The Basics Of Patent Law - Remedies And Costs

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, 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.

The legislation

Pursuant to the Patents Act, section 61, the party asserting infringement may seek from the court, as remedy for patent infringement, an injunction to restrain infringement, an order for delivery up or destruction, damages or an account of profits and/or a declaration that the patent is valid and has been infringed (by the party found to infringe).

Pursuant to the Patents Act, section 69, a claim for damages or an account of profits can be made in respect of infringements that take place after publication of the patent application but before grant of the patent. These proceedings must be brought after grant of the patent, and only on the basis that both the claims in the patent application and the patent, as granted, are infringed.

EU Directive 2004/48 on the enforcement of intellectual property rights (the IP Enforcement Directive) provides that member states "shall provide for the measures, procedures and remedies necessary to ensure the enforcement of the intellectual property rights covered by this Directive". The scope of such intellectual property rights is understood to include patents and supplementary protection certificates (among others), but not to include a cause of action in breach of confidence.

The UK courts give effect to the provisions of the IP Enforcement Directive in the application of national law and procedure regarding remedies. For example, the principle of proportionality is, in keeping with the IP Enforcement Directive, considered by the courts in deciding whether to grant, and the extent of any, interim injunctive relief (see for example Warner-Lambert v Sandoz [2016] EWHC 3317 (Pat), and Warner-Lambert v Actavis [2015] EWHC 485 (Pat))).

More generally, the jurisdiction of the Courts in England and Wales is broad and adaptable, and the courts have demonstrated a willingness to adapt existing types of relief to achieve justice in view of evolving technical and market circumstances.

Injunctive relief

Preliminary or 'interim' injunctive relief is discussed in our article on ' Initiating proceedings'.

In the usual course, where such relief is requested by the patentee, injunctive relief is granted following a first instance finding that at least one valid claim of a patent has been infringed. The usual form is prohibitory and in general terms i.e. not to infringe the patent, for its remaining life.

However, the grant of injunctive relief is within the discretion of the court and outcomes may differ from the norm.

For example, it may be possible, in some circumstances, to obtain an injunction that extends beyond the expiry of the patent, for example to restrain the sale of infringing articles manufactured during its life or to prevent the defendant from obtaining a springboard into the market after expiry of the patent (Dyson v Hoover [2001] EWHC Patents 30). In situations where third parties' lawful activities would be impacted by the proposed injunctive relief, the court may decline to award it (Warner-Lambert v Actavis [2015] EWCA Civ 556). The court may also stay the commencement of any injunctive relief pending appeal, where the alleged infringer has a real prospect of further appeal and the 'balance of justice' favours suspension (Smith & Nephew v ConvaTec [2015] EWCA Civ 803). Conversely, the court may award injunctive relief pending a patentee's appeal on the merits where the patentee has a real prospect of success on the merits and the injunction is necessary for the Court of Appeal to be in a position to do justice between the parties (Novartis v Hospira [2013] EWCA Civ 583).

Where the patent infringed...