Patent dispute resolution

You will have spent a considerable amount of money developing and registering your patent. That does not stop infringement. Patent disputes are increasingly complex. This is due to the ever rising value of patents in increasingly innovative markets. We are specialist patent dispute lawyers who can resolve your dispute. We are also instructed by clients who are defending patent infringement claims. Our clients span across a range of technology businesses.

How to enforce patent rights

In order to bring an action you will first have to :-

• Consider whether the patent is directly or indirectly infringed;
• Identify the appropriate entity to take action against;
• Identify the patent’s registration, duration, and market scope;
• Determine whether litigation is the appropriate route to resolve the dispute;
• Identify the financial remedy sought, be it damages or account of profits; and
• Consider whether an interim injunction is necessary in the circumstances.

Direct and indirect infringement

Patent disputes normally arise when another party sells, manufactures, imports or uses patented products or technology in a country in which the patent is registered. Broadly, there are two types of infringement :-

Direct infringement - this refers to acts done directly in relation to patented products or processes which include making the patented product, selling the product or offering to sell the product, importing patented products or using a patented process or offering the process for use within the UK.

Indirect infringement - acts done indirectly in relation to patented products or processes whether supplying or offering to supply a person or company with any of the means relating to an essential element of the patented invention for putting the invention into effect. In order to win an indirect infringement case, it must be shown that the alleged infringer had knowledge that what was supplied was suitable for the invention and that it would be needed to make the invention work.

Settling a patent dispute

It is always going to be better if the dispute can be resolved outside of court.

The UK courts encourage parties in patent disputes to negotiate a settlement before resorting to litigation. Reaching a settlement agreement is beneficial to both sides. It avoids the time, expense, interruption and bad publicity associated with litigation.

Key ways to maximise the chances of an early settlement are :-

• Quality of the evidence - evidence will be required that proves that what the alleged infringer has been doing amounts to infringement. The significance of the invention must be demonstrated. It must be shown that the invention is distinguishable from other intellectual property that may be patented.
• Use of expert evidence - many patent disputes require the opinion of an expert prior to the dispute reaching court. The expert can provide an opinion on whether the patent has been infringed. As patents cover a number of sectors, it is best to instruct an expert with specific experience in the relevant sector.  A strong expert report can encourage settlement of the dispute.

Court process for patent claims

If a settlement agreement cannot be reached, or if extra pressure is needed, a claim can be brought in the IPEC. Depending on the value and complexity of the case it can be moved to the High Court. Even once the claim has been issued it is still possible to reach a settlement agreement.

The UK courts deal with issues of infringement and validity of patents in one trial. The trial is conducted in two stages:

• Establishing infringement – The court will make a judgement and determine whether the patent has been infringed. To help the court determine this, the opinion of experts from both sides are heard by the court.
• Quantum (level of damages) – If it has been decided that the patent has been infringed; the court will make a decision on the amount of damages to be awarded. This is determined by the complexity of the case and the loss that the patent owner has suffered.

Legal remedies for infringement of patent

The court options to go after an infringer of your patent broadly break down into :-

• Applying for an Injunction -This is a court order preventing the infringer from committing further infringing acts. If the damages at trial would not be adequate, patent owners can commence proceedings with the aid of interim injunctive relief. Injunctive relief will, stop the infringer from selling, importing or infringing products pending resolution of the matter at the final trial.
• Suing for damages or Account of profits - damages are calculated based on what the patent owner has lost from the infringement. Account of profits is calculated based on what the infringer has gained from his infringing act. The patent owner must choose whether they wish to claim damages or account of profits – they cannot get both.
• Delivery up - this is where the infringer is required to give up all infringing products to the patent owner.

We would be happy to guide you, based on our experience, on which approach is most likely to be successful.  We also deal with implementation of the steps required to stop repeated patent infringement.

Defending a patent infringement claim

We also resolve cases where a claim has been issued against a client at the IPEC. Our skill lies in putting together a robust defence. The aim is to dispose of the matter in the early stages. A good way of doing this is to draw out the weaknesses in the claim and evidence.

It takes time to prepare a good defence. But, it is time well spent if the claim is disposed of quickly.

Typical defences to patent infringement claims

Typical defences revolve around :-

• Invalidity -defence is based on no infringement having occurred as the patent should not have been granted. This is because the subject of the patent was known before the priority date of the patent itself. If this defence is used, it may be the case that the whole of the patent is not declared as invalid. The part that is declared invalid might create a loop-hole in the patent into which your use of the invention falls.
• Prior use - defence based on using the invention before the priority date of the patent but not publicly.
• License for valid use - if there is a valid licence no infringement has occurred. This is because the patent owner has given you permission to carry out the act in the licence.
• Gillette Defence - may be available to show that the patent is invalid. It relies on demonstrating that your product or process is wholly covered by a piece of prior art.
• Loss of ownership - relies on proving that the claimant is no longer the owner of the patent. This could be because they have failed to renew the patent. The patent owner gets a 20 year monopoly. The patent needs to be reviewed every 5 years to be valid.
• Statutory defences to patent infringement -  If the case falls within a statutory defence it has a stronger prospect of success. There are various statutory exceptions available to you if you are facing allegations of a patent infringement incluidng that any breach was in conducting a study, test or trial, private and non-commercial use, experimental purposes relating to the subject matter of the patent, breach exclusively for the needs of a ship or aircraft, preparation of medicine in a pharmacy for individual use and reuse of patented materials by Farmers.

Our patent dispute track record

We act across a range of sectors, including software, telecommunications, pharmaceuticals, science and engineering – both mechanical and electrical. We will always consider funding arrangements with you and in the right type of case we offer conditional fee agreements. We do not shy away from considering creative alternatives within the boundaries of existing patent laws – as a result, we have an impressive success rate.

• Obtaining a search order against a pharmaceutical infringer where our client had spent significant sums of money on the development of a new medicinal product. Once the search order was obtained, we located the infringer’s plans for exploitation and secured a final injunction from the IPEC.
• Successfully defending a claim from a global car manufacturer against our client, a medium-sized mechanical engineering business in the UK, for breach of a registered patent. We asserted that our client used the manufacturer’s patent not for commercial exploitation but for studying and testing relating to developmental purposes.
• Obtaining a remedy of damages from a computer software company where our client, an individual inventor, was in the process of registering a patent. We successfully argued that the computer software company took the knowledge of the patent in circumstances obligating a degree of confidentiality.
• Acting for a German based science and development entity where a UK competitor imported patented goods and disposed and offered the patented goods without consent. We obtained a seizure and destruction order and our client’s costs accordingly.

Whether claiming or defending, patent law and litigation is complex. A patent is a highly-valuable commercial asset to those in the innovative sectors – we ensure its value is protected.