An International Guide to
Patent Case Management for Judges

9.1.1 Evolution of the patent system

9.1.1.1 Characteristics of the system

Patent litigation in the United Kingdom includes the following features:

• Litigation is according to a common law system, with a public trial before a specialist judge, involving oral and written submissions, the cross-examination of witnesses and disclosure of relevant documents, leading to a fully reasoned judgment.
• Litigation follows procedural code that has an overriding objective to do justice at proportionate cost. Case management is conducted by judges from the same pool as would hear the trial. Docketing occurs in some cases. The court aims to bring cases to trial within 12 months of issue if possible.
• The parties are able to call expert witnesses and cross-examine the other party’s expert witnesses.
• Validity and infringement are generally tried together before the same court at the same time. Bifurcation is possible if appropriate but is rare.
• The United Kingdom has a large and experienced body of specialist legal practitioners, mostly with scientific training.
• The trend is toward streamlining cases, having regard to their value and importance, to focus only on that which is necessary and proportionate for their fair disposal.
• There are specific courts and procedures for cases of lower value or those that can be dealt with more speedily – the Intellectual Property Enterprise Court (IPEC) and the Shorter Trials Scheme.
• The courts are able and willing to develop remedies (interim and final) to meet the circumstances of the case.
• The losing party is required to pay a substantial share of the costs (i.e., legal expenses) of the winning party.
• Appeals, with leave, are to the second instance (Court of Appeal) and third instance (Supreme Court). These higher courts also have judges who are experienced in patent cases on the panels. New facts or evidence are not generally admissible on appeal.

9.1.1.2 Sources of law

The principal statutory source of patent law in the United Kingdom, applicable both to U.K. patents granted by the U.K. Intellectual Property Office (UKIPO) and to European patents (UK) granted by the European Patent Office (EPO), is the Patents Act 1977 (“the Act”),¹ though some substantive law is found in other legislative instruments.² The substantive law of supplementary protection certificates is found in the relevant European Union regulations³ as amended by the United Kingdom on its withdrawal from the European Union⁴ and in Section 128B and Schedule 4A of the Act.

The United Kingdom is divided into three jurisdictions: England and Wales, Scotland, and Northern Ireland. Allocation of proceedings between these jurisdictions is governed by Schedule 4 of the Civil Jurisdiction and Judgments Act 1982. The basic rule is that persons domiciled in one part of the United Kingdom shall be sued in the courts of that part.⁵ However, they may instead be sued for patent infringement in the courts of the part of the United Kingdom where the infringement took place.⁶ They may also be sued in the courts of another part of the United Kingdom if they are one of a number of defendants, one of which is domiciled in that other part, and the claims “are so closely connected that it is expedient to hear and determine them together to avoid the risk of irreconcilable judgments resulting from separate proceedings.”⁷ The vast majority of U.K. patents cases take place in England and Wales rather than in Scotland or Northern Ireland, and, accordingly, this chapter is focused on the procedure of the courts of England and Wales.

In England and Wales, the primary source of procedural law is the Civil Procedure Rules (CPR),⁸ which consists of a series of rules of court and associated practice directions governing procedure in the courts in which patent litigation is conducted. Within the CPR, there is a specific rule (Part 63) and associated practice direction (Practice Direction 63) concerned with patent litigation. These address some matters specific to patent litigation and explain how some of the general rules in the CPR are modified in the case of patent litigation. Practice Direction 63 also sets out procedural differences between proceedings in the Patents Court and in IPEC. In addition, the Patents Court Guide⁹ provides guidance as to the conduct of proceedings before the Patents Court, while similar guidance relating to IPEC is provided in the Intellectual Property Enterprise Court Guide (IPEC Guide).¹⁰

Scotland and Northern Ireland have different procedural rules, summarized in Sections 9.3.1.4 and 9.3.1.5, respectively. Certain patents proceedings can be brought before the Comptroller-General of Patents, Designs and Trade Marks (“the Comptroller,” who is the head of the UKIPO) as explained in Section 9.2 below; these proceedings are governed by the Patents Rules 2007.¹¹

The legislative provisions referred to above (both substantive and procedural) have been interpreted in numerous judgments of the first-instance and appeal courts of the United Kingdom.¹² The courts of the United Kingdom operate under a system of stare decisis: first-instance courts are bound by the ratio decidendi (the reasoning necessary to the decision) of the appeal courts. The High Court (which, in England and Wales, includes the Patents Court and IPEC) will only depart from the ratio decidendi of a decision of another High Court judge if convinced that it is wrong. Further, the Court of Appeal¹³ is (save in certain circumstances) bound by the ratio decidendi of its previous decisions, as well as by previous decisions of the Supreme Court (or its predecessor, the House of Lords). The Supreme Court will depart from its previous decisions (or those of the House of Lords) only “if it appears right to do so.”¹⁴

9.1.1.3 The relationship with the European Patent Convention and the European Patent Office

The Act is intended to comply with the United Kingdom’s obligations under the European Patent Convention (EPC). Section 130(7) provides that certain provisions of the Act, including those concerned with patentability, the contents of an application for a patent, infringement, invalidity and the definition of an invention,¹⁵ “are so framed as to have, as nearly as practicable, the same effects in the United Kingdom as the corresponding provisions” of the EPC, the Community Patent Convention and the Patent Cooperation Treaty.

The Supreme Court has held that U.K. courts, “although not bound to do so, should normally follow the jurisprudence of the EPO (especially decisions of its Enlarged Board of Appeal) on the interpretation of [the EPC] in the interests of uniformity, especially where the question is one of principle.”¹⁶ To promote such uniformity, the Court of Appeal has recognized an exception to the general rule that it is bound by the ratio decidendi of its own previous decisions in a case where “it is satisfied that the EPO Boards of Appeal have formed a settled view of European patent law which is inconsistent with that earlier decision.”¹⁷ However, U.K. courts are not bound to follow the settled jurisprudence of the EPO Boards of Appeal: “In the unlikely event that we are convinced that the commodore is steering the convoy towards the rocks we can steer our ship away.”¹⁸

Further, U.K. courts do not regard themselves as being bound by the reasoning in any particular decision of the Boards of Appeal; they may regard that decision as taking the law in an inappropriate direction or as misapplying previous EPO jurisprudence.¹⁹ Moreover, in any particular case, U.K. courts may reach different conclusions to those reached in EPO opposition proceedings on the same patent “because they have different evidence or arguments, or because they assess the same competing arguments and factual or expert evidence differently, or, particularly in a borderline case, because they form different judgments on the same view of the expert and factual evidence.”²⁰

U.K. proceedings concerning the validity or infringement of the U.K. designation of a European patent can proceed in parallel with (though will generally be out of step with) opposition proceedings in the EPO relating to that European patent. If a final decision in EPO opposition proceedings leads to the patent being revoked or amended, that decision will automatically affect the U.K. designation of the patent. Accordingly, the existence of parallel EPO opposition proceedings has the potential to affect the basis on which proceedings in the United Kingdom are being or have been conducted. If an injunction has been granted in the United Kingdom on the basis of claims that are later held to have been invalid, then the injunction will be discharged; if the claims are later narrowed, then the injunction will be correspondingly narrowed. If an assessment of financial relief has been ordered on the basis of infringement of claims that are later revoked or narrowed in EPO opposition proceedings, then the party held to have infringed can rely on the subsequent revocation or amendment as an answer to the claim for financial relief, though it remains doubtful whether a sum paid over can be recovered.²¹

The potential for the final decision in EPO opposition proceedings to affect the U.K. litigation is an argument for staying the U.K. proceedings until the EPO opposition proceedings have concluded. However, in many cases, EPO opposition proceedings take a long time to conclude, and staying U.K. proceedings commenced at a similar time to EPO opposition proceedings may lead to a patent proprietor being denied any remedy, and to the parties being denied any degree of commercial certainty, for many years. U.K. courts therefore approach applications to stay U.K. proceedings pending the final outcome of parallel EPO opposition proceedings by seeking to achieve the balance of justice between the parties having regard to all the relevant circumstances of the particular case, including factors such as:

• whether there is a risk that the patentee might be able to obtain financial compensation that would not be repayable if the patent were to be revoked in the EPO proceedings (a factor that can be mitigated by suitable undertakings to repay);
• whether some commercial certainty would be achieved at a considerably earlier date in the U.K. proceedings than those in the EPO;
• whether the resolution of the national proceedings may promote settlement;
• the length of time that it will take the U.K. proceedings and those in the EPO to reach a conclusion (which affects any prejudice to the parties from delay);
• the public interest in removing the uncertainty surrounding the validity of the patent; and
• the risk of wasted costs of the U.K. proceedings.²²