Answer ... Yes, both preliminary (interim) and permanent injunctions are available in the United Kingdom in patent infringement cases.
Answer ... Injunctions are equitable remedies and will therefore be granted only where the court considers that it is just to do so.
An injunction will be granted following a finding of infringement at trial in most cases. The justification for an injunction is the threat that a party will infringe the patent owner’s rights, and the fact that a party has been found to infringe will generally be sufficient evidence that it intends to continue its infringing activities. However, even where a patent has been held to be valid and infringed, and there is a clear threat to infringe, the court has the discretion not to grant an injunction and instead to award damages in lieu. A permanent injunction will be withheld if its effect is “grossly disproportionate” to the right protected. This can occur in relation to standard-essential patents, where the patent owner has given an undertaking to offer licences on fair, reasonable and non-discriminatory terms. Injunctions may not be granted, or may be stayed for a period, where the infringing product constitutes a potentially life-saving treatment, as in Edwards Lifesciences v Boston Scientific  EWHC 1256 (Pat).
Preliminary injunctions can also be granted to restrain the alleged infringer from infringing the patent pending judgment in the action. The object of a preliminary injunction is to protect the patent owner from suffering loss that could not be compensated in damages following trial if the patent is found to be valid and infringed; but this must be balanced against the need of the alleged infringer to be protected from suffering loss for which it could not be adequately compensated in damages following trial if the patent is held not to be valid or infringed. In order to obtain a preliminary injunction, the patent owner must show that:
- there a serious issue to be tried (although this is a relatively low hurdle in practice); and
- the balance of convenience lies in its favour.
In most cases any loss suffered can be adequately compensated in damages following trial, so preliminary injunctions are rare. The main area in which preliminary injunctions are granted is the pharmaceutical field, if the patent owner can establish that the launch of a generic product will lead to an irreversible price spiral and the patent owner will be unable to raise its prices to the pre-injunction level if the patent is held to be valid and infringed at trial. When a preliminary injunction is granted, the patent owner will be required to provide a cross-undertaking in damages (ie, an undertaking to the court to pay any damages that the alleged infringer suffers as a result of the preliminary injunction if the patent is held not to be valid or infringed at trial).
Answer ... Yes, damages are available where infringement has been established.
Answer ... Where infringement is established, the patent owner is entitled to damages in respect of the infringements of its patent or, at its option, an account of the infringer’s profits. The patent owner is entitled to disclosure from the defendant to allow it to decide whether to seek damages or an account of the infringer’s profits. Damages or an account of profits is usually assessed in a separate trial following the trial on liability.
The purpose of damages in the United Kingdom is to compensate the patent owner for the loss that it has suffered as a result of the infringing acts, rather than to penalise the defendant for its infringing acts. When assessing damages, the courts therefore seek to restore the claimant financially to the position that it would have been in had the infringing activities not taken place, provided that such losses are foreseeable, caused by the wrong and not excluded from recovery by public or social policy. However, Article 13 of the IP Enforcement Directive states that - at least for an infringer that knowingly, or with reasonable grounds to know, engaged in an infringing activity - one of the facts to be taken into account is the unfair profits made by the infringer. Methods of quantifying damages depend on the facts in the case but include, by reference to royalties in licences granted by the patent owner, reasonable royalty rates and estimated profits that the patent owner would have made had the infringing acts not taken place.
As an alternative to recovering damages, the patent owner may instead elect to recover the profits made by the infringer as a result of its infringing acts. The assessment will then focus on assessing the infringer’s profits, rather than the patent owner’s loss.
Answer ... The standard to obtain injunctions is discussed in question 9.2.
Answer ... No, damages in the United Kingdom are generally intended to compensate the patent owner for the loss that it has suffered as a result of the infringing acts. Punitive damages are not generally available.
Answer ... If a party to infringement proceedings fails to comply with court orders during the proceedings, then sanctions may be ordered by the court. There are also very serious sanctions for failure to comply with an injunction.
Answer ... The courts have a wide discretion to order sanctions against a party if it breaches a court order during the proceedings. For example, failure to comply with a disclosure order could, if serious enough, lead to an order that the party cannot defend the action.
If an injunction has been granted against a party following trial and the party does not comply with the injunction, then it may be held to be in contempt of court. This can lead to substantial fines and to the defendant (or its officers) being jailed.
Answer ... Yes, the general rule in civil litigation in the United Kingdom is that the successful party can recover its reasonable costs (including solicitors’ and barristers’ fees) from the unsuccessful party. However, the courts have a wide discretion in relation to costs orders. Furthermore, in proceedings before the IP Enterprise Court (IPEC) (but not the Patents Court), there is a fixed scale of costs, as discussed in question 9.10.
Answer ... In the Patents Court, the usual costs order is that the unsuccessful party pays the reasonable costs (including solicitors’ and barristers’ fees) incurred by the successful party. Typically, a party that succeeds in all respects will recover around 60% to 70% of its actual costs. However, where the successful party did not succeed in all aspects of the case, it is common for issues-based costs orders to be made – if, for example, the patent is revoked but a number of the invalidity arguments were unsuccessful, a percentage reduction of the successful party’s costs recovery may be awarded.
In the IPEC, there is a fixed scale of costs setting out the maximum costs recovery for each stage of the proceedings, capped at £50,000 in total for the liability stage and £25,000 for the damages stage. Costs are awarded on the basis of this scale, except where:
- the court considers that a party has behaved in a way which amounts to an abuse of the court’s process; or
- the claim concerns the infringement or revocation of a patent whose validity has already been certified by the court in previous proceedings.