2. Patent litigation in the UK Gordon Harris Partner, Head of Intellectual Property

3. Patent litigation in the UK  Patent litigation in the UK  The Civil Procedure Rules  Part 63 CPR  IP specialist judges  IPEC  Court logistics  Threats

4. Civil Procedure Rules (CPR) Code to govern the conduct of proceedings in the court of England & Wales Rules available at Justice.go.uk - http://www.justice.gov.uk/courts/procedure-rules/civil http://www.justice.gov.uk/courts/procedure-rules/civil Commentary available with the rules - on Westlaw - The White Book (2 volumes, supplements) Rules divided into Parts (i.e. chapters), with accompanying Practice Directions (PDs)

5. Courts to which CPR rules apply The CPR rules apply to all proceedings in – - County Court - High Court - Civil Division of the Court of Appeal This covers IP proceedings, including patent proceedings

6. CPR: background & overriding objective Background to the introduction of the CPR Part 1: Over-riding objective - enabling the court to deal with cases justly and at proportionate cost (1.1) - the court must seek to give effect to the over-riding objective (1.2) - the parties are required to help the court to further the over- riding objective (1.3) - the court must further the overriding objective by actively managing cases (1.4)

7. CPR: some basics Part 2: application and interpretation of the rules - documents to be sealed (claim form issue) - calculations of time Part 3: Court’s Case and Costs Management Powers - case management powers are broad - costs management powers mandate filing and exchange of litigation budgets which are overseen & managed by the court in many cases Part 5: Court Documents - paper size, margins, page numbering, electronic signatures, requests for copies of documents on the court file etc

8. CPR Part 6: Service of Documents Background Methods of service of a claim form Who is to serve the claim form Power of the court to dispense with service of the claim form Notice of service Methods of service of documents other than the claim form Separate rules for service of the claim form and other documents out of the jurisdiction & permission

9. CPR Part 7: How to start proceedings Proceedings are ‘started’ when the court issues a claim form at the request of a claimant Preparing the claim form - where to start proceedings - practice form 1N - particulars of claim Service - - of the claim form must be within 4 months of issue - of the particulars of claim must be with Rule 7.8 forms

10. Claim form

11. Particulars of claim Particulars of claim must include a concise statement of the facts on which the claimant relies Should state all the facts necessary for the purpose of formulating a complete cause of action Short, numbered paragraphs Facts – which should be distinguished from evidence or legal argument

12. Particulars of claim

13. Defence and reply In the Defence, the defendant must state which of the allegations in the particulars of claim he - denies (in which case must state reasons and give own version of events) - is unable to admit or deny - admits Most commonly the defence is accompanied by a counterclaim Failure to deal with an allegation in the particulars = admission Reply / reply & defence to counterclaim - reply: failure to deal with an allegation in the defence = defendant put to proof - defence to counterclaim – as above

14. Statements of case: contrast English statements of case (old name: ‘pleadings’) are relatively brief, technical and factual - evidence in support of facts relied upon is submitted later, with cross examination of witness evidence at trial - legal argument generally made in skeleton / at trial Contrast – - statements of case in the Intellectual Property Enterprise Court (IPEC) - statements of case in civil law jurisdictions - statements of case in arbitration proceedings - statements of case in the UPC

15. Quantum and costs Trial generally split into two stages: - liability - quantum Costs - the court has discretion as to costs - if the court decides to make an order about costs, the general rule is that the unsuccessful party will be ordered to pay the costs of the successful party - usually assessed on the ‘standard’ basis

16. CPR: Part 63 The Civil Procedure Rules include rules to cover all stages of litigation from pre-action correspondence to award and payment of final costs order Some Parts only apply to particular types of dispute Part 63: Intellectual Property Claims - supplements the general rules - defines ‘intellectual property’ as including - registered rights - includes patents (UK and EP) - unregistered rights

17. Part 63: jurisdiction The Patents Act 1977 Any claim under the Patents Act 1977 must be started in - the Patents Court; or - the Intellectual Property Enterprise Court (IPEC)

18. CPR Part 63 and PD63 supplement CPR for IP claims Part 63 and PD63 should be read in conjunction with other Civil Procedure Rules, which they supplement Examples – - marking of the claim form - particulars - time for filing a defence to an infringement claim - time for filing and serving any reply - service - case management

19. Patents Court: particulars of infringement

20. CPR Part 63 and PD63 Case management – patents Disclosure Primers Expert evidence Stays Experiments Patent injunctions

21. The patent courts & their guides Chancery Guide Patents Court Guide Intellectual Property Enterprise Court Guide Court of Appeal UK Supreme Court UKIPO Remember to check the websites as well as the guides and the CPR

22. IP court judges – lower courts Arnold J Birss J Henry Carr QC Hacon J

23. IP specialist judges – higher courts Lord Neuberger Floyd LJ Kitchin LJ

24. The Intellectual Property Enterprise Court (IPEC) Jurisdiction - as a part of the Chancery Division, the IPEC has jurisdiction over any case which can be heard before that division - all remedies available in the Chancery Division are available in the IPEC - suitability is determined by value and complexity - damages and costs caps - trial limited to 2 days

25. IPEC stage cost caps

26. IPEC procedure Procedural differences to the Patents Court - more active case management - tradition of strictly separating legal pleas, assertions of fact and evidence modified - IPEC statements of case comprise all three Enables procedure to be streamlined Tends to front loads work and costs

27. IPEC statements of case

30. IPEC in UK patent litigation An important cog in the IP litigation system in the UK An attractive venue in many cases - limited exposure to costs - injunctions still available - a new set of litigants Perhaps a victim of its own success A significant component of litigation work in the IP team For all UK IP lawyers, a valuable training ground ahead of the Unified Patents Court…

31. The IP courts – where to go… RCJ Rolls Building WLG

32. The IP courts – where to go…

33. CourtIssuing and filingListing Chancery Division The Chancery List Office, 7 Rolls Buildings, EC4 1NL open 10am-4.30pm telephones 9am-5pm General listing enquiries 020 7947 6690 chanceryjudgeslisting@hmcts.gsi.gov.uk chanceryjudgeslisting@hmcts.gsi.gov.uk Information available on the Chancery Division's website: https://www.justice.gov.uk/courts/rcj-rolls-building/chancery-division/chancery-judges- listing-office https://www.justice.gov.uk/courts/rcj-rolls-building/chancery-division/chancery-judges- listing-office Patents Court IPEC The Chancery List Office (see above) Clerk to the IPEC ipec@hmcts.gsi.gov.uk Court of Appeal The Civil Appeals Office Registry 10am-4.30pm Room E307, RCJ, WC2A 2LL More information at http://www.justice.gov.uk/courts/rcj-rolls- building/court-of-appeal/civil- division#registry http://www.justice.gov.uk/courts/rcj-rolls- building/court-of-appeal/civil- division#registry The Civil Appeals Office Listing Office 10am-4.30pm Room E307, RCJ, WC2A 2LL More information at http://www.justice.gov.uk/courts/rcj-rolls- building/court-of-appeal/civil-division#registry http://www.justice.gov.uk/courts/rcj-rolls- building/court-of-appeal/civil-division#registry

34. IP courts – where to go… CourtIssuing and filingListing Queen's Bench Division Queens Bench Action Department Room E07, Ground floor of East Block (at the South end) RCJ WC2A 2LL Fees Office Room E01, Ground floor of East Block (at the south end) Royal Courts of Justice Room WG08 West Green Building Royal Courts of Justice Supreme Court The Supreme Court Registry Parliament Square London SW1P 3BD 020 7960 1991 or 1992 More information at https://www.supremecourt.uk/contact-us.htmlhttps://www.supremecourt.uk/contact-us.html UKIPOCheck the relevant rules and litigation manual on the UKIPO's website – different rules & procedures for different rights

35. Threats Where any person threatens another person with proceedings for any infringement of a patent, a person aggrieved by the threats may bring proceedings against the person making the threats, claiming relief (declaration, injunction damages) Lawyers and patent attorneys acting upon the instructions of their clients can incur liability for making threats Defence of justification necessitates finding(s) of infringement and validity (invalidity not shown) So it is strongly recommended to remain within the safe harbour

36. Threats – what is the safe harbour? Section 70(4) Patents Act 1977: (a) a threat to bring proceedings for infringement alleged to consist of making or importing a product for disposal or using any process i.e. threats limited to an act of ‘primary’ infringement (a) a threat, made to a person who has imported a product for disposal or used a process, to bring proceedings for an infringement alleged to consist of doing anything else in relation to that product or process i.e. threats against a ‘primary’ infringer

37. Threats – take care Be careful when communicating with potential infringers and third parties about patent rights Aggressive infringers use the threats provisions as a means to cause difficulties for and amongst the patentee’s legal representatives Threats may be problematic in other countries - structure of English provisions dates to 1800s - similar structure used in some other common law countries eg Canada - many other countries have a law of unfair competition which may bite, depending upon the facts

38. Threats – the future Following years of consultation, the UK government asked the Law Commission to draft a Bill to overhaul the law relating to threats Draft bill published on 13 October 2015 - proposal to harmonise provisions across IP rights – essentially updating trade mark and designs provisions - changing the definition of threat from being of UK proceedings to being of proceedings founded upon an act of infringement in the UK - in order to catch UPs & EPs within the exclusive jurisdiction of the UPC - would curtail liability of legal advisers provided conditions met

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