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Procedures of a patent trial and settlement

Bringing or defending a patent claim before the courts can be a daunting prospect, not least because of the complicated nature of patents and patent law. It is vital that businesses understand the procedures that govern how patent trials operate.

This guide is based on UK law. It was last updated in August 2018.

Special procedural provisions for intellectual property rights

Civil litigation in England and Wales is governed by the Civil Procedure Rules (CPR). The CPR covers all stages of court proceedings, from pre-action correspondence to the award and payment of a final costs order. Proceedings in the UK Supreme Court are subject to specific procedural rules: Rules of the Supreme Court.

Part 63 of the CPR supplements and alters the general procedural rules in relation to patent disputes, and other intellectual property rights,. Furthermore, both the Patents Court and the Intellectual Property Enterprise Court (IPEC) have specific court guides which include additional procedural and practical requirements.

The civil litigation system in England and Wales is configured to hear disputes in a single substantive oral trial, which in the case of patent disputes includes determination of both infringement and validity. It is typical, including in technically complex IP cases, for a trial to be divided into separate liability and quantum stages. Usually, procedural stages regarding quantum only begin after the relevant court has determined liability.

In the initial stages of a proceeding on liability, and usually following a case-management conference at which both parties appear, a judge will issue case-management directions. These directions, many of which can be agreed between the parties, define pre-trial protocol and various deadlines for the parties and are ordinarily tailored to the particular dispute.

Decision makers

The first-instance trial of a patent matter under the Patents Act 1977 is heard and determined by a single judge.

Judges typically have lengthy careers as senior advocates, or barristers, before they are appointed, and the judges in the Patents Court and IPEC tend to be specialists in IP matters. Some judges have more technical expertise than others: for example, in addition to legal studies, some judges have studied or practised in scientific and/or technical fields.

Cases in the Patents Court are allocated to specific judges based on the level of complexity such that more technically experienced judges will receive more complex matters. Although IPEC is tailored to smaller IP claims, the judges have similar technical expertise.

Settling the case

There are no formal mechanisms for settling a case, such as court-ordered mediation, court-facilitated mediation or mandatory settlement conferences. However, parties are entitled to settle the dispute at any stage of the proceedings and by any means they wish, such as through negotiation or facilitated mediation.

Parties typically settle on confidential terms but will need to consider relevant UK and EU competition laws and regulations to ensure that any settlement is legally compliant.

Other court proceedings

National courts, including the Patents Court and IPEC in England and Wales, retain exclusive jurisdiction over matters relating to patent infringement. However, the prospect of concurrent proceedings relating to validity – for example cases brought before the European Patent Office (EPO) as well as the UK courts – is inherent in the European Patent Convention (EPC) system, and has been the subject of debate before the Court of Appeal in London.

The Court of Appeal has ruled that where there are concurrent validity proceedings before the courts in England and Wales and the EPO, in the absence of any other factors, a stay of the UK proceedings is the "default" option. The rationale is that there is no justification for two sets of proceedings simply because the EPC allows for it.

It is incumbent upon the party opposing the grant of a stay to explain why it should not be granted. However, the court will always take into account where the balance of justice lies.

For example, in the event that allowing the UK court to proceed with an infringement action might allow the patentee to obtain monetary compensation, such as damages or an account of profits, which is not repayable if the patent is subsequently revoked, the interests of justice would tend to support the grant of a stay. However, a patentee in this situation might seek to mitigate the effect of this potential injustice by offering a suitable undertaking to repay the potential damages that might be suffered by the defendant.

Further, if commercial certainty would be achieved before the UK courts earlier than in the EPO, the interests of justice would tend to support the progressing of the UK proceedings even in the face of concurrent proceedings.

Decisions of courts in other jurisdictions as well as the Opposition Division of the EPO are not binding on UK judges so it can often be necessary to proceed with parallel litigation.