PA 63 – Relief for partially valid patent

Question 1

What does s63 concern

Answer 1

relief for infringement of a partially valid patent

Question 2

If a patent is partially valid, how much relief can they get

Answer 2

S63(1)
If validity is contested, and the patent is only partially valid, the court may still grant relief in respect of that part of the patent that is valid and infringed.

Question 3

What will be taken into account for damages awarded for a partially valid patent

Answer 3

S63(2)
When awarding damages the court/ Comptroller will take into account:
a) whether the infringer knew or would reasonable suspect they were infringing
b) whether the patent was framed in good faith and with reasonable skill and knowledge
c) whether the infringement proceedings themselves were brought in good faith

and in addition the awarding of expenses and the date from which damages should be considered to accrue are at the court/ Comptroller’s discretion.

Question 4

What does good faith mean in respect of the bringing of infringement proceedings

Answer 4

did the patent proprietor believe in the validity of the patent themselves

Question 5

What can relief for a partially valid patent be dependent upon

Answer 5

S63(3)
it may be conditional on amending under s75 to recover the partial validity

Question 6

what types of limitation of a patent will allow for relief of a partially valid patent

Answer 6

Either S75 in the UK, or central limitation of an EP(GB) patent, when requested by the proprietor (S63(4))

Question 7

When would EPO central revocation in all jurisdictions not be required

Answer 7

when a national prior right means the patent is only invalid in one jurisdiction. Otherwise the amendment will be required for ALL corresponding EP patents

Question 8

S63 requires the patent to have been drafted in good faith, using skill and knowledge, what evidence is needed of this, what does it allow for, and what should be done to ensure an application is drafted in good faith

Answer 8

• Evidence of good faith drafting can be given by the attorney who drafted the application.
• Good faith allows for broad claims
• It expects timely notification of issues to the patent office, i.e. if you find out there are prior art document, they should be notified when relevant under s27