|Patents Court and Intellectual Property Enterprise Court |
1. What do I do if my Patent is infringed?
The first thing to do is to take some specialist legal advice. Do not take matters into your own hands unless and until you have done so. Intellectual property law differs from other types of law in that sending a letter before claim that would be perfectly acceptable in most circumstances can sometimes be actionable. That is because s.70A (1) of the Patents Act 1977 provides:
"Subject to subsections (2) to (5), a threat of infringement proceedings made by any person is actionable by any person aggrieved by the threat."
The law on groundless threats has recently been reformed. It used to be far more draconian. There are now a number of exceptions and defences that did not exist before. But the provision can still land you in big trouble if you fall foul of it. And one further point! Not every solicitor or barrister in general civil or commercial practice has heard of s.70A (1) so make sure that you go to an IP specialist for advice on how to deal with suspected patent infringement.
2. Where will I find Specialist Advice?
Barristers specializing in intellectual property law are eligible to join the Intellectual Property Bar Association, I am a member of that Association and so are most of my colleagues. There are a lot of barristers who know about IP law who are not members but it is not always easy to identify them.
Many specialist law firms and law firms with expertise in IP law belong to the Intellectual Property Lawyers Association. There are however many law firms with expertise in IP law that do not. Firms with such expertise tend to publish a lot of articles and give lots of talks on the topic.
All Chartered Patent Attorneys will have acquired a thorough knowledge of patent law. Many but not all will also have qualified as "patent attorney litigators" or "patent attorney advocates." Some attorneys' firms have litigation departments. Others have arrangements with specialist law firms some of which practise from the same premises and under the same names. The patent attorneys' professional association is the Chartered Institute of Patent Attorneys ("CIPA").
3. How do I know if my Patent has Been Infringed?
Patents are granted for inventions that may be products or processes.
S.60 (1) (a) of the Patents Act 1977 says that where the invention is a product a person infringes the patent if he or she makes, disposes of, offers to dispose of, uses or imports the product or keeps it whether for disposal or otherwise in the UK without the consent of the owner of the patent.
Where the invention is a process, s.60 (1) (b) says that a person infringes the patent if he or she uses the process or offers the process for use in the UK when he or she knows, or it would be obvious to a reasonable person in the circumstances, that its use there without the consent of the owner would be an infringement of the patent.
Where the invention is a process s.60 (1) (c) further provides that a person infringes a patent if he or she disposes of, offers to dispose of, uses or imports any product obtained directly by means of that process or keeps any such product whether for disposal or otherwise.
4. Yes but how do I identify that "Product" or"Process"?
When you or your patent attorney applied for a patent for your invention you will have filed a document called a "specification". The specification will have contained a description of the invention and several numbered paragraphs known as "the claims"
S.125 (1) of the Act provides:"For the purposes of this Act an invention for a patent for which an application has been made or for which a patent has been granted shall, unless the context otherwise requires, be taken to be that specified in a claim of the specification of the application or patent, as the case may be, as interpreted by the description and any drawings contained in that specification, and the extent of the protection conferred by a patent or application for a patent shall be determined accordingly."
5. So How does it work exactly?
“1A An apparatus for automatically controlling a ventilator comprising:
1B first means for processing data indicative of at least a measured oxygen level of a patient, and for providing output data indicative of:
1C required concentration of oxygen in inspiratory gas of the patient (FiO2) and positive end-expiratory pressure (PEEP) for a next breath of the patient;
1D wherein FiO2 is determined to reduce the difference between the measured oxygen level of the patient and a desired value;
1E wherein PEEP is determined to keep a ratio of PEEP/FiO2 within a prescribed range and, while keeping the ratio within the prescribed range, to keep the measured oxygen level of the patient above a predefined value; and
1F second means, operatively coupled to the first means, for providing control signals, based on the output data provided by the first means, to the ventilator;
1G wherein the control signals provided to the ventilator automatically control PEEP, and FiO2, for a next breath of the patient.”
(see para  of Tehrani v Hamilton Bonaduz AG and others  EWHC 3457 (IPEC) (22 Dec 2021).As the exclusive right to exploit an invention for up to 20 years is a reward for teaching the world how to make or use it, the court reads the claim in the way that it would be understood by a "person skilled in the art". He or she is the person to whom the specification is addressed. He or she is often referred to as"the skilled addressee". Any special terminology or conventions that might be used by such skilled addressee are applied by the court. Usually, the court requires experts in the technology to explain the terminology or conventions.
6. So Everything hangs on the Interpretation of the Claim?
8. Phew! So how often are Patents found to be invalid?
The Intellectual Property Enterprise Court ("IPEC") entertains claims that are worth £500,000 or less that can be tried in no more than 2 days. Cases are very tightly managed in that court. The costs that can be recovered by a successful party from the unsuccessful one are limited to £50,000 on the determination of liability and £25,000 for the determination of the damages or other financial remedy that is due to the successful party.
The Patents Court hears all other patent cases. There are no time limits or limits on recoverable costs in cases before the Patents Court. The judges of that court do their best to control costs but expert witnesses and specialist counsel and solicitors are expensive.
The Patents Court and IPEC are headquartered in the Rolls Building off Fetter Lane in London. The judges of both courts have said that they will travel outside London for the convenience of the parties and witnesses or to save costs. To the best of my knowledge and belief, the Patents Court has only once sat in Birmingham. I think that is also true of IPEC.
There is a patents court in Edinburgh which is part of the Outer House of the Court of Session. The Chancery Division of the High Court of Justice of Northern Ireland hears patent infringement cases in Belfast.
If you have a foreign patent you have to go to the courts of the country for which the patent was granted. Some countries like Germany, Switzerland and the Netherlands have specialist patent tribunals. Other countries do not. TahylorWessing has a website called the Patent Map which has lots of useful information about patent litigation throughout Europe.