A Guide to UK Patent Litigation. Myles Jelf, Partner, Bristows LLP

Transcription

1 A Guide t UK Patent Litigatin Myles Jelf, Partner, Bristws LLP

2 Timeline f a UK patent actin Issue prceedings Trial Claimant t apply fr directins/ CMC Reply and Defence t CC Case Management Cnference Ntices t Admit Facts Skeletn arguments Judgment Appeals Defence, cunterclaim and Grunds f Invalidity Experiments Service f Acknwledgement f service Disclsure 9-12 mnths Patents Curt 6-9 mnths - IPEC File expert reprts Up t 2 mnths

3 The Case Management Cnference Purpse f a CMC: 1) Allw the parties t narrw the issues in dispute 2) Allw the Curt t actively manage the case The parties will have the pprtunity t: Explain the psitin reached in the litigatin; Discuss cmpliance with previus directins; Prvide a csts estimate r budget; Discuss the suitability f the case fr settlement.

4 UK disclsure rules Disclsable dcuments (including electrnic): Dcuments n which a party will reply fr their case; Dcument which adversely affect r supprt anther party s case; and Where the issue f cmmercial success arises, a schedule in accrdance with the requirements fr their preparatin. Each party prvides standard disclsure unless the Curt rders therwise. Standard disclsure requires a reasnable search fr relevant dcuments. Standard disclsure in patent cases nw quite rare thugh Curt increasingly skeptical abut value and keen t keep t a minimum Fr patent litigatin specifically: Where the validity f a patent is challenged nly dcuments created tw years either side f the first claimed pririty date need t be disclsed. Fr infringement a PPD may be prvided.

5 Expert witnesses Used t represent the ntinal skilled persn Overriding duty is t the Curt required t expressly acknwledge duty f independence In High Curt, subject t intensive crss-examinatin; main feature f UK patent trial

6 Experiments 1 2 Serve ntice t admit facts. If an admissin is nt frthcming then: Request Curt s permissin t cnduct experiments. Serve Ntice f Experiments. 3 Other party may request that the experiment is repeated.

7 Crss examinatin Any party can at trial crss-examine any ther party wh gives evidence Examinatin in chief Crssexaminatin Reexaminatin

8 Interim awards preliminary injunctins Rarely granted in patents cases. Guidelines set ut in American Cyanamid v Ethicn [1976]: Is there a serius issue t be tried? Wuld damages be an adequate remedy? Where des the balance f cnvenience lie? Patent validity may nt be examined, unless the ppnent raises a pint cnsidered t be a knck-ut punch see Abbt v Ranbaxy [2004], cncerning a nvelty destrying piece f prir art. Decisins f freign jurisdictins and the EPO may be influential, but are nt binding. Experimental evidence and expert evidence establishing infringement will be necessary.

9 Csts Csts are generally brne by the unsuccessful party (CPR 44.2). Csts are recverable if they are f and incidental t the prceedings. The extent f csts recverable is determined by a separate csts judge. Csts awards are discretinary and the curt has a wide discretin t make a variety f csts rders. Mdern practice is t award csts t victr but discunt fr issues fught and lst Typically, successfully party recvers 60%-70% f actual spend Csts rders must be cmplied with within 14 days f the date f judgment (r the certificate if later).

10 The IPEC and the Patents Curt Usual frum fr first instance prceedings. High value, cmplex matters. Extensive expert and facts evidence. Lnger trial. Patents Curt Litigatin cnducted in accrdance with the CPR. Patents Curt Guide and CPR 63. IPEC Lwer value claims Less cstly and less cmplex alternative. Capped recvery f csts. Cap n damages Limited discvery and evidence Frnt ended submissins Aim is ne day trial Ideal fr SMEs.

11 The IPO Jurisdictin t reslve patent disputes by way f hearing. Publishes decisins. Limited pwers. Requirement fr parties cnsent. Subject t appeal t the High Curt.

12 Appeals prcedure Appeals take place arund 6-12 mnths frm the first instance decisin. Heard by a panel f three judges. Additinal evidence cannt be adduced n appeal, absent exceptinal circumstances. The Appeal Curt will rarely interfere with a finding f fact made by the first instance judge primary purpse is appeal n issues f law Further appeals t the Supreme Curt may be made n an imprtant pint f law (in practice, takes ne r tw patent cases a year)

13 Thank yu fr yur attentin Bristws LLP 100 Victria Embankment Lndn EC4Y 0DH T +44(0) F +44(0) [email protected] [Insert Dc N: ]