UK Law and Practice Contributed by: Nicola Dagg, Jin Ooi, Ray Cheng and Nevyn Fournel, Kirkland & Ellis
guard against future infringement proceedings for patents granted at a later date. Arrow decla- rations are available in England and Wales and can be granted where “they will serve a useful purpose”. 2.3 Courts With Jurisdiction The Patents Court, a division of the High Court of England and Wales, hears most patent cases, while less complex patent cases may be heard in the IPEC. Appeals from the Patents Court are made to the Court of Appeal, and further appeals are made to the Supreme Court. 2.4 Specialised Bodies/Organisations for the Resolution of Disputes In addition to the courts, a revocation action may be brought before the UK IPO. 2.5 Prerequisites to Filing a Lawsuit A main action for patent infringement can be filed at any time once a national UK patent has been granted (and in certain circumstances before a patent has been granted if examination at the EPO has concluded but a formal grant has not yet taken place). Formal demand or warning letters are not a prerequisite for filing a claim, nor is engaging in mediation. 2.6 Legal Representation Although parties are not required to be repre- sented by a lawyer, it is uncommon that they not be. In UK patent litigation, it is most common for a party to be represented by a firm of solicitors
be made on an ex parte basis if appropriate, but it is more common for such applications to be issued inter partes within the context of ongo- ing main proceedings. In PI proceedings, patent validity is not presumed; the alleged infringer has the opportunity to present evidence to contest it during the PI proceedings. The timing and length of PI proceedings depend largely on facts and are based on commercial urgency. As a discretionary equitable remedy, courts expect that a party seeking a PI will do so expeditiously – the failure of an applicant to act with sufficient urgency in all circumstances is likely to count as a factor against the grant of the PI sought. The court will consider the factors from American Cyanamid. • Is there a serious issue to be tried? The claim must not be frivolous or vexatious. • Whether damages would be an adequate remedy. This is assessed from the claimant’s perspective, and important factors include the difficulty of ultimately assessing loss (ie, would there be an unpredictable price spiral in a pharmaceutical market if a generic was allowed onto the market) and the parties’ financial positions. • Where does the balance of convenience lie? This is a multifactorial assessment based on likely outcomes for both parties. • Any other special factors. When obtaining a PI, the claimant must provide a cross-undertaking to compensate the alleged infringer for damages in the event the injunc- tion was found to have been unjustified. The undertaking remains in place until a final order is made following the first-instance action and any appeal.
and independent barristers. 2.7 Interim Injunctions
Preliminary injunctions (PIs) are available in the UK as an interim equitable remedy. The court grants them when there is a serious issue to be tried and when the balance of convenience favours granting the PI. Applications for PIs can
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