The Basics Of Patent Law - Initiating Proceedings In The UK

Gowling WLG's intellectual property experts discuss initiating proceedings as part of their 'The basics of patent law' series.

This article is part of a series called 'The basics of patent law', covering: Types of intellectual property protection for inventions and granting procedure; Initiating proceedings; Infringement and related actions; Validity challenges, revocation actions and other procedures to remove the effect of an IP right; Trial, appeal and settlement; Remedies and costs; Assignment and licensing and the Unified Patent Court and Unitary Patent system.

The articles underpin Gowling WLG's contribution to Chambers' Global Practice Guide on Patent Litigation 2017, for which Gordon Harris and Ailsa Carter wrote the UK chapter.

Choice of court

Substantive legislative intellectual property law applies throughout the UK. The Patents Act 1977 governs UK patents and, post-grant, UK designations of European patents. Disputes arising under the Patents Act (for example, regarding infringement or validity) may be brought before the (relevant) court or, in some contexts, before the Comptroller-General of Patents, Designs and Trade Marks (the "Comptroller").

The jurisdiction of the Comptroller to hear disputes regarding infringement and/or validity of a patent will be discussed in our articles coming soon titled Infringement and related actions and Validity challenges, revocation actions and other procedures to remove the effect of an IP right. The Patents Rules 2007 govern the procedure for hearing of such disputes.

The UK consists of three distinct jurisdictions, each with its own legal system, courts and procedures: England and Wales, Scotland and Northern Ireland. Allocation of jurisdiction between the courts of the three jurisdictions is governed by the Civil Jurisdiction and Judgments Act 1982. In Scotland, the appropriate court for claims under the Patents Act is the Court of Session; in Northern Ireland it is the High Court in Northern Ireland. (PA s.130)

In practice, the overwhelming majority of intellectual property litigation in the UK takes place in the courts of England and Wales, and it is this jurisdiction which is focussed upon in this chapter.

In England and Wales, the appropriate court for claims under the Patents Act is the High Court (PA s.130, Senior Courts Act 1981 s.62). Any claim under the Patents Act (for example, for infringement or revocation of a patent) must be started in the Patents Court or the Intellectual Property Enterprise Court (IPEC). Both courts are within the Chancery Division of the High Court of England and Wales.

The IPEC is the appropriate forum for less complex and smaller value claims (up to an approximate value of £1 million - which may, for example, be the 'value' of an injunction). Recoverable monetary relief is capped at £500,000 per case and recoverable costs are capped at £50,000 for the liability stage. The Patents Court is the appropriate forum for more complex and valuable claims. In the Patents Court there is no cap on recoverable monetary relief or costs.

Claims for breach of confidence in respect of technical subject matter should be brought in the High Court's Chancery Division (within which the Patents Court sits), or the IPEC.

Rules governing court litigation in England and Wales

The conduct of civil litigation in England and Wales is governed by the Civil Procedure Rules (CPR). The over-riding objective of the rules is to enable the court to deal with cases justly and at proportionate cost.

A court action is initiated by completing and filing...