Patent Litigation - 5 "Legal" Tips to Consider
- Is the patent valid?
Just because a patent has been granted does not mean that it should have been.
Unfortunately, it is the case that patents sometimes get granted, even though they do not satisfy the conditions for registration. For example, a patent may not disclose a "new" invention because, prior to the date the patent was filed (or any other earlier priority date claimed in the patent application) the invention was made available to the public somewhere in the world (e.g. via an earlier patent application, or by written or oral description, or by use in some way).
If you are a patent owner and you are considering suing a third party for infringement of your patent, it is always prudent to assess the validity of your patent before commencing infringement proceedings. If the Court declares that your patent is invalid then you will not only lose the patent, but you will also have to pay the other side's legal costs incurred in defending the legal proceedings. Likewise, if you are accused of infringing a patent then it is always worth assessing whether or not the patent should have granted in the first place.
- Who is doing what and where?
Patents are granted on a national basis. It is quite possible that, for example, a product is being manufactured in one country (e.g. China) and is then being imported and sold in another country (e.g. the UK). Also, the person manufacturing the product may not be the same person importing and selling the product.
It is important to identify who is doing what and where. In the above scenario, if you wanted to stop the products being manufactured you would have to take patent infringement proceedings in China, assuming that you own a Chinese patent. In order the stop the acts of importation and sale in the UK then you would have to take legal proceedings in this country, again assuming that you have a UK patent.
- Get an expert on board early.
Expert evidence can often be the determining factor in Court proceedings involving patents.
For example, as a patent owner, you may want to present expert evidence to support your view that the patent discloses an invention that is new and not obvious. If you are the defendant, you might want to present expert evidence to the contrary.
As a patent owner, you may also want an expert to give their opinion as to whether or not the defendant's product/process infringes your patent. If you are the defendant, you may want to put in expert evidence to explain why your product/process does not infringe the patent.
By getting an expert on board you are able to assess whether or not your arguments are likely to succeed before the Court. You can get an objective opinion on the likelihood of success/failure and the expert may be able to help you to identify potential weaknesses in your case and how, in some cases, they might be overcome.
In some industries, the number of experts who are appropriately skilled and have experience in giving evidence before a Court in a patent dispute is very low and thus the earlier you can retain a suitable expert the better. You don't want a situation where the other side have managed to retain the key expert that you want because they instructed that person before you did.
- Clearing the way
If you are aware that a rival business has a patent, but you don't think that your product or process infringes their patent, then it is always possible for you to seek a declaration of non-infringement from the Court.
In some cases you may even believe that the patent was wrongly granted in the first place and thus you may want to challenge the validity of the patent.
A challenge to validity can be made before the Patent Office or the Court. If the patent is a UK patent that was obtained as a result of a European patent application filed at the European Patent Office then one option is to file opposition proceedings within nine months of the patent being granted. However, in our experience it is often much quicker to challenge the validity of the UK patent in the UK (whether via the Patent Office or the Court) than by way of opposing the grant of the patent at the European Patent Office. As the English Courts have said in the past "business needs certainty" and challenging the validity of a patent in this country is often the quickest way of achieving certainty.
- What if you want to avoid legal proceedings?
If you think that someone is infringing your patent, or you believe that somebody else's patent will prevent you from doing something you want to do (yet you believe the patent is invalid), then rather than commencing legal proceedings one option is to write to the UK Patent Office and seek an expert independent opinion from one of their senior examiners.
What the Patent Office will do is give their view as to whether they think the patent is valid or infringed. These opinions are not legally binding and do not prevent you commencing Court proceedings, but they may assist you to try and negotiate a settlement with the other side. They may also help you decide on whether you think your case is a good or bad one, and therefore whether you want to go down the route of commencing or defending Court proceedings.
Ashfords is regulated by the Solicitors Regulation Authority. The information in this article is intended to be general information about English law only and not comprehensive. It is not to be relied on as legal advice nor as an alternative to taking professional advice relating to specific circumstances.
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