General
The court action for infringement may be brought in the courts of the country where it is registered. In England and Wales, it is brought in the Patents Court (a part of the Chancery Division) or the Intellectual Property Enterprise Court.
There is a special pre-action protocol applicable in patent matters. There is usually a two-stage trial. The first stage establishes liability and the second deals with remedies.
The parties may agree to refer the question of infringement to the controller of patents. However, the remedies available are more limited.
The entitlement to claim rests with the proprietor. Where there are joint proprietors, each may bring proceedings. An exclusive licensee may bring proceedings as may assignees. The beneficial owner of a patent may bring proceedings such as where an assignment has not been put affected.
As with other intellectual property matters, pre-trial order may issue to procure evidence. It may allow the applicant and his representatives to enter and search premises for specific goods and information. The must be good reason to believe that this is necessary to preserve evidence. order as the subject of a patent practice direction.
A freezing injunction may be available to prevent defendant doing anything to frustrate a future order Evidence would be required that there is a real risk that the judgement will be unsatisfied by reason of the actions of the respondent.
The validity of the patent may be challenged by a counterclaim. The respondent may apply to amend the patent so as to avoid invalidity. Notice is required to the Controller of Patents.
The remedies for infringement of a patent include
- damages
- an injunction
- delivery for the destruction of infringing material
- an account of profits
- a declaration of infringement
Damages
Damages are the standard remedy. Damages are by way of compensation to put the patentee in the position in which he would have been but for the infringement. He may seek to claim for sales which she could have made which the infringer made. The damages are based on the loss which the infringer has suffered. They may be based on general principles of damage
Damages may be based on royalties which would have been payable had the infringer been licensed, so that they are based on the hypothetical loss of a royalty fee. The court assesses the royalty rate after a hypothetical investigation of a notional negotiation between the parties. If the proprietor does not grant licences and works the patent, the loss of profits may be calculated.
The loss may include lost sales. The court may assess
- whether other sales might have been made but for the lost sales
- whether additional interest has been generated by the infringer through its marketing efforts
- the effect of the presence of two players in the market (albeit only one with a valid patent)
- typical profit margins
- whether the infringer deliberately undercut the patent holder.
Exceptionally, exemplary damages might be awarded if the defendant might gain from his infringement.
An account of profits is not commonly used in relation to patents due to uncertainty in calculation.
Orders and Injunctions
Orders may be made for delivery and destruction of infringing items. This includes both the items and equipment tools et cetera which make the infringing products.
An injunction may restrain continued infringement of the patent. It is usually granted as a final order in the trial. An injunction is a matter of court discretion. Damages may be awarded in its place. The injunction will usually last for the remaining duration of the patent.
An injunction may be refused if the proprietor has delayed and caused the infringer to believe he was entitled to continue to act as he did.
Where the patent is shown to be invalid the claimant may be liable if he had reasonable grounds for knowing the patent was invalid.
Wrongly Threatening Action
Where a person makes groundless threat to bring infringement proceedings, the person the subject of the threat, may have in a position to obtain an injunction and damages for loss thereby caused. A declaration may be that the threats are unjustified.
It is a defence to a person making threats that he used best endeavours to identify the relevant person and from the person threatened before they made the treat setting out the endeavours used. It is not a threat to provide information about the patent or to make enquiries for the purpose of discovering by whom the patent has been used by making or importing the product or using the process.
Courts
The European Union unified patent system is underpinned by the unified patent court. It is mandatory for the enforcement of EU unitary patents. There is to be a central division including a court in London. Infringement proceedings are to be brought before the local or regional division of the unified patent Court.
The Patent Court and Intellectual Property Enterprise Court may grant a declaration of noninfringement. The validity of the patent in question may be in issue in the proceedings. They may effectively declare the invalidity of a registered patent.
The person who proposes to make an application must first write to the patent holder setting out particulars of the product and requesting an acknowledgement that the proposed product or process does not infringe. Sufficient information must be given to allow the patent the to assess the position.
Where the patent holder declines or refuses to reply an application may be made for a declaration that the proposed use or course of action is not infringing.
The patent holder is usually the respondent in the proceedings. he may counter claim for infringement.
It is not necessary to show that the proposed action will be done. The declaration may be made on the hypothetical basis that if the act is done, there would be no risk of liability by way of infringement proceedings by the patent holder.
