PA 61 – Proceedings for Infringement of patent

Question 1

What does S61 concern

Answer 1

infringement proceedings

Question 2

What remedies can a patent proprietor request against an alleged infringer

Answer 2

S61(1)
a) an injunction or interdict restraining the defendant from committing the infringing act
b) an order to deliver up or destroy any product that infringes
c) damages (recovered losses to the patentee)
d) an account of profits (i.e. recover benefits from the infringer) and/or
e) a declaration of validity and infringement

Question 3

What type of proceedings are infringement proceedings

Answer 3

S61(1)
CIVIL proceedings

Question 4

Are there any restrictions on remedies which can be requested

Answer 4

S61(2)
requests for damages and accounts of profit are mutually exclusive

Question 4

Who can decide on infringement

Answer 4

The court or the Comptroller
S61(3) The proprietor and infringer may agree to let the Comptroller decide the matter

Question 4

What are classified as proceedings in S61

Answer 4

S61(4)
a) includes courts and Comptroller

Question 5

What is a Comptrollers decision on infringement limited to

Answer 5

S61(3)
If the Comptroller decides then the proprietor can only get damages of a declaration of validity and infringement.

Question 5

who is the defendant in infringement proceedings

Answer 5

S61(4)
c) the alleged infringer, and can include multiple parties

Question 5

What is the patent proprietor known as during infringement proceedings

Answer 5

S61(4)
b) the claimant, pursuer or plaintiff

Question 6

If you agree to go to the Comptroller for infringement, is that where it stays

Answer 6

S61(5)
The comptroller can still pass on to the courts if they think necessary

Question 7

How is relief and damages determined

Answer 7

S61
(6) follows current precedents
(7) provisions differ in different parts of the UK

Question 8

Which courts are infringement proceedings held in

Answer 8

In the country where the patent is being contested

Question 9

How long can you claim damages for infringement

Answer 9

Limitation Act (statues of limitations)
In England and Wales, up to six years ago
In Scotland, up to five years

Question 10

What should you always do when investigating possible infringement

Answer 10

getting more details, clarifying, investigating etc, to establish the facts of the case.

Question 11

What should you consider if your client is the patentee in a potential infringing scenario in identifying potential infringers

Answer 11

• Consider analysing the product/ purchasing as appropriate
• First check under S60(1), then Actavis, then S60(2)
• Check for all criteria of S60(2) if relevant, , for action overseas consider whether UK party might be joint tortfeasor

Question 12

What amical solutions should you consider if your client is the patentee in a potential infringing scenario

Answer 12

• Consider if it is desirable and possible
• suggest analysis of infringing items first
• offer a licence
• offer to sell the relevant product or provide relevant service
• consider cross-license in the event they have refined your invention or developed a complementary invention

Question 13

How can a patentee assert their rights in an invention

Answer 13

• check is patent is in force
• if not in force, accelerate prosecution (consider allowable claims if relevant, and divisionals to broader claims), investigate extensions, reinstatement / restoration etc
• if not published, get early publication ASAP to get S69 rights
• consider sending copy of application / patent to the infringer (to ensure no defence of ignorance, noting risk of observations before grant, or opposition / revocation actions after grant
• consider small claims track in IPEC for under 10K to save costs.

Question 14

What can be done in the UK to accelerate prosecution

Answer 14

• request CSER,
  -accelerate due to potential infringement,
• request early publication

Question 15

What can be done for an EP application to accelerate due to a potential infringement

Answer 15

• use PACE
• request early publication
• pay exam & des fees early, and waive right to confirm to proceed
• prepare translations early, and send to EPO and desired designated states (some states only confer protection once claims are published in their language
• some states allow infringement proceedings based on PUBLISHED APPLICATIONS (i.e. before grant)
• think about effect of UPC

Question 16

What can be done with a PCT application to accelerate due to a potential infringement

Answer 16

• request early publication
• request early entry into national/regional phase

Question 17

When are interim injunctions avaliable

Answer 17

in theory as emergency actions prior to a full trial, a delay in requesting one can undermine a case

Question 18

What conditions must be fulfilled to get an interim injunction

Answer 18

• a serious (non-frivolous) case is to be tried
• the potential harm cannot be adequately compensated for by eventual damages won at trial (damages can be an existing model for calculating damages), i.e. if your exclusive market position will be irreparably damaged by entry of competitor
• there is a balance of convenience
• other relevant details, such as financial standings of parties involved (avoiding possibility of hardship etc)

Question 19

What happens if the conditions for an interim injunction are balanced

Answer 19

The status quo will be maintained - so if a potential infringer has not yet entered the market they might be prevented from doing so etc.

Question 20

What might happen when an interim injunction is granted in case of a wrongful injunction

Answer 20

a financial cross-undertaking may be required to allow for compensation to be paid if necessary (n.b. this can be expensive if you are in the wrong)

Question 21

What should you do if there is a chance the potential infringer could “misplace” evidence or monies

Answer 21

get interim relief in the form of a search order to freeze assets (although only in exceptional cases)

Question 22

What other rights should you consider if your patent is being potentially infringed

Answer 22

any additional potential infringing of design rights, copyrights, trade marks, or any other IP rights - n.b. infringement of these rights can give different relief that patents

Question 23

What should you do to identify parties involved if your client is a potential infringer

Answer 23

identify all the possible infringers and where they stand w.r.t S60(1) and (2)
If indirect infringers check all elements of the test, and consider joint tortfeasor issues if overseas

Question 24

What type of amicable / pragmatic options should you consider if your client is a potential infringer

Answer 24

Take a licence
purchase the product or service
look at possible cross-licencing options, in terms that depend on relative strengths, think about doing so on request your client isn’t sued for infringement

Question 25

What defensive actions should a potential infringer consider

Answer 25

• Check if patent is in force
• Check if client has any third party rights (documentation)
• Check if infringer is a prior user, and for documentation to prove this
• Request a view of an unpublished application under S118(4)
• If sensible request declaration of non-infringement from patentee, or if not from court / Comptroller
• Request an opinion on validity and infringement from the UKIPO
• Offer settlement
• Offer to indemnify commercial clients, if situation threatens business (costly if you loose)

Question 26

Why would an offer to settle be advantageous for an infringer

Answer 26

If a claimant is awarded less than the offered settlement by the courts, they have to pay costs.

If the infringer is in a weak position, and they have no alternative this encourages settlement

Question 27

What offensive actions can a potential infringer take

Answer 27

• Consider prior art search (check if in force)
• File observations if they will affect grant (s21)
• Consider revocation proceedings S72 where there is a relevant ground
• Consider opposition (EPO < 9M post grant)

Question 28

What risk assessments should a potential infringer make

Answer 28

• Consider actual infringement and validity
• Consider what amendments the patentee could make to maintain their patent
• Consider other jurisdictions where client is active, and which might have corresponding patents/applications