Carruthers Law

Patent Infringement Disputes Guide.

April 13, 2012

Carruthers Law can advise you as to Patent infringement disputes. If you have a dispute with someone about a patent, or someone uses your patent without permission, there are various ways to stop them, including:

• Requesting an Intellectual Property Office hearing.
• Mediation allows opposing parties to discuss a dispute with a mediator. The Intellectual Property Office has a service that arbitrates between businesses and individuals involved in intellectual property disputes.
• Applying to the Intellectual Property Office for an impartial opinion on whether a patent is valid or being infringed. This is not binding, but it can help to resolve issues without the necessity of court proceedings.

We can help you with these. Litigation is a last resort.

There are different types of Patent proceedings

• patent infringement proceedings.
• proceedings for revocation of a UK patent.
• actions seeking a declaration of non infringement.
• applications to rectify the register of Patents.
• applications to amend a granted patent.

Is a case suitable for the High court or County Court? Factors that determine this are as follows; 

Size of the parties.

If both sides are small or medium sized companies then the case may well be suitable for the Patents County Court. If one party is a small or medium but the other is a larger then again the case may be suitable for the Patents County Court but other factors ought to be considered such as the value of the claim and its likely complexity.

The nature of the evidence.

Experiments  may be admitted but a case which involves substantial complex experimental evidence will be unsuitable for the County Court.

Conflicting factual evidence.

Cross-examination of witnesses is strictly controlled in the Patents County Court. The court is capable of  handling cases involving disputed factual matters such as allegations of prior use in patents and independent design as a defence to copying; but if the case involves a large number of witnesses it may be unsuitable for the County Court.

Value of the claim.

Putting a value on a claim is a very difficult process,  factors such as possible damages, the value of an injunction and the possible effect on competition in a market if a patent was revoked are taken into account. The likely damages to be awarded in an infringement claim is a factor. There is no limit on damages in the Patents County Court however if the damages are likely to be well in excess of £500,000 then the claim may not be appropriate for the County Court. Generally where the value of sales, in the UK, of products in issue exceeds £1 million per year the case is unlikely to be suitable for the County Court unless the parties agree.

The county court is a quicker and simplified procedure with more limited costs recovery.

The Patents County Court 

• The Claim form is issued and must be served 4 months.
• The defendant has 42 days to respond.
• At a Case management conference (CMC) the court sets the timetable for the rest of the action.
• Directions on disclosure/product descriptions are given at the CMC.
• Experiments. The English courts have very specific rules regarding the use of experimental evidence in patent proceedings.
• The Patents Court has detailed rules setting out the procedure that must be followed if a party seeks to bring evidence of experiments conducted for the purpose of litigation before the court. These rules require a party intending to adduce experimental evidence: to provide the other party with a statement giving details of the experiments to be performed and the facts of which it is said the experiments provide proof; to provide the other party with an opportunity to see the experiments being performed; and to provide disclosure of documents relating to other experiments that have been carried out for the purpose of litigation.
• Exchange of witness evidence and expert reports.
• Trial.
• Judgment.
• An appeal must usually be lodged within 14 days of judgment, but the judge can allow a longer period.
• Costs are usually awarded to the winner but you are unlikely to recover all the costs from your opponent.

Remedies

• A losing party will normally be ordered not to infringe.
• Breach is a contempt of court.
• Losing defendants are usually ordered to to deliver to the claimant or destroy infringing stocks.
• The claimant will then decide as to an inquiry as to profits and an account of profits

Why not read our section on Intellectual property disputes.  For advice as to a Patent Dispute call Carruthers Law today or fill in one of our enquiry forms.