A Guide to UK Patent Litigation

Myles Jelf, Partner, Bristows LLP

Timeline of a UK patent action

Case Management Conference

Trial Issue

proceedings

Service of Acknowledgement of

service 9-12 months – Patents Court

6-9 months - IPEC

File expert reports

Judgment

Experiments

Disclosure

Up to 2 months

Appeals

Defence, counterclaim and Grounds of Invalidity

Claimant to apply

for directions/

CMC

Reply and Defence to CC

Notices to Admit Facts

Skeleton arguments

The Case Management Conference

Purpose of a CMC: 1) Allow the parties to narrow the issues in dispute

2) Allow the Court to actively manage the case

The parties will have the opportunity to:

• Explain the position reached in the litigation;

• Discuss compliance with previous directions;

• Provide a costs estimate or budget;

• Discuss the suitability of the case for settlement.

UK disclosure rules • Disclosable documents (including electronic):

o Documents on which a party will reply for their case;

o Document which adversely affect or support another party’s case; and

o Where the issue of commercial success arises, a schedule in accordance with the requirements for their preparation.

• Each party provides “standard” disclosure unless the Court orders otherwise.

• Standard disclosure requires a “reasonable search” for relevant documents.

• ‘Standard’ disclosure in patent cases now quite rare though – Court increasingly skeptical about value and keen to keep to a minimum

• For patent litigation specifically:

o Where the validity of a patent is challenged only documents created two years either side of the first claimed priority date need to be disclosed.

o For infringement a PPD may be provided .

Expert witnesses

• Used to represent the notional “skilled person”

• Overriding duty is to the Court – required to expressly acknowledge duty of independence

• In High Court, subject to intensive cross-examination; main feature of UK patent trial

Experiments

1 • Serve notice to admit facts.

2 • Request Court’s permission to conduct experiments. • Serve Notice of Experiments.

3 • Other party may request that the experiment is

repeated.

If an admission is not forthcoming then:

Cross examination

Any party can at trial cross-examine any other party who gives evidence

Examination in chief

Cross-examination

Re-examination

Interim awards – preliminary injunctions

• Rarely granted in patents cases.

• Guidelines set out in American Cyanamid v Ethicon [1976]:

o Is there a serious issue to be tried?

o Would damages be an adequate remedy?

o Where does the balance of convenience lie?

• Patent validity may not be examined, unless the opponent raises a point considered to be a “knock-out punch” – see Abbot v Ranbaxy [2004], concerning a novelty destroying piece of prior art.

• Decisions of foreign jurisdictions and the EPO may be influential, but are not binding.

• Experimental evidence and expert evidence establishing infringement will be necessary.

Costs

• Costs are generally borne by the unsuccessful party (CPR 44.2).

• Costs are recoverable if they are “of and incidental to” the proceedings.

• The extent of costs recoverable is determined by a separate costs judge.

• Costs awards are discretionary and the court has a wide discretion to make a variety of costs orders.

• Modern practice is to award costs to ‘victor’ but discount for issues fought and lost

• Typically, successfully party recovers 60%-70% of actual spend

• Costs orders must be complied with within 14 days of the date of judgment (or the certificate if later).

The IPEC and the Patents Court

• Usual forum for first instance proceedings.

• High value, complex matters.

• Extensive expert and facts evidence.

• Longer trial.

• Litigation conducted in accordance with the CPR.

• Patents Court Guide and CPR 63.

• Lower value claims • Less costly and less complex alternative. • Capped recovery of costs. • Cap on damages - £500 000. • Limited discovery and evidence • Front ended submissions • Aim is one day trial • Ideal for SMEs.

Patents Court IPEC

The IPO

• Jurisdiction to resolve patent disputes by way of hearing.

• Publishes decisions.

• Limited powers.

• Requirement for parties’ consent.

• Subject to appeal to the High Court.

Appeals procedure

• Appeals take place around 6-12 months from the first instance decision.

• Heard by a panel of three judges.

• Additional evidence cannot be adduced on appeal, absent exceptional circumstances.

• The Appeal Court will rarely interfere with a finding of fact made by the first instance judge – primary purpose is appeal on issues of law

• Further appeals to the Supreme Court may be made on an important point of law (in practice, takes one or two patent cases a year)

Thank you for your attention

Bristows LLP 100 Victoria Embankment London EC4Y 0DH T +44(0)20 7400 8000 F +44(0)20 7400 8050 myles.jelf@bristows.com www.bristows.com

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