The Intellectual Property Review: United Kingdom
Forms of intellectual property protection
The UK stopped being a Member State of the EU on 31 January 2020, and the 'transition period' governed by the Withdrawal Agreement of 2018 expired on 31 December 2020. Upon the expiry of the transition period, for EU rights obtained or arising under an EU regime, the UK extracted from each EU-wide right a UK right of the same scope. The extracted rights are now treated as national UK rights. Renewal fees are payable to the relevant UK office, and the rights are enforceable in the courts in the UK as national rights.
For national intellectual property rights covering the UK, there was little change to the existing systems of protection and enforcement upon the expiry of the transition period.
A patent may be granted covering the United Kingdom for an invention that is new, involves an inventive step, is capable of industrial application, and is not otherwise excluded from patentability. The term of protection is 20 years from the application date, unless a supplementary protection certificate (SPC) is granted (which may extend the term), renewal fees are not paid (in which case the patent may lapse sooner) or the patent is declared invalid.
An application for a patent conferring protection in the UK can either be made to the UK Intellectual Property Office (UK IPO), for a national (GB) patent, or to the European Patent Office (EPO) for a European Patent designating the UK (EP(UK)). Alternatively, either can be designated as part of a Patent Cooperation Treaty (PCT) application. (The European patent system is governed by the European Patent Convention, which is an international agreement in which the UK remains a participating state.)
ii Supplementary protection certificates
A supplementary protection certificate (SPC) is a form of intellectual property that extends the patent term in respect of pharmaceutical or plant protection products in qualifying circumstances.
The term of the SPC is intended to compensate, to some degree, for the period elapsing between the filing of an application for a patent for a new medicinal or plant protection product and the grant of authorisation to place the medicinal product or plant protection product on the market. The duration of protection is the term that elapsed between those dates, reduced by a period of five years, subject to a maximum period of protection of five years.
In the UK, designs may be protected by a mixture of registered and unregistered rights, which vary in their subsistence, scope and duration.
Registered designs – UK and EU
Designs that are new and have individual character can be registered with the UK IPO. The UK is also a member of the Hague Agreement for the international registration of industrial designs, allowing the UK to be a designated state in such an application.
Three-dimensional and two-dimensional designs can all be protected as a registered design. However, computer programs, features of an article that have a technical function or that interconnect with other parts of the article and are necessary for the article to perform its function, and designs that are contrary to public policy are not registrable.
Registered designs are monopoly rights (which can be enforced without copying having occurred). The term of protection is 25 years provided that renewal fees are paid.
For each (EU-wide) registered Community design (RCD) that existed on 31 December 2020, the UK extracted a re-registered design of the same scope covering the UK. However, there was no extraction for applications pending with the European Union Intellectual Property Office (EUIPO) on that date, nor for international applications pending in the Hague System. The owner of such an application may, until 30 September 2021, re-file the same design in the UK IPO retaining the earlier filing date of the pending RCD.
The law in the UK provides for two types of unregistered design right to arise automatically where qualifying criteria are met:
- 'UDR' protects the shape and configuration of the whole or part of an article (external or internal) that is original, recorded in a design document or is the subject of an article made to the design, and created by a qualifying person. It will not subsist in a method or principle of construction, the shape or configuration of an article that 'must fit' another, or the appearance of an article that 'must match' another; nor does it protect 2D designs such as ornamentation or surface decoration (which may be protected by copyright). Protection is the lesser of 15 years from first recording in a design document or first making to the design, or 10 years from first making the article available for sale or hire (dates calculated from the end of the relevant calendar year). The owner has exclusive rights to reproduce the design for commercial purposes. During the final five years of the term, licences of right are available. If the terms are not agreed, they will be settled by the Comptroller General of Patents, Designs and Trademarks.
- 'Supplementary unregistered design' protects designs that are new and have individual character (i.e., like a registered design), and so can protect 3D and 2D designs. Such protection lasts for a period of three years from the date on which the relevant design is first made available to the public (provided this is not before 31 December 2020).
Additionally, for (EU-wide) unregistered Community design rights (UCDs) that existed on 31 December 2020, the UK extracted a 'continuing unregistered Community design' of the same scope covering the UK.
Copyright may subsist, inter alia, in original literary, dramatic, musical and artistic works, sound recordings, films, broadcasts and typographical arrangements of published editions, provided the work qualifies by its author's nationality or domicile or by the place of first publication of the work. Protection arises automatically when works are recorded in writing or some other form.
Copyright in literary, dramatic, musical or artistic works generally lasts for 70 years from the end of the calendar year in which the author dies. For some literary works, including computer-generated works, databases, tables and compilations, and for sound recordings and broadcasts, protection will last for 50 years from the end of the calendar year in which they are created.
Copyright is infringed if the work, or a substantial part of it (assessed qualitatively), is copied, not if another work is created independently.
v Database rights
Databases can be protected in two ways: by copyright and by the sui generis database right.
Where there has been a substantial investment in obtaining, verifying or presenting the contents of a database, the sui generis right will arise. Protection lasts for 15 years from the end of the calendar year in which the database was completed. The UK continues to recognise sui generis database rights that existed on 31 December 2020 but after that date qualification criteria require UK nationality, residence or establishment.
Where all or a substantial part of the contents of the database are extracted or reutilised without the owner's permission, database rights will be infringed.
vi Registered trademarks
A mark or sign may be registered as a trademark if it is capable of distinguishing the goods or services of one undertaking from those of another and of being represented on the register in a manner that enables the competent authorities and the public to determine the clear and precise subject matter of protection. It must also not be devoid of distinctive character nor consist exclusively of indicators that may designate the kind, quality, quantity or other characteristics of the goods or services, although it may be shown that the mark has acquired distinctiveness through use. Registered trademarks can include words, domain names, colours and the shape of goods or their packaging, as well as non-traditional marks such as sounds (although, in practice, registration of non-traditional marks is difficult to obtain).
A mark can be registered for the UK by making an application to the UK IPO. Also, the UK is a member of the Madrid system for international registration of trademarks, and so registration covering the UK can be sought pursuant to that system too.
For each EU Trade Mark (EUTM) that existed on 31 December 2020, the UK extracted a 'comparable UK trademark (EU)' of the same scope covering the UK. However, there was no extraction for applications pending with the EUIPO on that date, nor for applications pending under the Madrid system. Owners of such applications may, until 30 September 2021, re-file the same mark in the UK IPO retaining the earlier filing, priority and seniority dates of the pending filings.
A mark will be registered for specified goods and services listed in the classes of the International Classification of Goods and Services.
The proprietor of a mark has the exclusive right to use the registered mark in connection with the classes of goods or services for which it is registered (except in respect of honest concurrent use). The mark may be enforced in respect of:
- an identical mark for identical goods or services;
- an identical or similar mark for identical or similar goods or services where such use has caused or is likely to cause confusion; and
- if a mark has a reputation, in respect of an identical or similar sign for goods and services where the use causes detriment or leads to unfair advantage.
A mark may remain registered indefinitely provided that the renewal fees are paid.
vii Passing off
A claimant can bring a claim for passing off where:
- there is goodwill attached to his or her goods or services in the United Kingdom;
- there is a misrepresentation by the defendant leading or likely to lead the public to believe that the goods or services offered are the goods or services of the claimant or there is some other authorised link with the claimant; and
- the claimant suffers (or would suffer) damage as a result.2
Passing off can be used as a way of protecting unregistered trademarks, names, logos or get-up from being misused by others wanting to trade off the claimant's goodwill.
viii Confidential information and trade secrets
Confidential information is broadly defined as information that has the necessary quality of confidence that is disclosed in circumstances imparting an obligation of confidence; it may be protected in tort under the common law.
Confidential information may also be protected by non-disclosure agreements or confidentiality agreements. It is common for employers to request that their employees sign such agreements if they have access to confidential information.
While in theory it is possible to protect confidential information indefinitely, there may be limits on how long information will retain its confidential status. For example, non-disclosure and confidentiality agreements may be time-limited, the information may become available from non-confidential sources and information may be made available to other parties or the public in the course of litigation.
ix Plant varieties
A plant variety right may be available for a new, distinct, uniform and stable plant variety. 'New' is assessed by reference to sale or disposal.
A plant variety right entitles the holder to prevent anyone from producing or reproducing, conditioning for the purpose of propagation, offering for sale, selling, exporting, importing or stocking for any of those purposes, the qualifying variety. The term of protection is 30 years from the date of grant (for potatoes, trees and vines); or 25 years from the date of grant (all other cases). Protection is available for the UK from the UK Plant Variety Rights Office.
Each (EU-wide) Community plant variety right that existed on the register maintained under Council Regulation 2100/94 on 31 December 2021 is being treated in the UK, for the remainder of its term, as if it were a UK plant variety right. Applicants for a Community right that remained unresolved on 31 December 2020 have until 30 June 2021 to make an application to the UK Plant Variety Rights Office in respect of the same variety, maintaining the same application and priority dates as the EU application.
Recent notable patent case law
Patent infringement – Actavis v. Eli Lilly
In a landmark judgment, Actavis v. Eli Lilly,3 the UK Supreme Court swept aside decades of jurisprudence on the assessment of the tort of patent infringement and introduced a doctrine of equivalents in the UK. The case law since has developed the law in this area and has considered the impact of the new approach on other areas of patent law. Notable judgments include Icescape v. Ice-World,4 Regen v. Estar,5 Evalve v. Edwards6 and Akebia v. Fibrogen7.
Standards essential patents and fair, reasonable and non-discriminatory terms
In Unwired Planet v. Huawei,8 the High Court of England and Wales (Patents Court), having determined that patents owned by Unwired Planet were valid, infringed by Huawei and essential to the 3GPP telecommunications standard, determined licence terms that were 'fair, reasonable and non-discriminatory' (FRAND) between the parties. Although only selected UK patents were found valid and infringed, the FRAND licence determined was a global portfolio licence. This was the first time a global portfolio licence had been determined by a court worldwide. Since Huawei had not been prepared to take a licence on terms found by the court to be FRAND, the High Court also developed new injunctive relief: a FRAND injunction, which would be discharged if Huawei entered into the FRAND licence, and with the parties having liberty to apply to the court regarding the injunction at the end of the licence term (in 2020, while the patents found valid, infringed and essential would be in force until 2028). In 2020, the Supreme Court confirmed the approach taken by the High Court.9
Dosage regimen patents
Patents to dosing regimens have faced challenges in the UK courts. In Actavis v. ICOS,10 in three separate judgments, the Court of Appeal made clear the challenges facing patent claims in which the purported invention resides in a dosing regimen. If, by pursuing the clinical trials necessary for marketing authorisation, the claimed dosing regimen would be reached, the fact that at the outset the regimen eventually settled upon would have seemed surprising will not confer inventiveness. The Court of Appeal's approach was confirmed by the Supreme Court in 2019, a judgment that captures the jurisprudence on obviousness.11
Declaratory relief – Arrow declarations
In Fujifilm v. AbbVie,12 the High Court of England and Wales (Patents Court) awarded, in a landmark judgment, a novel type of declaratory relief, known as an Arrow declaration,13 to clear the route to market for a product facing a raft of pending patent applications incapable of challenge in the UK courts. The court concluded that the administration of FKB's proposed products in the treatment of a particular medical indication by a particular dosing regimen would have been obvious at a particular date, and that the court's declaration of this would serve a useful purpose in view of AbbVie's patent filing strategy and public statements. Declaratory relief of a similar nature was awarded for the second time in Glaxo v. Vectura,14 in December 2018.
Plausibility, obviousness and insufficiency
In 2020, in Regeneron v. Kymab,15 the Supreme Court looked afresh at the test for insufficiency. After considering a number of prominent EPO and UK authorities, Lord Briggs refined the applicable test in the context of the claim in issue in that case (to a range of products). Subsequently, in Illumina v. MGI,16 Birss J explained the operation of the test in more generic terminology and further clarified aspects of it. For claim language that encompasses a range that is relevant to the essence of the invention, enablement across the scope of the claimed range is required.
The UK's Patents Act 1977 was enacted in the course of the UK's accession to the European Patent Convention (EPC). Certain sections of the Patents Act are expressed as framed so as to have, as nearly as practicable, the same effects in the United Kingdom as the corresponding provisions of the EPC, the Community Patent Convention and the PCT.
Pursuant to the EPC, European patents shall be granted for any inventions, in all fields of technology, provided:
- they are new, involve an inventive step and are susceptible of industrial application;
- patentability is not expressly excluded; and
- the application meets certain other requirements, namely, unity of invention, disclosure of invention and clear and concise claims supported by the description.
An invention shall be considered to be new ('novel') if it does not form part of the state of the art. The state of the art comprises everything made available to the public anywhere in the world by means of a written or oral description, by use, or in any other way before the date of filing of the European patent application (or the date of priority if such is claimed). Additionally, the content of earlier filed (but not yet published) patent applications (UK or EPC designating the United Kingdom) is considered as comprised in the state of the art. A patent (or application) lacks novelty (is 'anticipated') if the prior art provides an 'enabling disclosure' of what is claimed.17
Involves an inventive step
An invention shall be taken to involve an inventive step if it is not obvious to a person skilled in the art, having regard to any matter that forms part of the state of the art (earlier filed but not yet published patent applications are not included in the state of the art for this purpose).18 The following statement of Kitchin J in Generics v. Lundbeck19 was approved by the House of Lords (the predecessor to the UK Supreme Court) in Conor v. Angiotech,20 and by the Supreme Court in Actavis v. ICOS:21
The question of obviousness must be considered on the facts of each case. The court must consider the weight to be attached to any particular factor in the light of all the relevant circumstances. These may include such matters as the motive to find a solution to the problem the patent addresses, the number and extent of the possible avenues of research, the effort involved in pursuing them and the expectation of success.
In Actavis v. ICOS, the Supreme Court (Lord Hodge) captured and confirmed the key jurisprudence in respect of obviousness, including the approach to the assessment of obviousness set out in Windsurfing/Pozzoli.22 Lord Hodge said that Kitchin J's list of factors was 'illustrative and not exhaustive' and may include, for example, whether something was obvious to try with a reasonable or fair prospect of success. Lord Hodge made clear the importance of avoiding hindsight when addressing the statutory question.
An invention shall be taken to be capable of industrial application if it can be made or used in any kind of industry, including agriculture. The notion of industry is construed broadly.23
Exclusion from patentability
The following are declared not to be inventions (and are therefore not patentable):
- discoveries, scientific theories and mathematical methods;
- literary, dramatic, musical or artistic works or any other aesthetic creation; and
- schemes, rules or methods for performing a mental act, playing a game or doing business, or a program for a computer; and the presentation of information.
However, this only prevents patentability to the extent that the patent or application relates to the thing as such.
Patents also shall not be granted for the following:
- inventions the commercial exploitation of which would be contrary to public policy or morality;
- plant or animal varieties or essentially biological processes for the production of plants or animals (not including microbiological processes or the products thereof);
- methods for treatment of the human or animal body by surgery or therapy and diagnostic methods practised on the human or animal body (although this does not apply to products, in particular substances or compositions, for use in any of these methods);
- the human body, at various stages of its formation and development, and the simple discovery of one of its elements, including the sequence or partial sequence of a gene;
- processes for modifying the germline genetic identity of human beings;
- uses of human embryos for industrial or commercial purposes; and
- processes for modifying the genetic identity of animals, that are likely to cause them suffering without any substantial medical benefit to man or animal, and also animals resulting from such processes.
Other requirements for grant
A patent application must relate to one invention only or to a group of inventions so linked as to form a single general inventive concept.
The specification must disclose the invention clearly and completely enough for it to be performed by a person skilled in the art.
The claim or claims must define the matter for which the applicant seeks protection, be clear and concise, and be supported by the description.
ii Subject-specific case law
Methods of medical treatment and diagnostic methods
Methods of medical treatment and diagnostic methods are excluded from patentability. However, products, including substances, for use in such methods may be patented, including where the invention (and novelty) resides in the new use of a known product: purpose-limited product claims are permissible (i.e., claims in the form 'X for use in the treatment of Y').
Previously, for inventions residing in a second or subsequent use of a known medicament, claims in 'Swiss form' were permissible (i.e., 'use of X in the manufacture of a medicament for the treatment of Y') but following the decision of the EPO's Enlarged Board of Appeal in G2/08 (Abbott Respiratory/dosage regimes)24 applicants may no longer claim second medical use inventions in the Swiss format. The changes introduced in 2010 made no change to practice regarding existing Swiss form claims already in force.
Patents with claims in Swiss form do not prevent (under the double patenting exclusion) the grant of a related application with claims in purpose-limited product format because the subject matter of such claims is considered different.25 For the same reason, it is not possible to amend granted Swiss form patent claims to purpose-limited product format.
Plants and animals and essentially biological processes for their production
Inventions that concern plants or animals may be patentable if the invention is not confined to a particular plant or animal variety but can be granted if varieties may fall within the scope of the claims.26
Whether or not a (non-microbiological) process for the production of animals or plants is 'essentially biological' and therefore excluded from patentability has to be judged on the basis of the essence of the invention taking account the totality of the human intervention and its impact on the result achieved.27
Other biotechnological inventions
Finding biological material, such as a microorganism, occurring freely in nature is discovery, not an invention, and so is not patentable as such. However, biological material that is isolated from its natural environment or produced by means of a technical process may be the subject of an invention, even if the material occurred previously in nature. Where the invention resides in a whole or partial gene sequence, the industrial application of the sequence must be disclosed in the application as filed.28
In Oliver Brüstle v. Greenpeace,29 the CJEU ruled that a 'human embryo was: any human ovum after fertilisation; any non-fertilised human ovum into which the cell nucleus from a mature human cell has been transplanted; and any non-fertilised human ovum whose division and further development have been stimulated by parthenogenesis'. The exclusion covered the use of human embryos for purposes of scientific research; only use for therapeutic or diagnostic purposes that are applied to the human embryo and are useful to it being patentable. Further, patentability was excluded where the subject matter involved the prior destruction of human embryos or their use as base material.
Subsequently, in International Stem Cell Corporation v. Comptroller General of Patents, Designs and Trade Marks,30 the CJEU ruled that an unfertilised human ovum whose division and further development have been stimulated by parthenogenesis does not constitute a 'human embryo', within the meaning of that provision, if, in the light of current scientific knowledge, it does not, in itself, have the inherent capacity of developing into a human being.
A claim to a product containing or consisting of biological information is construed as extending to all material (except excluded material) in which the product is incorporated and in which the genetic information is contained and performs its function.
A claimed invention involving the use of a computer program may be patentable if it involves a technical contribution.31 The Court of Appeal has emphasised the need for each case to be considered by reference to its particular facts,32 and that a solution to a technical problem can be a relevant technical effect and would not be excluded, as technical character is provided from the problem itself.33 In HTC v. Apple, Kitchin LJ noted the need to consider what the computer program in issue actually contributes.
Enforcement of rights
This section provides a brief guide to how intellectual property rights may be asserted, focusing on patents. In the courts of the United Kingdom, issues of infringement and validity are almost always addressed together.
i Possible venues for enforcement
The United Kingdom has three jurisdictions: England and Wales, Scotland, and Northern Ireland. Each has its own legal system and procedures, the UK Supreme Court being the final court of appeal for all in civil cases. In the field of IP, legislated substantive law applies throughout the UK. The overwhelming majority of IP litigation in the UK takes place in the courts of England and Wales.
In England and Wales, the Intellectual Property Enterprise Court (IPEC) is the correct forum for less complex and smaller value IP claims. In the IPEC, damages are capped at £500,000 (per claim number),34 and recoverable costs are capped at £50,000 for the liability stage and £25,000 for the quantum stage. The IPEC procedure is distinct from that which is conventional under English legal practice; for example, with less separation of argument and evidence. For more complex and valuable IP claims, the Patents Court hears claims concerning patents, SPCs, registered designs, plant varieties and semiconductor topography rights; other types of intellectual property dispute are heard in the High Court Chancery Division's General IP List. All of the courts and lists noted in this paragraph sit within the Business and Property Courts of the High Court of England and Wales.
Patent actions are heard in Scotland by the Court of Session, and in Northern Ireland by its High Court.
The UK IPO has jurisdiction to adjudicate upon some intellectual property issues and may issue opinions on the infringement and validity of patents.
As matters presently stand, the UK will not be involved in the new Unified Patents Court and Unitary Patent system, should it become operational.
ii Requirements for jurisdiction and venue
The UK courts described in Section IV.i above have exclusive jurisdiction in respect of actions for revocation of intellectual property rights registered in the UK (including UK patents, UK designations of European patents, UK trademarks and UK registered designs), but not actions for revocation, or claims otherwise challenging the validity, of other countries' registrations or designations of European patents.
In respect of issues of infringement, jurisdiction may be founded by domicile or by the place where the harmful event occurred or may occur. Where a claim of infringement is made, the defendant may challenge the validity of the relevant right or rights. UK rights extracted from EU rights existing on 31 December 2021 are enforceable in the UK as national rights.
It is possible for a party to seek a declaration of non-infringement from the court, and this may, in some circumstances, extend to non-UK rights. For example, in Actavis v. Eli Lilly,35 Lilly was found to have conceded jurisdiction, in the course of pre-action correspondence, such that the Patents Court had jurisdiction to award a declaration of non-infringement covering designations of a European patent for several other EPC states. In Eli Lilly v. Genentech,36 the Civil Procedure Rules enabled Lilly to commence proceedings for declarations of non-infringement in respect of a UK designation of a European patent and several non-UK designations of the same patent by service on Genentech, Inc, in the United States. (Lilly also challenged the validity of the UK designation of Genentech's European patent, but not the non-UK designations.) In contrast, in Parainan Pearl Shipping v. Kristian Gerhard Jebsen Skipsrederei,37 Parainan's attempt to commence proceedings against the Norwegian owners of several designations of a European patent for relief including declarations of non-infringement, by the employment of a different mechanism in the Civil Procedure Rules, was unsuccessful. This remains a developing area of the law.
iii Obtaining relevant evidence of infringement and discovery
In a civil claim, it is for the claimant to prove his or her case on the balance of probabilities. At the outset, the facts relied upon in support of the claim (or counterclaim) must provide reasonable grounds for making the claim. Without such grounds the claim may be struck out.
Discovery may be available in the course of litigation. (In unusual circumstances it may be available from a non-party or before litigation is commenced, or both.) A party discloses a document by stating that it exists. The party to whom disclosure is made is then entitled to inspect the document, except where it is no longer in the disclosing party's control or where the disclosing party has a right or duty to withhold inspection of it, for example because it is privileged. Confidentiality does not confer a right to withhold inspection, but the court may order disclosure of confidential documents on appropriate terms, for example, to specified members of a 'confidentiality club', and it is not uncommon that this happens in intellectual property disputes38. The existence of a confidentiality club will reduce the likelihood that redaction of documents will be allowed.39
Increasingly, disclosure requirements are tailored on a case-by-case basis. In patent cases, provision of a product or process description by the alleged infringer usually enables standard disclosure to be dispensed with in relation to infringement. In relation to validity, disclosure is usually constrained to a term two years either side of the earliest claimed priority date. In the context of quantum (even before litigation commences) licence agreements concluded by one party (or prospective party) with a third party may be disclosable.40 In every case, it is the court that orders the scope of disclosure, and there is no longer a prima facie rule of standard disclosure.41
Fact evidence is usually submitted to the court in the form of written witness statements, which stand as the witness's evidence in chief. A witness's oral testimony is usually limited to cross-examination and re-examination.
The court assesses the teachings and scope of a patent through the eyes of 'the person skilled in the art'. He or she is the hypothetical person to whom the patent is addressed. The skilled person has imputed to him or her the 'common general knowledge', which is, essentially, standard technical background of the art in question.
Expert evidence is generally required to assist the court in adopting the mantle of the person skilled in the art and to determine the scope of the common general knowledge. Parties tend to retain their own expert, although they may be ordered to agree upon a single expert. Expert witnesses owe a duty to the court, which overrides any duty they have to the party and its team of legal advisers, and bear a personal responsibility for their evidence.42 Expert evidence in chief is provided by way of a report, with opportunity to respond in writing to the report submitted by the other expert. Oral testimony is usually limited to cross-examination and re-examination. Cross-examination is considered by the courts to be an important tool by which expert evidence that is submitted to the court may be scrutinised.43 'Hot-tubbing' (the hearing of evidence from the experts of opposing parties concurrently) may be employed.44
In appropriate cases, experiments may be ordered upon the application of a party that wishes to establish a fact by experimental proof.
Methods for obtaining evidence and information
In addition to the mechanisms discussed above, the Civil Procedure Rules provide a number of additional procedural mechanisms for obtaining further information in the course of litigation. The mechanisms available and employed may be relevant to any award or order subsequently made by the court.45 In appropriate circumstances, the court will award a search and seizure order or an order that a person provide information on others involved in the supply of infringing goods, or both.
iv Trial decision-maker
For the intellectual property rights listed above, civil claims are heard and determined by a judge.
In the courts of England and Wales at all instances, IP claims are usually heard by (or by panels including) specialist judges.
v Structure of the trial
Following the exchange of statements of case, the setting of case management directions and the conclusion of the steps ordered (for example, discovery and written evidence stages), the trial of the claim will be heard by the judge. At the hearing, the usual structure is that the claimant makes an opening statement, the parties cross-examine the witnesses relied upon by each other, and then each party makes a closing statement.
At the end of the hearing, the judge will either deliver his or her judgment or, more usually, he or she will retire to consider and write the judgment and reconvene the trial at a later date, when the judgment is handed down. An award of injunctive relief may be made with the substantive judgment or shortly afterwards following discussion between the parties or further consideration by the court.
Almost always, the trial is 'split', which means that the substantive legal claim is decided (as described above) and only where a claim is successful will the monetary relief claimed be considered. This consideration takes the form of a second stage to the litigation, involving further directions and a further trial on a damages inquiry or an account of profits, which may run in parallel with any appeal of the main judgment.
It is a direct infringement of a patent to do any of the following in the UK without the consent of the patent proprietor:46
- where the invention is a product, make, dispose of, offer to dispose of, use or import the product or keep it whether for disposal or otherwise;
- where the invention is a process, use the process or offer it for use in the United Kingdom with the knowledge, or when it is obvious to a reasonable person in the circumstances, that its use there without the consent of the proprietor would be an infringement of the patent; and
- where the invention is a process, dispose of, offer to dispose of, use or import any product obtained directly by means of that process or keep any such product whether for disposal or otherwise.
In Actavis v. Eli Lilly,47 the UK Supreme Court ruled that the assessment of infringement is a two-stage process asking first whether the variant infringes any of the claims of the patent as a matter of normal interpretation and, if not, then second, whether the variant nonetheless infringes because it varies from the invention in a way or ways that is or are immaterial. The Supreme Court also provided guidance on when an equivalent might infringe, that has since been interpreted by the Court of Appeal in Icescape v. Ice-World48 and developed by judges in the Patents Court49.
It is a contributory infringement of a patent to supply or offer 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 order to infringe in this way the alleged infringer must know, or it must be obvious to a reasonable person in the circumstances, that the means he or she has supplied are suitable for putting, and are intended to put, the invention into effect in the United Kingdom.50
Further, a defendant will be liable as a joint tortfeasor if he or she has assisted in the commission of the tort by another person pursuant to a common design with that person to do an act that is, or turns out to be, tortious.51
Statutory exceptions to infringement
An act that would constitute an infringement of the patent will not do so if:
- it is done privately and for purposes that are not commercial;
- it is done for experimental purposes relating to the subject matter of the invention;
- it consists of the preparation in a pharmacy of a medicine for an individual in accordance with a prescription;
- it consists of use on a ship or an aircraft temporarily in the territorial sea or air space of the UK; or
- it consists of a specified use by a farmer of the product of his or her harvest or an animal purchased with the consent of the patent proprietor.
An alleged infringer may counterclaim that the patent is invalid and seek an order for revocation of it. The grounds for revocation are:
- the invention is not a patentable invention;
- the specification of the patent does not disclose the invention clearly and completely enough for it to be performed by a person skilled in the art;
- the matter disclosed in the specification of the patent extends beyond that disclosed in the relevant application as filed; and
- the protection conferred by the patent has been extended by an amendment that should not have been allowed.
A person found to be entitled to be granted the patent may additionally seek its revocation on the basis that it was granted to someone who was not entitled to it, provided the application is filed within the legislated time limits.
An act is only capable of infringing a patent if it is done without the consent of the proprietor. Consent, or licence, may be express or implied and may form the basis for a defence. In some (unusual) situations, licences of right or compulsory licences are available, or the Crown use defence may be invoked.
Where the intellectual property right owner has already consented to the marketing of the goods placed on the market in the UK or the European Economic Area (EEA), the intellectual property rights in those goods will continue to be considered exhausted in the UK. Beyond that, the extent to which the UK will legislate in respect of, and how the courts in the UK will in due course rule as to the exhaustion regime applicable in the UK, remains to be seen.
viii Time to first-instance decision
The time to trial has tended to depend upon the conduct of the parties, the complexity of the case and the diary of the court. The Patents Court intends to list trials within 12 months of commencement of the action, and parties are expected to start to consider potential trial dates as soon as reasonably practicable, which may be very soon after the proceedings are commenced.52 Where considered appropriate by the court, a trial can take place considerably sooner than this, for example, in Napp v. Dr Reddy's53 the trial hearing took place approximately four months after the litigation commenced, the full substantive judgment was handed down shortly afterwards and the second instance decision was given within six months of the litigation commencing.
A 'shorter trial scheme' (STS) is available in the Chancery Division of the High Court, including the Patents Court. For suitable cases, the STS packages a more streamlined procedure than is usually adopted with the intent of trial being listed within eight months of the case management conference and judgment being returned within six weeks.
Interim relief can be obtained in a matter of hours in urgent cases, although more usually interim hearings take place within a few days or weeks of the application being filed and served.
If a patent is found to be infringed, or where a litigant's claim is otherwise successful, a range of remedies may be available. Available remedies may include the following.
Following a finding of infringement (and validity), the court will usually award a 'final' injunction, provided this is proportionate54. In more complex factual situations, for example involving the public interest in access to treatments, second medical use patents or standard essential patents, injunctive relief tends to be specifically tailored.
Injunctive relief may be available at an interim stage where the right owner shows an arguable case of infringement and that a later monetary remedy would not adequately compensate the patentee for the harm caused by the ongoing (alleged) infringement. The court considers the 'balance of harm' likely to be suffered by the respective parties before deciding whether to award interim relief and if so the terms of the order. For non-final injunctions, the applicant for the relief is usually required to provide a cross-undertaking as to damages.
Injunctions are usually prohibitory in nature although mandatory injunctions are possible.
The High Court of England and Wales has developed a body of blocking order jurisprudence. This new type of relief has been granted to owners of intellectual property rights to restrain access to infringing platforms – for example, websites predominantly used to share infringing copyright content,55 websites advertising and selling trademark-infringing products56 and ISP addresses directed at inhibiting unauthorised live streaming of broadcast events.57
The court can order that infringing articles be delivered up to a party. This is commonly to facilitate destruction or prevent resale.
Damages or an account of profits
Damages compensate for loss and are intended to restore the right owner to the position they would have been in had no wrong been done to them. The award may be calculated according to the damage caused to the right owner's profits by the infringement or in accordance with a 'reasonable royalty'. In an account of profits, the profits made by the infringer from the infringement are awarded to the patentee. The court may order the infringer to give some financial disclosure, so that the patentee may make an informed decision as to which remedy to pursue (not both). Neither remedy will be available against an 'innocent' infringer of a patent, although few infringers are found to be innocent.
The court can order declarations. Declarations can be, for example: of validity or contested validity, which can impact the award of legal costs in future challenges; of infringement or non-infringement; of essentiality (or non-essentiality) to a technical standard;58 and that aspects of a party's product or process were obvious at a relevant date, which can create a squeeze between infringement and validity and may be of assistance to parties in 'clearing the way' in some circumstances.59
Orders for dissemination and publication
The courts can also order a party to publicise the result of a case at its own expense.
Generally, the unsuccessful party to litigation is ordered to pay the costs of the successful party. However, in deciding what order to make about costs, the court will have regard to all the circumstances, including the conduct of all the parties, whether a party has succeeded on part of its case even if not wholly successful, and any admissible offer to settle made by a party that is drawn to the court's attention.
Where it falls to the court to assess the amount of payable costs, the usual basis for assessment is the 'standard' basis, pursuant to which the court will only allow costs that are considered to be proportionate to the matters in issue and to have been reasonably incurred. This tends to lead to 60–70 per cent recovery by the compensated party of its legal costs. However, cases in the IPEC are subject to capped costs recovery (as noted above), and in the High Court, the court's budgeting rules can lead to costs that are not approved by the court in the context of the costs management regime being considered disproportionate. Further, the Civil Procedure Rules provide, in Part 36, a mechanism intended to encourage settlement of civil disputes by imposing costs consequences where a compliant offer is not bettered, and where applicable this can impact costs recovery in any particular case.
x Appellate review
Decisions of the Comptroller General of Patents may be appealed to the Patents Court, and decisions of the Patents Court and the IPEC may be appealed to the Court of Appeal. Decisions of the Court of Appeal relating to important issues of legal principle may be appealed to the Supreme Court.
Experienced specialist patents judges include: in the Patents Court, Meade J and Mellor J; in the IPEC, HHJ Hacon; in the Court of Appeal, Arnold LJ and Birss LJ; and in the Supreme Court, Lord Kitchin.
In order to appeal, the party wishing to do so needs permission from the court that has issued the decision in question, or from the court to which it wishes to appeal. Permission is granted if the court considers that the appeal has a real prospect of success or if there is some other compelling reason why it should be heard. Generally, only errors of law may be appealed. The Supreme Court has instructed appellate courts not to interfere with findings of fact unless compelled to do so. Generally, new evidence is not admissible at the appeal stage.
xi Alternatives to litigation
Alternative dispute resolution (ADR) methods include arbitration and mediation. The Arbitration Act 1996 governs the law relating to arbitration with its seat in England and Wales or Northern Ireland. ADR can enable flexibility in procedure and privacy.
Trends and outlook
Development is expected in the regime governing exhaustion of intellectual property rights in the UK. It is possible that the UK will move to an international exhaustion regime, such as provided for (for the US) by the US Supreme Court's 2017 judgment in Impression Products v. Lexmark60, and more recently (for Australia) by the High Court of Australia in Calidad v. Seiko Epson61.
1 Gordon Harris is a partner and Andrew Maggs and Ailsa Carter are principal associates at Gowling WLG.
2 Reckitt & Colman Products v. Borden  UKHL 12; Starbucks v. British Sky Broadcasting  UKSC 31.
3  UKSC 46.
4  EWCA Civ 2219.
5  EWHC 63 (Pat).
6  EWHC 514 (Pat).
7  EWHC 866 (Pat).
8  EWHC 2988;  EWHC 1304.
9  UKSC 37
10  EWCA Civ 1671.
11 Actavis v. ICOS  UKSC 15.
12 Fujifilm Kyowa Kirin Biologics Company v. AbbVie Biotechnology  EWHC 395 (Pat).
13 Arrow Generics Ltd v. Merck & Co Inc  EWHC 1900 (Pat).
14  EWHC 3414 (Pat).
15  UKSC 27
16  EWHC 57 (Pat)
17 Synthon BV v. SmithKline Beecham plc  UKHL 59.
18 Section 3 of the Patents Act 1977.
19  RPC 32.
20  UKHL 49,  RPC 28.
21  UKSC 15.
22 Windsurfing International Inc v. Tabur Marine (Great Britain) Ltd  RPC 59; Pozzoli SPA v. BDMO SA  EWCA Civ 588 at .
23 Eli Lilly v. Human Genome Sciences  EWHC 1903 (Pat).
24 G2/08  10 OJEPO 456 and UKIPO Practice Notice 26 May 2010.
25 T 1780/12.
26 G 1/98, G 2/12 and G 2/13.
27 UKIPO's Manual of Patent Practice, 76A.03.
28 UKIPO's Manual of Patent Practice, 76A.06, G 2/07, G 1/98.
29  EUECJ C-34/10.
30  EUECJ C-364/13.
31 UKIPO's Manual of Patent Practice, 1.35–1.36.
32 Symbian Ltd's Application  RPC 1.
33 HTC v. Apple  EWCA Civ 451.
34 OOO Abbot v. Design & Display  EWHC 3234.
35  EWCA Civ 517;  EWHC 1511 (Pat).
36  EWHC 3104 (Pat).
37  EWHC 2570 (Pat).
38 OnePlus v. Mitsubishi  EWCA Civ 1562
39 Aqua v. Fiserv  EWHC 1627 (Ch).
40 Big Bus Company v. Ticketogo  EWHC 1094 (Pat); Smart Reamer Drilling Systems v. NOV Downhole Eurasia  EWHC 1265 (IPEC)
41 Positec v. Husqvarna  EWHC 1061 (Pat); and from 1 January 2019 the disclosure pilot for the Business and Property Courts.
42 Synthon v. Teva  EWHC 1395 (Pat).
43 Accord v. Medac  EWHC 24 (Pat).
44 Unwired Planet v. Huawei  EWHC 711 (Pat);  EWHC 2988 (Pat).
45 Magnesium Elektron v. Neo Chemicals  EWHC 2957 (Pat).
46 Section 60(1) of the Patents Act 1977.
47  UKSC 46.
48  EWCA Civ 2219.
49 Evalve v. Edwards  EWHC 514 (Pat); Akebia v. Fibrogen  EWHC 866 (Pat)
50 Section 60(2) of the Patents Act 1977.
51 Sea Shepherd v. Fish & Fish  UKSC 10.
52 Celltrion v. Biogen  EWHC 188 (Pat).
53 Napp v. Dr Reddy's & Sandoz  EWCA Civ 1053;  EWHC 1517 (Pat).
54 Evalve v. Edwards  EWHC 513 (Pat)
55 Twentieth Century Fox v. BT  EWHC 1981 (Ch); Capitol Records v. BT  EWHC 409 (Ch).
56 Cartier v. BSkyB  EWCA Civ 658.
57 The Football Association Premier League v. BT  EWHC 480 (Ch).
58 Nokia v. Interdigital  EWHC 3077 (Pat).
59 Fujifilm v. Abbvie  EWHC 395 (Pat).
60 Impression Products, Inc v. Lexmark International, Inc, 581 US (2017).
61 Calidad Pty Ltd v. Seiko Epson Corporation  HCA 41