UK Law and Practice Contributed by: Nicola Dagg, Jin Ooi, Ray Cheng and Nevyn Fournel, Kirkland & Ellis
2.12 Representative or Collective Action As standing is not required to initiate revocation proceedings, such proceedings could theoreti- cally be brought as collective actions; however, this has not happened yet. 2.13 Restrictions on Assertion of an Intellectual Property Right It is an actionable offence for a patent proprietor to threaten to sue for patent infringement against a suspected or potential infringer when the threat is unjustified (Section 70A Patents Act). How- ever, there are otherwise no restrictions on the owner of an intellectual property right asserting its rights against others. If a defendant believes they are being sued baselessly, they have an option to apply for summary judgment in the early stages of the case. Many telecommunications patents are encum- bered by declarations to the European Tel- ecommunications Standards Institute (ETSI), which contains a contractual derogation of the automatic right to seek an injunction for patent infringement. 3. Infringement 3.1 Necessary Parties to an Action for Infringement Only the proprietor(s) of the patent or an exclu- sive licensee can bring an action for patent infringement. Note that: • where there are multiple proprietors, a single co-owner may bring infringement proceed- ings, but the other owner(s) must be joined to the proceedings – either as a co-claimant or, if they do not wish to take part in the action, as a non-participating defendant; and
• similarly, exclusive licensees can also bring an action on their own, but the proprietor of the patent must be joined as a co-claimant or defendant. An exclusive licensee’s right to bring proceedings is limited to the rights that have been licensed. Exclusive licensees should ensure their licence is registered (for the reasons set out in 10.3 Requirements or Restrictions to License an Intellectual Prop- erty Right). 3.2 Direct and Indirect Infringement English law draws a distinction between acts of direct patent infringement and indirect patent infringement. • Direct infringement encompasses in relation to (i) product claims: acts of making, dispos- ing of, offering to dispose of, using or import- ing the product (see Section 60(1)(a)); and (ii) process claims (as set out further in 3.3 Process Patents ). • Indirect infringement is subject to a knowl- edge requirement and a “double territoriality” requirement. The question is whether a per- son supplies or offers to supply in the United Kingdom the means “relating to an essential element of the invention” for putting the invention into effect knowing (or it is obvious to a reasonable person in the circumstances) that those means are suitable for putting, and are intended to put, the invention into effect in the United Kingdom (see Section 60(2)). There is a distinction between the remedies available for direct and indirect infringement. The remedies for patent infringement are set out in 6.1 Remedies for the Patentee .
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