UK Law and Practice Contributed by: Nicola Dagg, Jin Ooi, Ray Cheng and Nevyn Fournel, Kirkland & Ellis
In pharmaceutical or medical device patent cas- es, if an interim injunction affects dealings with the National Health Service (NHS), the patentee may be required to provide cross-undertakings in damages in favour of the NHS, and they would also be entitled to damages if the patentee is unsuccessful. 2.8 Protection for Potential Opponents Protective letters are not available in England and Wales. 2.9 Special Limitation Provisions The limitation period for bringing a claim for pat- ent infringement is six years from the date the cause of action accrued (under Section 2, Limi- tation Act 1980). 2.10 Mechanisms to Obtain Evidence and Information Pre-action disclosure is not available as of right. Orders for pre-action disclosure can be sought if the would-be claimant can demonstrate that this may settle the dispute without the need for pro- ceedings. The court can also order a third party to disclose documents to an applicant before proceedings have started in order to enable the applicant to commence proceedings against the appropriate party. Disclosure in the main proceedings in patent cases is most common in relation to the issue of infringement rather than validity. Disclosure by an alleged infringer on the issue of infringement is commonly provided by way of a Product and Process Description (PPD), which is a self-con- tained document provided in lieu of the relevant underlying documents and sets out sufficient information for the court to determine whether or not the patent has been infringed.
Disclosure in the main proceedings follows the provision of an “Initial Disclosure List”, which is provided by the parties when they provide their initial pleadings and sets out the docu- ments upon which they rely. Significantly, there is no requirement to disclose documents that adversely affect a party’s case as part of the Ini- tial Disclosure List. Unless ordered otherwise, the use of documents obtained in disclosure is restricted to English proceedings and cannot be used in other juris- dictions. Search and seizure orders are available as a form of interim mandatory injunction, and appli- cations are made ex parte, but these are not a regular feature of patent litigation in England and Wales. 2.11 Initial Pleading Standards To start an action, a claimant must prepare a claim form, particulars of claim and – depend- ing upon whether the claim relates to patent infringement or revocation – either particulars of infringement or grounds of invalidity. For high- value claims before the Patents Court, the par- ticulars are high-level at this early stage, but care should be taken to ensure that the pleadings comply with any relevant civil procedure rules and practice directions. This is also the case for the defendant’s response in its defence and any counterclaim, with detailed information follow- ing when the timetable to trial is set, particularly at the disclosure/discovery and expert evidence stages. Amendments to the pleaded case are permissible with the agreement of the opposing party or the court. The possibility of amending the case in a significant fashion becomes less likely as the case nears trial, owing to the greater potential prejudice to the opposing party.
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