1 Legal framework
1.1 What are the sources of patent law in your jurisdiction?
The main sources of patent law in the United Kingdom are legislation (including UK legislation, EU legislation and international treaties) and case law.
The key statute is the Patents Act 1977 (as amended), which sets out (among other things) the requirements for obtaining a patent, the resulting rights provided and the remedies for patent infringement in the United Kingdom. The Patents Act 1977 gives effect to the European Patent Convention 1973 (EPC) (as amended) in the United Kingdom. This is supplemented by the Patents Rules 2007 (as amended), which set out procedural rules for a variety of activities relating to the UK IP Office (UK IPO), including:
- filing patent applications;
- opposing the grant of a patent;
- challenging the validity of a granted patent;
- bringing infringement proceedings before the UK IPO; and
- obtaining validity and infringement opinions from the UK IPO.
The Civil Procedure Rules govern the procedure in litigation before the courts.
EU law also plays a role in some areas of patent law, such as:
- supplementary protection certificates (governed by the Supplementary Protection Certificate Regulation ((EC) 469/2009));
- the legal protection of biotechnological inventions (governed by the Biotechnology Directive (98/44/EC)); and
- the enforcement of IP rights (governed by the IP Enforcement Directive (2004/83/EC)).
International treaties also play a role in UK patent law, such as the EPC (referred to above), the Patent Cooperation Treaty 1970 and the Unified Patent Court Agreement.
Finally, as the United Kingdom is a common law jurisdiction, case law also forms a very important part of the law, in addition to the legislation set out above. There is a binding system of precedent in the United Kingdom, although England and Wales, Scotland and Northern Ireland each have their own court systems. In answering these questions, we refer to litigation before the courts of England and Wales. In addition, although decisions of the Technical Boards of Appeal of the European Patent Office are not binding on the courts of England and Wales, they are of particular interest.
1.2 Who can register a patent?
Any person may apply for a patent in the United Kingdom, either alone or jointly with another. If the applicant is not the inventor, it must identify the inventor and explain the basis on which it is entitled to be granted the patent (eg, being entitled by operation of law or prior agreement, or being the successor in title to the inventor or such person).
Although it is possible for applicants to prepare the documents required for filing themselves, it is common for applicants to engage patent attorneys to assist them.
2.1 What rights are obtained when a patent is registered?
A patent is a legal right that allows the owner to bring legal proceedings against other people that use the invention protected by the patent without its permission.
Owning a granted patent does not give the patent owner the right to use its invention. The patent owner must still ensure that the use of its invention will not infringe IP rights owned by others.
2.2 How can a patent owner enforce its rights?
The main route for a patent owner to enforce its rights is by bringing legal proceedings for patent infringement in the courts. There are two courts in England and Wales in which a patent owner may enforce its rights: the Patents Court and the Intellectual Property Enterprise Court. In certain circumstances it is possible for patent infringement disputes to be heard by the comptroller of patents at the UK IP Office (UK IPO), but this is uncommon.
A patent owner can also enforce its rights by enforcing border measures. A patent owner can inform customs officials of its rights and customs officials may detain or suspend the release of potentially infringing goods. Ultimately, this may lead to the patent owner commencing patent infringement proceedings in the courts, as discussed above.
2.3 For how long are patents enforceable?
A patent is granted for a period of up to 20 years from the filing date of the application, provided that annual renewal fees are paid and the patent is not surrendered by the patent owner or revoked by the courts, the comptroller (at the UK IPO) or the European Patent Office.
3 Obtaining a patent
3.1 Which governing body controls the registration procedure?
First, an application can be made to the UK IP Office (UK IPO). Under this route, examiners from the UK IPO will examine the patent application and decide whether the patent should be granted.
Second, an application can be made to the European Patent Office (EPO), designating the United Kingdom as one of the member states for which protection is sought. Under this route, examiners from the EPO will examine the patent application and decide whether the patent should be granted. If granted, the patent will have the same effect as a UK patent granted by the UK IPO and responsibility for it will be passed to the UK IPO.
In either case, patent applications can be filed as part of an international application under the Patent Cooperation Treaty.
3.2 What is the cost of registration?
The fees payable to the UK IPO up to and including the grant of a UK patent are around £300. If the application is made to the EPO (most likely covering the United Kingdom and other jurisdictions), the fees payable up to and including the grant of a European patent are approximately €6,000.
If a patent attorney is engaged to prepare the patent application on the applicant's behalf, the total fees are likely to be approximately £3,000 to £6,000, depending on complexity.
Once granted, annual renewal fees are payable to the UK IPO, which currently amount to approximately £5,000 over the lifetime of the patent.
3.3 What are the grounds to reject a patent application?
Sections 1(1) to 1(4) of the Patents Act 1977 set out the requirements of patentability in the United Kingdom, which are based upon and are intended to have the same effect as corresponding provisions in Articles 52 to 57 of the European Patent Convention (EPC). In summary, the invention must:
- be new;
- involve an inventive step;
- be capable of industrial application; and
- not be excluded subject matter.
In addition, a patent application must disclose the invention in a manner which is sufficiently clear and complete for the invention to be performed by a person skilled in the art. The claims must:
- define the matter for which the applicant seeks protection;
- be clear and concise;
- be supported by the description; and
- relate to one invention or to a group of inventions which are so linked as to form a single inventive concept.
Patent applications not meeting these requirements will be rejected by the UK IPO. In addition, the applicant must follow the procedural rules set by the UK IPO (eg, the form of the patent application and the fee payable).
There are analogous provisions in the EPC for applications made to the EPO.
3.4 What programmes or initiatives are available to accelerate or fast track examination of patent applications?
The UK IPO has three types of accelerated service for fast tracking patent applications:
- combined search and examination;
- accelerated search and/or examination; and
- accelerated publication.
Combined search and examination is available on request. The examination process is started at the same time as the search and a combined search and examination report will be issued. No reasons are needed for wanting to use this service and usually the search and examination report is produced within six months of the request.
Accelerated search and/or examination allows a patent applicant to request that its search and/or examination (or combined search and examination) be completed more quickly than normal. This is not available as of right – the applicant must demonstrate to the UK IPO either why it is important for these steps to be accelerated or that the invention relates to a 'green' technology.
Accelerated publication is available as of right and will result in the patent application being published approximately six weeks from the date on which the request is received, provided that the search has been conducted and the necessary formal requirements have been met (as opposed to 18 months for normal applications from their filing or priority date).
It is also possible to request accelerated prosecution of European patent applications at the EPO.
3.5 Are there any types of claims or claiming formats that are not permissible in your jurisdiction (eg, medical method claims)?
Patents cannot be granted by the UK IPO or the EPO for inventions consisting of methods of treatment of the human or animal body by surgery or therapy, or methods of diagnosis practised on the human or animal body. However, patents can be granted for inventions consisting of a substance or composition for use in any such method. The reason for this is one of public policy: namely, that medical and veterinary professionals should be free to perform diagnoses and give treatment without fear of being held liable for patent infringement.
There are also restrictions in the UK IPO and the EPO in relation to biotechnological inventions. For example, patents cannot be granted for processes for cloning human beings, processes for modifying the germ line genetic identity of human beings or uses of human embryos for industrial or commercial purposes.
3.6 Are any procedural or legal mechanisms available to extend patent term (eg, adjustments for patent office delays, pharmaceutical patent term extension or supplementary protection certificates)?
Supplementary protection certificates (SPCs) are available for medicinal products and plant protection products. The purpose of an SPC is to compensate the patent owner where the term of the patent monopoly has been significantly eroded due to the time taken for the grant of marketing authorisation. The SPC takes effect upon expiry of the 'basic' patent and covers the product for up to an additional five years.
In addition, a six-month extension to the duration of an SPC for a medicinal product is available when certain requirements are satisfied. The purpose of this is to incentivise the industry to investigate and develop medicines for children.
3.7 What subject matter is patent eligible?
In addition to being in respect of an invention that is new, involves an inventive step and is capable of industrial application, the invention must not fall within certain categories of technology which are not deemed patentable.
The following (among other things) are considered not to be inventions (to the extent that a patent or application relates to these things as such):
- discoveries, scientific theories or mathematical methods;
- literary, dramatic, musical or artistic works, or any other aesthetic creations;
- schemes, rules or methods for performing mental acts, playing games or doing business;
- computer programs; and
- the presentation of information.
In addition, patents may not be granted for the following inventions:
- inventions whose commercial exploitation would be contrary to public policy or morality;
- methods of treatment of the human or animal body by surgery or therapy, or methods of diagnosis practised on the human or animal body, not including inventions consisting of a substance of composition for use in any such method; and
- inventions that are not patentable under the Biotechnology Directive.
3.8 If the patent office does not grant a patent, is an appeal available and to whom?
If the comptroller of patents at the UK IPO rejects the patent application, the patent applicant can appeal this decision to the Patents Court.
If the examining division of the EPO rejects the patent application, the patent applicant may file an appeal with the EPO. This may be allowed by the examining division; but if not, it will then be considered by the Boards of Appeal.
4 Validity/post-grant review and/or opposition procedures
4.1 Where can the validity of an issued patent be challenged?
The validity of UK patents granted by either the UK IP Office (UK IPO) or the European Patent Office (EPO) can be challenged before the Patents Court, the IP Enterprise Court (IPEC) or the comptroller at the UK IPO.
European patents are also subject to a post-grant opposition procedure at the EPO. This opposition procedure is essentially a post-grant revocation action at the EPO which, if successful, will revoke the European patent in all jurisdictions for which it was granted.
4.2 How can the validity of an issued patent be challenged?
For UK patents granted by the UK IPO or the EPO, the validity of an issued patent can be challenged by filing revocation proceedings with the Patents Court, the IPEC or the comptroller at the UK IPO. Any person may commence such revocation proceedings.
Proceedings before the Patents Court or the IPEC are commenced by filing a claim form, particulars of claim and grounds of invalidity. In the Patents Court, the grounds of invalidity must specify the grounds on which the validity of the patent is challenged and must include particulars that clearly define the issues relied upon (although these are at a relatively high level). In the IPEC, it is also necessary to set out concisely all the facts and arguments relied upon. Revocation proceedings before the comptroller at the UK IPO are commenced by filing Patents Form 2 and must be accompanied by a statement of grounds that includes a concise statement of the facts and grounds on which the claimant relies.
For European patents granted by the EPO, the opposition must be filed at the EPO Opposition Division within nine months of publication of the mention of the grant of the European patent in the European Patent Bulletin. To commence an opposition, it is necessary to file a notice of opposition, which includes the grounds of opposition.
4.3 What are the grounds to invalidate an issued patent?
The main grounds on which a patent can be invalidated in the UK courts are as follows:
- The invention is not a patentable invention (ie, lack of novelty (anticipation), lack of inventive step (obviousness), lack of industrial applicability and/or relating to excluded subject matter);
- The patent was granted to someone not entitled to it (although this ground can be raised only by someone claiming to be entitled to the patent);
- The specification of the patent is not sufficiently clear and complete to enable the invention to be performed (ie, insufficiency);
- The matter disclosed in the specification of the granted patent extends beyond that disclosed in the application as filed (ie, added matter); or
- The protection conferred by the patent has been extended by an amendment which should not have been allowed.
In addition, invalidity challenges before the English courts increasingly include an allegation that the teaching of the patent is not plausible. Although not specified as a particular ground for revocation, plausibility issues arise in relation to arguments that a patent lacks an inventive step, lacks industrial applicability or is insufficient.
4.4 What is the evidentiary standard to invalidate an issued patent?
The evidentiary standard to invalidate an issued patent in the United Kingdom is the ordinary standard in civil litigation generally: namely, the overall 'balance of probabilities'.
4.5 What post-grant review or opposition procedures are available for third parties to challenge the validity of a patent?
It is not possible for third parties to oppose the grant of a UK patent at the UK IPO. It is possible for third parties to file written observations to the comptroller during the prosecution phase, but the third party has no right to be heard or to be informed of any responses from the examiner or the applicant to such written submissions.
There is a post-grant opposition procedure for UK patents granted by the EPO. Any person can file an opposition at the Opposition Division of the EPO within nine months of the grant of a European patent.
4.6 Who can oppose a granted patent?
For applications for European patents filed with the EPO, any person may file written observations with the EPO in relation to the patentability of the invention during the prosecution phase. As with the UK IPO, persons filing such observations have no right to be informed of responses from the examiner or the applicant. However, unlike patents granted by the UK IPO, on the grant of a European patent, any natural or legal person may file an opposition to the grant of the patent. Opposition proceedings in the EPO can take several years to be resolved.
4.7 What are the timing requirements for filing an opposition or post-grant review petition?
European patents may be challenged in opposition proceedings in the EPO within nine months of publication of the mention of the grant of the European patent in the European Patent Bulletin.
4.8 What are the grounds to file an opposition?
Oppositions at the EPO can be based only on the following grounds:
- The subject matter of the European patent is not patentable within the terms of Articles 52 to 57 of the European Patent Convention;
- The European patent does not disclose the invention in a manner that is sufficiently clear and complete for a person skilled in the art to carry it out; or
- The subject matter of the European patent extends beyond the content of the application as filed (or, in the case of a divisional patent, the parent application).
4.9 What are the possible outcomes when an opposition is filed?
There are three possible outcomes to opposition proceedings:
- The opposition is rejected and the patent is maintained as granted;
- The patent is maintained in an amended form (in which case a new patent specification is published); or
- The patent is revoked.
4.10 What legal standards will the tribunal apply to resolve the opposition or challenge, and which party bears the burden of proof?
The EPO will resolve the opposition proceedings on the balance of probabilities, based on the grounds or evidence relied upon by the opponent. The burden of proof is on the opponent to prove that the patent is invalid.
4.11 Can a post-grant review decision be appealed and what are the grounds to appeal?
Decisions of the EPO Opposition Division can be appealed as of right to the EPO Technical Boards of Appeal. The grounds of appeal are the same as the grounds of opposition.
5 Patent enforceability
5.1 What makes a patent unenforceable?
As a general rule, UK patents that are not held to be invalid are enforceable. The circumstances in which UK patents will be unenforceable are very rare, but include where enforcement of the patent would be an abuse of process or would breach competition law.
5.2 What are the inequitable conduct standards?
There are no inequitable conduct standards in the United Kingdom. In particular, there is no obligation in the United Kingdom to disclose material prior art to the UK IP Office (UK IPO) or the European Patent Office (EPO) during the prosecution of a patent.
5.3 What duty of candour is required of the patent office?
Neither the UK IPO nor the EPO requires a specific duty of candour, but clearly applications for patents and supplementary protection certificates should contain accurate information.
In Astra Zeneca v European Commission (T-321/05), the European Court of Justice (General Court) held that the submission to a patent office of objectively misleading representations by an undertaking in a dominant position could constitute an abuse of that position, contrary to antitrust laws.
6 Patent infringement
6.1 What Constitutes Patent Infringement?
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.
6.2 Does your jurisdiction apply the doctrine of equivalents?
Yes, following the Supreme Court's decision in July 2017 in Actavis v Eli Lilly  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  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  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  EWCA Civ 2219.
6.3 Can a party be liable if the patent infringement takes place outside the jurisdiction?
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.
6.4 What are the standards for wilful infringement?
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.
6.5 Which parties can bring an infringement action?
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.
6.6 How soon after learning of infringing activity must an infringement action be brought?
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.
6.7 What are the pleading standards to initiate a suit?
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.
6.8 In which venues may a patent infringement action be brought?
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.
6.9 What are the jurisdictional requirements for each venue?
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.
6.10 Who is the fact finder in an infringement action?
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.
6.11 Does the fact finder change based on venue?
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.
* There are two judges in the High Court with the surname Carr, so Henry Carr is referred to as Mr Justice Henry Carr to distinguish between them.
6.12 What are the steps leading up to a trial?
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.
6.13 What remedies are available for patent infringement?
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).
6.14 Is an appeal available and what are the grounds to appeal?
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.
7.1 Is discovery available during litigation?
Yes, discovery (referred to in the United Kingdom as 'disclosure') is available both before and during patent litigation.
Once an action has commenced, disclosure typically takes place after the parties have filed their statements of case, but before fact and expert evidence is exchanged.
Disclosure may be ordered before proceedings start if:
- both applicant and respondent are likely to be a party to subsequent proceedings;
- the respondent's duty under standard disclosure (discussed below) would extend to the documents being sought; and
- disclosure before proceedings start would be desirable in order to dispose fairly of the anticipated proceedings or assist the dispute to be resolved without proceedings, or to save costs.
7.2 What kinds of discovery are available?
Once an action has commenced, disclosure typically takes place after the parties have filed their statements of case, but before fact and expert evidence is exchanged. In the Patents Court, each party is required to serve a disclosure report at least two weeks before the case management conference, in which it briefly describes:
- what documents exist or may exist that are or may be relevant to the matters in dispute;
- where such documents are located; and
- in the case of electronic documents, where they are stored.
At least seven days before the case management conference, the parties must meet (either in person or by telephone) to try to agree a proposal in relation to disclosure that meets the 'overriding objective' in the Civil Procedure Rules. Although standard disclosure (see question 7.3) is common, disclosure orders are frequently more bespoke to the particular case. Disclosure is usually much more limited in the IPEC.
In certain circumstances, it is also possible to seek the disclosure of specific documents from a party, as well as to seek disclosure of documents from a non-party to the action.
7.3 Are there any limitations to the amount of discovery allowed?
Traditionally, the most common order for disclosure in civil proceedings in the United Kingdom is 'standard disclosure'. This requires the parties to carry out a reasonable search for documents that are, or have been, in their control, which fall within the following categories:
- documents on which they rely; and
- documents which adversely affect their own case, adversely affect another party's case or support another party's case.
Once this has taken place, the parties exchange lists of such documents and then examine the documents that are made available for inspection. Certain categories of documents need not be made available for inspection (eg, privileged documents). Standard disclosure in patent cases is limited as set out below:
- For issues relating to infringement, the alleged infringer is
not required to disclose documents relating to the product or
process alleged to infringe if it instead elects to provide a
'product and process description'. This is a document
setting out full particulars of the product or process alleged to
infringe. It must be complete in all relevant areas and must
contain information at a sufficient level of detail to allow all
infringement issues to be resolved by the court. It must also be
accompanied by a signed written statement which:
- states that the person making the statement is personally acquainted with the facts to which it relates;
- verifies that the description is a true and complete description of the product or process; and
- contains an acknowledgment by the person making the statement that he or she may be required to attend court to be cross-examined on the contents of the description.
- For issues relating to invalidity, the patent owner is required to disclose only documents which came into existence within a two-year period either side of the priority date.
In addition, disclosure in relation to validity issues is becoming more focused. There is an increasing acceptance that disclosure of documents concerning the making of an invention rarely plays a significant role at trial, so disclosure in relation to obviousness is frequently dispensed with.
8 Claim construction
8.1 When during a patent infringement action are claim terms defined by the tribunal?
Claim construction issues are addressed by the judge, usually in the judgment following the trial of the invalidity and infringement issues.
8.2 What is the legal standard used to define claim terms?
Claims in UK patents are construed purposively, by asking what the person skilled in the art would understand the language of the claims to mean. The claims must therefore be interpreted through the eyes of the person skilled in the art, interpreting the words of the claim in the context of the specification as a whole, and having regard to the fact that the patent owner's purpose was to describe and claim an invention.
There has been debate since the decision of the Supreme Court in Actavis v Eli Lilly  UKSC 48 as to whether this remains the approach to claim construction in the United Kingdom, but a number of Patents Court decisions have concluded that it does; this was also confirmed by the Court of Appeal in Icescape v Ice-World  EWCA Civ 2219. However, in considering infringement, it is now necessary to go on to consider whether a claim is infringed on the basis of equivalence.
8.3 What evidence does the tribunal consider in defining claim terms?
It is generally accepted that the issue of claim construction is a question of law for the judge. However, as the addressee of the patent is the 'person skilled in the art', evidence can be admitted that assists the court in reading the patent through the eyes of the skilled person. This is typically provided by experts, including evidence as to the common general knowledge, the meaning of any technical terms and the technical consequences of particular constructions.
9.1 Are injunctions available?
Yes, both preliminary (interim) and permanent injunctions are available in the United Kingdom in patent infringement cases.
9.2 What is the standard to obtain an injunction?
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).
9.3 Are damages available?
Yes, damages are available where infringement has been established.
9.4 What types of damages are available?
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.
9.5 What is the standard to obtain certain types of injunctions?
The standard to obtain injunctions is discussed in question 9.2.
9.6 Is it possible to increase or multiply damages due to a party's actions?
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.
9.7 Are sanctions available?
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.
9.8 What kinds of sanctions are available?
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.
9.9 Can a party obtain attorneys' fees?
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.
9.10 What is the standard to obtain attorneys' fees?
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.
10.1 What patent rights can a party obtain through a licence?
The rights obtained by a licensee will depend on the type of licence that is granted:
- Exclusive licence: The licensee has exclusive rights to use the licensed technology, which means that the licensor may not grant any other licences or use the licensed technology itself. An exclusive licensee has the same right as the patent owner to bring patent infringement proceedings.
- Sole licence: The licensee has sole rights to use the licensed technology, but the licensor may still use the licensed technology.
- Non-exclusive licence: The licensee has rights to use the licensed technology, but the licensor may grant as many other licences as it wishes to other parties and may operate the licensed technology itself.
10.2 What limits can a patent owner impose on a licence?
Subject to complying with all other laws (including antitrust laws), there are no restrictions on the provisions that a patent owner can include in a licence agreement.
11.1 Are there any limits on patent protection due to antitrust laws?
Antitrust laws do not limit the scope of patent protection that can be sought or obtained, but may impact on the patent owner's ability to enforce its rights. It is possible that the exercise of patent rights may, in certain circumstances, amount to abusive conduct by a party in a dominant position contrary to Article 102 of the Treaty on the Functioning of the European Union. An example is the arbitrary refusal to supply spare parts to independent retailers. Furthermore, in relation to standard-essential patents, where the patent owner has given an undertaking to license the patents on fair, reasonable and non-discriminatory terms, a refusal to license can in principle amount to an abuse of Article 102.
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.