owe a duty to the court to assist it with matters within their expertise.
• A pre-trial review may take place prior to trial, usually in the case of trials of more than five days, although this is often dispensed with.
• Finally, skeleton arguments are exchanged shortly before trial which set out the arguments of the parties in detail.

The overall procedure, as set out above, is the same in the Patents Court and the IPEC, save that pre-trial reviews do not normally take place in the IPEC. The main differences between the Patents Court and the IPEC are that the statements of case in the IPEC are more detailed, which enables the court to consider much more fully at the case management conference stage what further steps are required prior to trial. For example, disclosure, fact evidence and expert evidence are ordered only in relation to specific issues and only following a careful cost-benefit assessment.

Answer ... The following remedies are available for patent infringement:

• an injunction (including a preliminary or permanent injunction);
• a damages inquiry or (at the option of the claimant) an account of profits;
• delivery up or destruction of all infringing goods in the possession or power of the defendant;
• an order that the unsuccessful party disseminate the result of the action at its own expense; and
• a declaration of infringement.

It is also possible for a party to seek a declaration of non-infringement in relation to a product or process.

In addition, patent infringement litigation usually involves a claim (or counterclaim) for revocation of the patent. If the patent is not revoked, the patent owner can also obtain a certification of contested validity. Such certification means that if the patent owner succeeds in any subsequent proceedings for infringement or revocation of the patent, it is entitled, unless the court or comptroller orders otherwise, to recover its costs on an indemnity basis (ie, a higher scale that is more likely to reflect the actual costs incurred).

Answer ... An appeal is available from either the Patents Court or the IPEC to the Court of Appeal. However, permission to appeal is required, which can be obtained from either the first-instance court or, if that court refuses permission, the Court of Appeal. Permission to appeal is not automatic – it is necessary to show that the appeal has a real prospect of success or that there is some other compelling reason why it should be heard. Appeals should be based on errors of law or application of the law and not fact.

Permission is not required in the case of an appeal from the comptroller to the Patents Court, but permission is required for any further appeal to the Court of Appeal.

Further, judgments from the Court of Appeal can be appealed to the Supreme Court. However, permission is granted only for cases in which a point of law is of general importance to the public.

Appeals are a review of the earlier decision, not a de novo rehearing of the case.