UK Law and Practice Contributed by: Nicola Dagg, Jin Ooi, Ray Cheng and Nevyn Fournel, Kirkland & Ellis
recovery by public or social policy (see Gerber v Lectra [1997] R.P.C. 443 at 452 and Lord Wilber- force in General Tire & Rubber Co v Firestone Tyre & Rubber Co Ltd [1976] R.P.C. 197 at 212). Damages are recoverable from the application’s publication date provided that the infringing act would have infringed the claims prior to publica- tion (pursuant to Section 69 of the Patents Act 1977). Exemplary damages are available in cer- tain circumstances (such as where the infringe- ment is oppressive, arbitrary or unconstitutional). The court must also consider any unfair profits made by the infringer where they have infringed with knowledge (pursuant to Article 13 of the IP Enforcement Directive Regulations 2006, which has been implemented in the UK by Article 3 of the Intellectual Property (Enforcement, etc) Regulations 2006). Interest may be awarded on all sums payable from the date of each infringe- ment complained of. An account of profits is supposed to deprive the defendant of the profits they have made improp- erly by way of infringement and transfer any of that benefit to the claimant. There may be a need for the apportionment of profits if only part of a product or process is infringed upon. The quan- tum of damages or account of profits is decided in a separate hearing following the main infringe- ment proceedings. Given the time and evidence involved in damages inquiries, the parties often reach a settlement prior to the quantum trial. Order for Delivery Up or Destruction Pursuant to Section 61(1)(b) of the Patents Act 1977, the patentee who successfully sues for infringement can obtain an order for the destruc- tion or delivery up of infringing goods in the pos- session of the defendant. This usually includes goods in the UK and in the defendant’s custody, power or control on the day that the order is made. The infringing party may be ordered to
confirm that it has done so and/or what steps it has taken to comply and will be ordered to dis- close any infringing goods in its possession or power. An order for delivery up and destruction may be stayed pending appeal. Relief for Infringement of Partially Valid Patent If a patent is found to only be partially valid, a patentee may still obtain relief in respect of the valid parts of the patent, including damages and an account of profits (pursuant to Section 63(1) of the Patents Act 1977). Certificate of Contested Validity The patentee is entitled to a certificate of con- tested validity where they have successfully defeated a claim of invalidity. At the court’s dis- cretion, this can carry cost implications for future challenges to the patent. Costs The successful party may also be entitled to recover their costs (or a proportion of their costs) from when the action is filed (including court fees). Costs are discussed further in 8.3 Responsibility for Paying the Costs of Litiga- tion . 6.2 Rights of Prevailing Defendants A successful defendant has the same rights as a prevailing claimant, as applicable. For instance, if the defendant is a patentee and the claimant fails to show invalidity/non-infringement, the defendant would have each of the remedies set out in 6.1 Remedies for the Patentee . Further relief that can be sought includes declarations of non-infringement and Arrow-style declarations (as referred to in 2.2 Third-Party Remedies to Remove the Effects of Intellectual Property ).
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