UK Law and Practice Contributed by: Nicola Dagg, Jin Ooi, Ray Cheng and Nevyn Fournel, Kirkland & Ellis
• The “Gillette” defence, where the alleged infringer argues the infringing product imple- ments the prior art (so that if the product infringes, the patent must be invalid). • In the context of equivalents, the courts have applied the “Formstein” defence (which has origins in German law), where the alleged infringer argues that the equivalent is not patentable. • Consent, repair and/or exhaustion. • “FRAND” defence for infringement of stand- ard essential patents. Here, the English courts have shown a willingness to determine the terms of a FRAND licence covering the pat- ents rather than enforce an injunction. 3.6 Role of Experts Expert evidence on patent infringement and validity issues is key in English patent litigation and can only be adduced with the court’s per- mission. Ordinarily, each party calls their own expert witness(es) (though the court may direct that evidence should be given by a single joint expert, which is rare). The overriding duty of an expert witness is to assist the court on matters within their exper- tise, and they must remain impartial. In cases with more than one expert on each side, the court may consider that experts should have the opportunity to discuss their views with the other experts on the same side as they would have in the hypothetical skilled team. It is rare for the court to appoint an expert, but it is possible. The court may appoint scientific advisers; however, this is also rare. 3.7 Procedure for Construing the Terms of the Patent’s Claim The claims of a patent are construed as part of the infringement action (alongside any counter- claim for invalidity). Procedurally, once the par-
ties to the action file their initial claims, defences and/or counterclaims, the court will make orders requiring the parties to file more detailed “State- ments of Case”, which will address matters of claim construction on infringement and invalid- ity. The key to claim construction issues in Eng- lish litigation will usually be the reports of the expert witnesses. 3.8 Procedure for Third-Party Opinions The English court does not usually, of its own motion, seek or receive third-party opinions in a patent infringement or invalidity action (see also 3.6 Role of Experts ). Revocation of a patent can be sought before the UK IPO or the courts. A claim for revocation can be made pre-emptively in order to clear the way and obtain freedom to operate or can be raised as a counterclaim to infringement proceedings. A party seeking revocation of a patent will seek, by way of remedy, an order of the court for the unconditional revocation of the patent and may also seek a declaration by the court that the pat- ent is invalid. Revocation of a patent by the court or the UK IPO has effect ab initio – ie, the patent is treated as if it had never been granted. There are no formal standing requirements with respect to a revocation action – any person can apply to revoke a patent, regardless of inten- tion and even in the absence of any commercial interest in the revocation of that patent. 4. Revocation/Cancellation 4.1 Reasons and Remedies for Revocation/Cancellation The court or the UK IPO may revoke a patent on any of the following grounds, set out in Section
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