Williams Powell

British and European Patent and Trade Mark Attorneys

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News and commentary on IP issues

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There are two primary schools of thought in patent litigation proceedings in Europe: 1) the unitary trial system followed for example by the UK Courts, where the issues of validity and infringement of a patent are heard together in front of the same judge or judges, and 2) the bifurcated system followed for example by the German Courts, where validity and infringement are decided in separate proceedings that are heard in different Courts at different times.  There are, of course, competing views as to which system is ultimately better and in fact both routes are made available in the Rules of Procedure of the forthcoming Unitary Patent Court.  Given that the UK and Germany handle the majority of patent litigation in Europe, this is not surprising.

Leaving aside the question as to which system is ultimately best, problems can arise with bifurcated proceedings in that a trial on validity of a patent can often occur after the trial on infringement.  The unfortunate result is that a decision may be reached on infringement of a patent which is subsequently revoked or materially limited in scope.  Until a decision on validity is reached, the alleged infringer is put in a very difficult position, both legally and commercially.

The German infringement Courts, though, are known to stay infringement proceedings where it can be demonstrated that there is little chance the patent will survive the validity attack.  It is here that UK procedures are able to assist and we have been successful in doing so for clients of ours.  The UK Intellectual Property Office (UKIPO) offers a Patent Opinion service, which provides a non-binding opinion on the validity of a patent effective in the UK (of which the vast majority of European patents are).  The procedure is simple and quick, leading to a decision within three  months of filing the Request for Opinion at the UKIPO.  The procedure is entirely written with no hearing.  The requester must set out its case fully at the start and the patent proprietor is given the opportunity to respond, to which the requester can then reply.  As the procedure is straightforward, costs are only a small fraction of full litigation proceedings, in total generally between $10,000 to $20,000.

A word of caution, though, is that the UKIPO is generally conservative in its decision, so a good case must be made out from the start.  It must be borne in mind that the UKIPO may unilaterally revoke the patent following a negative opinion on validity, which is a significant sanction on the patentee.

We have been successful in stalling German patent infringement proceedings off the back on a UKIPO Patent Opinion deeming the patent to be invalid, causing the trial on infringement to be postponed until after the German Patent Court has determined the issue of validity.  This can be a very significant tactical advantage in litigation proceedings, and has the added bonus of creating official file wrapper records having statements from the patentee and the UKIPO as to the intended or appropriate scope of the claims.

As an Opinion can be requested by anyone, it is not mandatory for a litigant to make itself known to the UKIPO when requesting an Opinion.  We can be the official Requester.

In cases where a binding decision on validity is more appropriate, a formal revocation action before the UKIPO or our Courts can be expected to reach trial within 12 to 18 moths of commencement of proceedings.  We would be happy to provide you with more information of UK litigation.

A UKIPO Patent Opinion is not only potentially relevant in the course of litigation but can also be a very useful route for dealing with any question of validity of a patent.  An Opinion can also be requested on the question of infringement of a patent, for instance in connection with a prospective or theoretical product or process.

We would be very happy to discuss the UKIPO Opinion service and litigation in general should you have any questions.