Patent dispute resolution
- Himanshu Dasare
- Updated: Wed, 7th Dec 2016
You may have spent a considerable amount of money developing 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 will solve problems.
Our patent dispute resolution service includes:
Our clients span across a range of technology sectors. We deal with contentious and non-contentious patent related matters from new patent applications to patent infringement and validity disputes. We also structure the exploitation of patents through commercial agreements.
Winning in litigation
As a patent owner or exclusive licensee of a patent you are able to bring an action for patent infringement.
First steps in enforcing 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. Infringement covers acts done without the owners consent whilst the patent is in force.
This refers to acts done directly in relation to patented products or processes. This includes:
- Making the patented product.
- Selling the product or offering to sell the product.
- Importing patented products.
- Using a patented process or offering the process for use within the UK.
This refers to acts done indirectly in relation to patented products or processes. This includes:
- 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.
Example of patent infringement
A manufacturing machine that is not patented itself is needed to create a patented product.
The company who uses the manufacturing machine to create the patented invention without the consent of the patent holder is guilty of direct infringement.
The company who supplied the manufacturing machine will be guilty of indirect infringement. This is provided that they had knowledge that the machine will be used to make an infringing product.
Has there been an infringement?
To determine whether there has been infringement, we must consider:
- The invention protected by the patent. This is generally detailed in the patent specification and claims.
- Whether the infringer’s acts are in breach of the patented invention.
- Whether the infringer has a reasonable defence to the alleged infringement.
Patent litigation can be complex and time consuming – this is where we can help. We assess the case merits and provide honest advice, bespoke to needs.
Quality of the evidence
In order to succeed, the owner of the patent must prove that the defendant is committing infringement. The arguments need to be technical and robust to prevent any scope for attack- this is where we can assist and prepare the documents to support your case.
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 experts
It is advisable to see 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. The expert’s opinion will help us plan a road map. A good report can encourage settlement of the dispute.
Settlement outside of court
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.
Patent infringement litigation
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.
Stages of a court case
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 – 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.
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.
Remedies available at court
There are a variety of ways in which patent infringement can be remedied. Remedies include:
This is a court order preventing the infringer from committing further infringing acts.
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 of any infringing articles
This is where the infringer is required to give up all infringing products to the patent owner.
We will tell you which approach is most likely to be successful. We also deal with implementation of the steps required to stop repeated patent infringement.
Any of the remedies available at court can be achieved under an out of court settlement agreement.
Defending patent infringement claim
We regularly deal with situations where you have received correspondence of alleged patent infringement. We also resolve cases where a claim has been issued 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 revolve around:
This is where you argue that no infringement has 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.
This is where you argue that you were using the invention before the priority date of the patent but not publically.
License for valid use
This is where you show that you have a valid licence and therefore no infringement has occurred. This is because the patent owner has given you permission to carry out the act in the licence.
This defence could be available to show that the patent is invalid. It relies on you demonstrating that your product or process is wholly covered by a piece of prior art.
Loss of ownership
This is where you prove that the person accusing you of patent infringement 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
We look to see if you can rely on a statutory defence. 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:
- Act done in conducting a study, test of trial;
- Private and non-commercial use;
- Experimental purposes relating to the subject matter of the patent;
- Act done 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.
Avoiding litigation – potential infringement analysis
After registration of patents, it is beneficial to conduct a post-registration infringement analysis. This analysis will establish whether your patented product or process infringes an existing patent. There is a risk that during the long patent registration process another patent was registered before yours causing potential infringement.
Declaration of non-infringement
If the results of infringement analysis show that your patent might be infringing an existing patent you can approach the court and get a declaration for non-infringement. This is where the court grants a declaration that an act, or a proposed act, does not infringe a particular patent. A declaration can be sought even before the patent owner has a chance to bring a claim against you.
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.
We register and enforce patents for our clients. Our approach varies depending upon your case and the losses involved. We provide honest case assessments so you know where you stand.