The Basics Of Patent Law - Procedure, Trial, Appeal And Settlement

Gowling WLG's intellectual property experts discuss litigation procedure, trial, appeal and settlement, 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; Revocation actions, non-infringement and clearing the way; Procedure, 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.

Court procedure and trial structure

The conduct of civil litigation in England and Wales is governed by the Civil Procedure Rules (CPR). The CPR covers all stages of litigation from pre-action correspondence to the award and payment of a final costs order (although proceedings in the UK Supreme Court are governed by the Rules of the Supreme Court).

Some parts of the CPR apply to particular types of dispute only. For example, in respect of disputes regarding patents, Part 63 supplements and amends many of the general rules. In addition, for some of the general rules of procedure, their specific application in respect of patent disputes has been developed by the case law of the Patents Court and the Intellectual Property Enterprise Court (IPEC). (For discussion of choice of courts in patent proceedings, please see our article on Initiating proceedings).

The legal system in England and Wales is traditionally geared to the hearing of disputes in a single substantive oral trial, although multi-patent disputes may be heard as a series of single patent trials, and it is also usual for a trial to be 'split' into liability and quantum stages. Usually, procedural stages regarding quantum only begin after a finding of liability has been reached.

At an early stage in the litigation, case management directions are set (if not agreed) defining the applicable pre-trial procedural stages and deadlines for the parties, in view of the nature of the dispute. For the liability stage, these commonly begin with the completion of the exchange of statements of case and may include, for example, directions regarding any of the following:

budgets admissions security for legal costs disclosure (and inspection) product or process description (an alternative to disclosure) experiments notice of models technical primer written fact evidence in chief written expert evidence in chief pre-trial review trial bundles the hearing of the trial, and costs. In the event of a dispute between the parties regarding procedure or interim relief, upon the application of a party, the court may set an interim procedure for resolving the dispute. This may occur, for example, if one party seeks an interim injunction, or if a dispute arises as to a party's compliance with the...