Direct Access to Barristers on Intellectual Property Matters

Jane Lambert

I am a member of the Intelectual Property Bar Association to which most barristers specializing in intellectual property and technology law belong.  There are over 100 of us.  Most are in London but there are a few in other parts of the country.  Our job is to advise on difficult points of law, draft complex legal instruments and represent clients in litigation and negotiations.  Most of the judges of the Patents and Intellectual Property Enterprise Courts and many of the other judges of the Chancery Division were recruited from our numbers. 

Barristers are often compared to consultant physicians and surgeons in medicine.  Just as a GP might refer patients to specialists for diagnosis or treatment, patent and trade mark attorneys and solicitors seek our opinions, drafts or representation for their clients. Until 2004  we had to be consulted through those intermediaries. Nowadays, many of us accept instructions directly from members of the public on IP matters under the public access scheme.  Earlier this evening, for example, I was asked how to apply for a patent.  Over the weekend I was asked how to challenge a design registration under s.11ZA of the Registered Designs Act 1949,  Other typical requests would be to review a lengthy business format franchise agreement, draft a complaint in a domain name dispute or appear at an online entitlement hearing in the Intellectual Property Office,

It should not be supposed that we do the work of solicitors, patent or trade mark attorneys or other professionals simply because we can be instructed directly.  Our Public Access Guidance forbids us from conducting litigation unless specifically authorized to do so.  Similarly, we do not prosecute patent, design or trade mark registration applications though we draft statements of case, review witness statements and appear before IPO hearing officers and EPO Boards of Appeal.  Our rules prevent us from acting for a client if we believe it to be in the client's interests or the interests of justice for him or her to instruct a solicitor or other professional intermediary.   Far from competing with other professionals, we are actually a source of work for them. 

Though we do not prosecute patent, design or trade mark applications or conduct litigation we may be the best initial point of contact for clients who may need such services.  There are many ways of protecting the same intellectual asset some of which are free such as unregistered design right or the right to bring an action for passing-off.  The optimum method of protection at a particular time and in certain circumstances is not necessarily the most comprehensive.  Similarly, a request for the transfer of a domain name under the Uniform Domain Name Dispute Resolution Policy can be much faster, cheaper, safer and even more effective than a trade mark infringement or passing-off claim in the courts.  Counsel's advice on those matters is objective and impartial. If an attorney or solicitor is required we can suggest intermediaries with whom we have worked satisfactorily in the past.

If a business owner, manager or individual seeks advice on a point of law we can advise on most matters without the assistance of a professional intermediary.  That would include such questions 

• "Is this computer-implemented invention patentable?",  
• "Do I have an action for copyright infringement?" 
• "I have just received this demand for undertakings and pile of documents from that big firm of solicitors, what are my options?" or
• "Can you help me understand this complex agreement that a potential customer has just sent me?"

There are some issues such as "Is this invention patentable given the prior art?" when we would need a patent search or some other information that a professional intermediary can supply. 

When a business owner or manager understands contracts and has negotiated deals before we can draft just about any kind of agreement or instrument for him or her.  If he or she is feeling his or her way we would advise the owner or manager to introduce a solicitor, accountant or another professional to the team.

Most litigation would need a solicitor, attorney or other professional but sometimes the client can do the necessary work and all that is required is advocacy.   Many hearings in the Intellectual Property Office or small claims track of the Intellectual Property Enterprise Court would fall into that category.  On one occasion I have responded to an appeal in the Court of Appeal and there have been several others when I have appeared in the High Court without a solicitor.

If you want to use our services you will need to supply a passport, driving licence or other photo ID and evidence of residence and if you represent a company your authority to do so.  We will specify what we will do when we shall do it and how much we shall charge in a client care letter.  That is your contract with your barrister.   In the unlikely event that something goes wrong, we are all insured and regulated by the Bar Standards Board or other authorities We have approved complaints handling procedures and the ordinary law of contract and tort applies to us just as much as to any other professional services provider.  You can find more information in the Public Access Guidance from our regulator.

Anyone wishing to discuss this article may call me during office hours or send me a message through my contact form.

What to do if your Patent is Infringed

Patents Court and Intellectual Property Enterprise Court 

Author Judicial Office Licence CC BY-SA 4.0 Source Wikimedia Commons

 

Jane Lambert

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."

Your invention is therefore set out in those claims.   

Thus, anyone who disposes of offers to dispose of uses or imports a product that is described in any of those claims infringes the patent for that product.  Similarly, anyone who uses a process that is described in any of those claims infringes the patent for that process.  Anyone who disposes of offers to dispose of uses or imports any product obtained directly by means of that process also infringes the patent for that process. 

5.   So  How does it work exactly?

The court works out what the claim means.  Often it breaks the claim into its "integers" or "features" as in the following example:

“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 [8] of Tehrani v Hamilton Bonaduz AG and others [2021] 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.

Once the court has decided what the claim means it looks at the defendant's product or process to see whether it has the claimed integers.   If the defendant's product or process does have those integers, then the claim is infringed.

6.    So Everything hangs on the Interpretation of the Claim?

Not quite!   The patent is infringed only if the claim is valid.    The first thing that a defendant does when he or she is accused of patent infringement is to investigate the validity of the claim.   There are all sorts of reasons why a claim might not be valid.   The claim may be for something that has already been invented.   That is called "anticipation". Alternatively, it may claim something that would be obvious to a person skilled in the art.  In that case, it would lack an inventive step. 

7.     Wouldn't that be picked up by the Examiners when an Application is made for a Patent?

Not necessarily!  Examiners do their best but they have only so much time and only so many resources.  They will read the patents, patent applications and technical literature in English.  Possibly they may know some other European language and they will consult patent databases or journals in those languages.  But much of the world's technical literature is now published in Mandarin, Japanese and Korean and not many examiners in this country or even at the European Patent Office in Munich speak those languages.  A prior disclosure may be a previous patent application but it may equally be an article in a scientific or technical journal.  If the information is available to the public then it is already known. 

8.     Phew!  So how often are Patents found to be invalid?

I don't have any statistics but quite often as you can see from looking at previous decisions of the Patents Court or Intellectual Property Enterprise Court.

9,.    Are they the Courts that decide Patent Infringement Cases?

Yes. They are the courts for patent infringement disputes in England and Wales.   

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.

10.   So how much is that likely to cost me?

A lot of money even in IPEC.   A Patents Court dispute over the use of standard-essential patents can cost many millions of pounds.   That is because there are several technical trials to decide whether each patent is valid, essential to the standard and infringed and then a final trial to decide the terms of licences to use the patents.   If you run a start-up or indeed any other small or medium enterprise I strongly advise you to take out patent litigation insurance. I have written quite a lot about patent insurance in this blog over the years and can commend CIPA's work on the topic.

11.   Further Information

This article barely scratches the surface of a huge topic and I am aware that I have left out lots of crucial information.  If you have a specific enquiry call me on 020 7404 5252 during office hours or send me a message through my contact form. 

So You've Got A Patent!

Jane Lambert

Congratulations! It probably took a little longer to get than you expected. It almost certainly cost you more money than you had bargained for.  But so long as you pay the renewal fees you have an asset that is bound to make your fortune. Right?

Well, not exactly. You have a right to stop other people from making, marketing, importing or selling something that you have invented but a patent is not a meal ticket. It exists to give you an opportunity to recoup the time and money you spent in devising the invention and perhaps a little extra on the side either by working the patent yourself or by licensing it to others. Whether you can do that or not will depend on whether anybody wants to buy your invention.

If there is a market for the invention, there is always a possibility that somebody will want to muscle in. Such a person may want to do it fairly by seeking a licence from you or by using a technology that does not infringe your patent, but there are also those who would try to sweep your patent out of the way in revocation or declaration of non-infringement proceedings or simply ignore your patent if they don't think you can afford to enforce it.  Unlike some other intellectual property rights such as copyright, trade marks, rights in performances or, nowadays, registered designs, it is not an offence to infringe a patent in this country even if it is done quite blatantly, cynically and on an industrial scale.

If anyone infringes your patent you have to sue and patent litigation is not cheap. You can't use the small claims track of the Intellectual Property Enterprise Court ("IPEC") because the rules specifically exclude patents, registered and registered Community designs, semiconductor topography and plant variety claims from that tribunal.  You can use the IPEC multitrack but you have to be prepared to pay up to £50,000 if you lose the case and probably a great deal more than that to your own legal team. That is a lot better than the Patents Court where the costs that can be awarded against you are unlimited and can run into millions.

So unless you are a millionaire, your company is really coining it or you have some other source of funding you should consider before-the-event insurance cover against IP disputes before a dispute arises (see my article It is never enough to get a patent, trade mark or registered design 19 Aug 2019 and my links to other articles). It is unrealistic to expect a lawyer specializing in IP to represent you on a no-win no-fee basis because the risks, costs and wait for payment are too great however strong your case. IP insurance is not cheap but it is a lot better than bankruptcy or watching a competitor ride roughshod over your rights.

So, what should you do if you think that someone is infringing your patent? Well, one thing you should not do is take matters in your own hands and write a stroppy letter to the other side. S.70 of the Patents Act 1977 and subsequent sections prohibit threats of patent infringement proceedings that cannot be made out. If you make such a threat (however politely) you risk an action for an injunction, declaration and costs that could cost you plenty. Any lawyer or patent attorney with any experience of patent litigation will be aware of this section but many non-specialist lawyers aren't. If they make a groundless threat on your behalf it is you who will have to carry the can.

Where do you find a specialist lawyer? Any firm that belongs to the Intellectual Property Lawyers Association should be able to help you. There are good solicitors in other firms but you have to be careful because not every solicitor who claims experience of IP has actually done a patent case.  Another possible option is a patent attorney litigator.  Not every patent attorney has expertise in civil litigation but there is a growing number who have. The CIPA and IPReg websites should help you find one. Yet another option is to consult a member of the IP Bar. We are advocates and not litigators but we are probably in a better position than most to recommend a good litigator.

Civil proceedings begin with the service or delivery of a claim form on the alleged wrongdoer.  The claim form is usually accompanied by another document known as particulars of claim. Those particulars must state the facts on which you base your claim and the remedy that you want precisely. In a patent infringement claim, your particulars of claim must state which of the claims of your patent is alleged to have been infringed and give at least one example of at least one alleged infringement.  The "claims" are the numbered paragraphs at the end of your patent specification setting out the features of your invention.  The reason they are set out in numbered paragraphs is that if one of them is too broad you may still be able to rely on one of the others. If your invention is a product the patent is infringed by making, marketing, importing or using a product that has all the features of at least one of the claims.

It is possible that the alleged infringer will accept the strength of your case and seek a settlement or simply throw in the towel but you cannot bank on that. He or she may challenge your interpretation of the claim and argue that his or her product falls outside its wording,  It is likely that he or she will dispute the validity of the patent on one of several grounds.  If your opponent can show that someone else invented exactly the same thing before you applied for your patent can be revoked (taken away) on the grounds that your invention was not new. Another possible ground for revocation is that your invention would have been obvious to anyone with the appropriate skills and knowledge having regard to everything that was known at the time of your application.  You might think that all this would have been considered by the examiner when you applied for your patent but the sad fact is that the time and resources that are available to an examiner are nothing like the time and resources that your opponent will expend in order to knock out your patent.  A surprisingly large number of patents are revoked in whole or in part when patentees bring infringement claims.

If you win your action you will be awarded an injunction and a contribution to your legal fees which will be limited to £50,000 if you brought your claim in IPEC.  You would probably get more if you sue in the Patents Court but even the awards in that court are unlikely to cover everything you spent. An injunction is an order by a judge to do or not to do something. If it is disobeyed the court may punish the defendant with a fine or even imprisonment.  What you will not get at this stage is damages or accountable profits.  That will require another hearing known as an account or inquiry which may take place several months or even a year or so in the future. That will also cost a lot of money,

There is obviously a lot more to patent enforcement than I can mention in a short note.  The important thing is to think about enforcement and arrange to fund it whether by insurance or otherwise well before a dispute arises. If you want to discuss this article or anything relating to it, call me on 020 7404 5252 or send me a message through my contact form.

It is never enough to get a patent, trade mark or registered design.

Corporation of Lloyds

Author phogel, Licence: Creative Commons Attribution-Share Alike 2.0 GenericSource Wikipedia 

Jane Lambert

As a barrister, I am often shown a blatant act of piracy or a breathtakingly unjustified letter before claim and am asked for my opinion on the strength of the claim. More often than not, that is the last I ever hear of the matter.  Sometimes I run into the patent agent or solicitor who consulted me and ask what happened. "Oh! The client just could not afford to fight" is the usual answer. "So he let it go" or as the case may be, "He just caved in."

Now if you consult TaylorWessing's Patent Map, click the arrow beside "I have a question for all countries" in the left-hand box, click again on "Questions concerning First Instance" and choose the "Typical costs at first instance?" option, you will see why.  The figure for England and Wales is £200,000 to £1 million. Compare that to France (€200,000 to €800,000), Germany (infringement €100,000 to €200,000 and the same for validity), the Netherlands (€75,000 to €200,000_ and Switzerland (court fees: €830 - €125,000 attorney's fees: €1,700 - €250,000). It is not surprising that only 5,736 European patent applications were made from the UK in 2018 compared to 26,734 from Germany, 10,317 from France, 7,927 from Switzerland 7,140 from the Netherlands (source European patent applications by country of origin 2009 to 2018).

Of course, those figures don't tell the whole story. Patents for European countries can be granted by national intellectual property offices such as the IPO in Newport as well as by the European Patent Office. Intellectual property litigation can be conducted far more cheaply in the Intellectual Property Enterprise Court than the Patents Court or the rest of the Chancery Division.  But these figures tend to confirm the widely-held view that IP litigation in England and Wales is prohibitively expensive and that it is just not worth spending many thousands of pounds on a patent or other registered right which costs many thousands of pounds more to enforce. 

Now what, if anything, can be done about that? The Ministry of Justice has probably done as much as it could by streamlining the practice and procedure of the Intellectual Property Enterprise Court, introducing a small claims track for the simpler cases and requiring all courts to manage their cases at proportionate costs. The IPO offers a cost-effective mediation service and examiners' opinions on such issues as whether a patent is valid and whether it has been infringed. The Unified Patents Court would have created a level playing field for all European patent owners but that may well have been scuppered by brexit and litigation in the German Constitutional Court,

Probably the best way forward is for businesses to consider enforcement whenever they apply for a patent, trade mark or registered design or acquire some non-registrable right. In the case of a start-up or other small business that probably means taking out IP insurance.  I have been writing about this topic since 2005 (see IP Insurance: Does it Work? 3 Sept 2005 NIPC Law, IP Insurance 3 Sept 2005 NIPC Inventors' Club, 6 Feb 2006 IP Insurance: Two More Insurers Identified 6 Feb 2006 NIPC Inventors Club, IP Insurance Five Years On 26 Oct 2010 NIPC Inventors Club, Intellectual Property - The Funding Options 10 April 2013 NIPC Law, IP Insurance: CIPA's Paper and 1 May 2916 NIPC Inventors Club).

Back in 2005, there were not many brokers with experience of arranging IP insurance and many patent and trade mark attorneys were sceptical of the value of the policies. Because after-the-event premiums and success fees were then recoverable from unsuccessful paries, many rightsholders thought that it would always be possible to find solicitors and counsel who would accept instructions on a no-win-no-fee retainer should a dispute ever arise.  All that changed with the Legal Aid, Sentencing, Punishment and Management of Offenders Act 2012 and costs capping in the Intellectual Property Enterprise Court (see Success Fees and ATE Premiums in the Patents County Court: Henderson v All Around the World Recordings Ltd 14 July 2011 NIPC Law). The Chartered Institute of Patent Attorneys published IP Insurance and other IP litigation funding arrangements in 2016.  The Intellectual Property Office published its guidance on Intellectual Property Insurance on 22 Jan 2016 which it updated earlier this year.

The IPO's guidance covers the types of before-the-event IP insurance policies that are available, the types of litigation, jurisdiction and risks that can be covered, the costs and benefits, the criteria for setting premiums, the claiming process and alternatives to litigation such as IPO examiners' opinions and mediation.  There is also a list of specialist brokers on the CIPA and IPO's websites.  Provision for IP insurance premiums or some other funding should appear in every business plan.  Angels, private equity investors, bankers and other lenders should insist on it.  It is as important as rent, equipment hire and employees' wages.

Anyone wishing to discuss this article or IP insurance generally should call me on 020 7404 5252 during office hours or send me a message through my contact form. 

Patent Revocation FAQ

Jane Lambert

What is meant by "Revocation"?

Revocation means removing a granted patent from the register of patents and cancelling the monopoly of the invention that the patent conferred.

What does that mean in practice?

It means that anyone can make, sell, import or keep your invention without asking your permission. Any action you may bring for the infringement of your patent will fail. You may no longer be entitled to any licence fees in respect of your patent.

Do I get any money back from the EPO or IPO?

Probably not.  It's one of the risks that you take when you apply for a patent.

Who can revoke my patent?

The European Patent Office can revoke a European patent in all the countries for which it is granted if someone opposes the grant under art 99 of the European Patent Convention within the first 9 months. The Intellectual Property Office, the Patents Court or IPEC (Intellectual Property Enterprise Court) can revoke a European as well as UK patent at any time under s.72  of the Patents Act 1977. The Comptroller (chief executive of the IPO) can also revoke such a patent under s.73.

On what Grounds can my Patent be revoked?

Essentially, the patent should never have been granted.

In the case of a European patent, art 100 EPC sets out the following grounds:

"(a) the subject-matter of the European patent is not patentable under Articles 52to 57;

(b) the European patent does not disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art;

(c) the subject-matter of the European patent extends beyond the content of the application as filed, or, if the patent was granted on a divisional application or on a new application filed under Article 61, beyond the content of the earlier application as filed."

The grounds under s.72 are somewhat wider:

"(a) the invention is not a patentable invention;
(b) that the patent was granted to a person who was not entitled to be granted that patent;
(c) the specification of the patent does not disclose the invention clearly enough and completely enough for it to be performed by a person skilled in the art;
(d) the matter disclosed in the specification of the patent extends beyond that disclosed in the application for the patent, as filed, or, if the patent was granted on a new application filed under section 8(3), 12 or 37(4) above or as mentioned in section 15(9) above, in the earlier application, as filed;
(e) the protection conferred by the patent has been extended by an amendment which should not have been allowed."

The Comptroller's powers under s.73 arise when an invention was anticipated by an unpublished patent application or where an examiner finds that a patent was invalid under s.74A and his or her opinion is not successfully challenged.

How can a Granted Patent not be a Patentable Invention?

Let me give you just one example.

As you know an invention must be new. An invention is new if it does not form part of the state of the art. The examiner checks the databases and publications that are available to him or her and publishes details of the invention on the office's website and journal. However, much of the world's new technical literature is now in Japanese, Korean or Mandarin, none of which is widely understood here. There is a risk that the examiner will miss relevant prior art written in one of those languages when an application for a patent is filed. If that prior art finally comes to light it can invalidate the patent.

Can I still rely on Confidentiality, Design Rights or other IPR if my Patent is revoked?

Probably not.  Your specification is supposed to disclose your invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the art.  If it doesn't do that your patent would probably be void for insufficiency.  One of the less publicized passages of Mr Justice Whitford's judgment in Catnic Components Ltd. v. Hill & Smith Ltd. [1982] R.P.C. 183 is to the effect that you dedicate any copyrights or nowadays design rights in design drawings to the public when you apply for a patent.

What about Costs?

It depends on where the proceedings take place.

Costs in the EPO are usually borne by the parties themselves though the rules do provide for apportionment.

The losing party in the IPO usually contributes a few thousand pounds to the successful party on a fixed scale.

That is also the case in IPEC though the amounts awarded are usually much greater.

Costs in the Patents Court can be many hundreds of thousands of pounds.  Revocations are usually brought by way of counterclaim in infringement proceedings or vice versa.  According to Taylor Wessing, the costs of a typical patent action are between £200,000 and £1 million.

What can I do about it?

Take the best possible specialist advice when choosing the optimum legal protection for your intellectual assets, applying for such protection, enforcing and defending it. Such advice will not come cheap so it is important to arrange before-the-event insurance or other funding for those expenses. Obtaining IP protection without the means of enforcing it is as risky as travelling to North America without accident and medical insurance.

Further Information

Should anyone wish to discuss this article or patent litigation in general, call me during office hours on +44 (0)20 7404 5252 or send me a message through my contact form.

How to enforce your IP claim after court fees sky rocket

A patent or other intellectual property rights is essentially a right to bring a lawsuit. With a few limited exceptions, it is not a crime to infringe an intellectual property right. Patentees and other intellectual property rights holders have to enforce their rights themselves which generally means bringing proceedings in the civil courts.

1.  Court Fees are about to Sky Rocket

Unfortunately, the costs of issuing proceedings in the civil courts of England and Wales are about to soar through the roof. Art 2 of The Civil Proceedings and Family Proceedings Fees (Amendment) Order 2015 which is currently before Parliament requires those claiming more than £10,000 in damages or other monetary relief to pay 5% of the value of the claim up to a cap of £10,000.  At present, the most that anyone has to pay for issuing a claim is £1,920. That will increase to £10,000 after the Order is made - a whopping £8,080 or 421%. It is even worse for those with modest claims. Those seeking damages of £190,000 will have to pay £9,500 an increase of £8,185 or 622%.

The peers including the law lords have protested at these new fees as have the senior judges and lawyers (see Senior judges attack government's planned court cost rise 4 March 2014 BBC and Wednesday in Westminster 4 March 2015) but governments tend to get their way and the draft order will go through. So what should inventors and other small businesses do now?

2. Limit Damages Claim to £10,000

The issue fees for claims under £10,000 remains unchanged. They increased quite a bit last year but they will not be going up this time. If your claim for damages is between £5,000 and £10,000 the issue fee will still be £455. Limiting claims to £10,000 is not nearly as bad as it sounds because the principal relief that an intellectual property owner wants is an injunction - that is to say, an order of the court to do or refrain from doing something on pain of a fine or imprisonment for disobedience. Inquires as to damages and accounts of profits are very rare in IP litigation. I can count on the fingers of one hand the number of cases in which I have been instructed that have actually gone all the way to a full-blown inquiry.

Happily, there is now a court for small intellectual property claims, namely the Intellectual Property Enterprise Court (formerly the Patents County Court) small claims track. The judges of that court will hear claims for all types of IP cases except those involving patents, registered designs, registered Community designs, semiconductor topographies and plant breeders' rights where the damages or other pecuniary relief is £10,000 or less. I have written a lot about that tribunal, given a lot of presentations and even argued a case before it. You will find links to those articles at Patents County Court - the New Small Claims Track Rules 20 Sept 2012 NIPC Law. The great advantage of the small claims track is that the procedure is very simple. There is usually only one hearing which lasts less than half a day and the judge can award an injunction and damages at the same sitting. Something that can't be done in any other court. The risk as to costs is limited to a few hundred pounds though by the same token you can's recover more than a few hundred pounds if you are successful.

Even if your claim is in relation to patents, registered or registered Community designs, semiconductor topographies or plant breeders' rights you can still limit your damages claim to £10,000. Your case will be allocated to the multitrack which means that your liability for costs will increase but you will still only be charged £455 for issuing proceedings and recoverable costs in the multitrack are limited to £50,000.

3.   Bring your Case in the Intellectual Property Office

The hearing officers of the Intellectual Property Office have extensive jurisdiction in patents, trade marks, registered designs and unregistered design rights disputes and recoverable costs in proceedings before hearing officers are limited in most cases to a fixed scale (see Tribunal Practice Notice 2/2000 Costs In Proceedings Before The Comptroller).

In patients, for instance, hearing officers can decide who is entitled to a patent or to be named as an inventor, they can amend or revoke a patent, they can declare that a patent has not been infringed and they can decide compulsory licensing and licence of rights disputes. They can even hear infringement claims with the consent of the parties under s.61 (3) of the Patents Act 1977 though that has rarely if ever happened, possibly because hearing officers cannot grant injunctions.

In trade mark disputes hearing officers can revoke or declare trade mark applications invalid.

In designs, hearing officers can cancel design registrations and determine the conditions for licences of right.

Appeals from decisions of hearing officers in trade mark disputes can be made to an Appointed Person rather than the court who will generally award costs on the same scale as hearing officers.   S.10 of the Intellectual Property Act 2014 makes similar provisions in respect of designs.

4.   Seek an Examiner's Opinion

For the last 10 years, Intellectual Property Office examiners have delivered non-binding opinions as to whether a British or European patent is valid and whether it has been infringed.  This has proved very popular and their jurisdiction has recently been extended to other patent disputes and will shortly extend to designs. The cost of an examiner's opinion remains at £200.  In some cases, an authoritative opinion is all that is needed to resolve a dispute. In cases where the losing party refuses to back down a favourable opinion should make it easier to get after-the-event insurance or litigation funding.

5.  Use established Arbitration or other Alternative Dispute Resolution Schemes where they exist

Probably the best-known schemes are the ICANN Uniform Domain Name Dispute Resolution Policy for generic top-level domain name disputes and Nominet's Dispute Resolution Service for domain name disputes in the .uk top level domain name space. For a few hundred pounds trade mark owners can obtain an order for the transfer of a domain name in less time than it takes to exchange statements of case in many intellectual property disputes. Costs are irrecoverable but then you don't usually get all your costs back on a detailed or summary assessment anyway.

6.  Insert Dispute Resolution Clauses into your Licences and other Agreements

If you don't want to go to court to resolve a dispute with your licensee, joint venturer or other associate you can insert provisions for mediation, expert determination or arbitration into your licences or other agreements.

7.  Take out Before-the-Event Insurance

Although the 622% and 421% increases that I mentioned above are enormous, they are not a large part of the total cost of litigation and should not increase before-the-event insurance premiums greatly. There are some good IP packages on the market, particularly the IP Insured package which Sybaris IP offers to ACID members.

8.  On the Horizon

The British government has signed an agreement to establish a Unified Patent Court with exclusive jurisdiction to determine disputes over European patents and passed enabling legislation to implement the agreement. Art 71 of that agreement restored legal aid for inventors which was taken away from them by paragraph 1 (h) of Schedule 2 to the Access to Justice Act 1999. The Court will consist of a Court of Appeal in Luxembourg and a Court of First Instance with a central division based in Paris with a section in London. The Court will have its own rules and charge its own fees. So long as this country remains in the EU it is the best news for private inventors for 20 years.

Should anyone wish to discuss this article or IP law in general, he or she should call me on 020 7404 5252 during normal office hours or message me through my contact form.