Enforcing Patent Rights

Section 60(1) of the Patents Act 1977 provides that a person directly infringes the patent of a product if they make the product without the consent of the proprietor of the patent. In this case, Ababygirl, by making a ‘knock-off’ version of Abigail’s product, has directly infringed the patent rights. In this current case, the requirement is to determine the most convenient and appropriate forums available to Abigail choose to enforce her intellectual property rights. Seeking UK dissertation help is going to assist Abigail in navigating the complexities of patent law and also in identifying the optimal legal avenues for securing her intellectual property.

Abigail can opt for one of the following choices: 1); the Comptroller Office; 2) the Patents Court; or 3) the Intellectual Property Enterprise Court (IPEC). Abigail can also consider the option of an Alternative Dispute Resolution.

The Patents Act 1977, s61(3) enables the parties in a dispute to refer to the Comptroller to decide on patent disputes about patents. The Comptroller mostly hears disputes regarding ownership, licences or technical issues of a patent. The Comptroller can determine infringement only when Abigail and Ababygirl agree to refer the dispute to the Comptroller (S61(3)). The Comptroller can decline this if they consider the matter to be appropriate for the courts under Section 61(5). The costs of the proceedings before the Comptroller are less expensive than those in the courts.

The Comptroller has a tribunal role. It does not provide guidance on matters of substantive patent law. As such, it may refer the matter to the courts as the matter involves determining direct infringement claims. The Patents Act 1977, SS 74A and 74B provides that the Comptroller can give non-binding opinions on validity and infringement and reviews of opinions in the current case. This is supported by the case of DLP Limited, where Kitchen J confirmed that the hearing officer in the Comptroller Office has the role conducting reviews of opinions and they can only set the opinions in case of error of principle or a wrongly made conclusion.

Department of Trade and Industry, Intellectual Property and Innovation (H.M Stationery Office 1986) 25
DLP Limited [2007] EWHC 2669 (Pat).
Intellectual Property Office, ‘Patents hearing manual‘ accessed 27 October 2021 .

As one can see, the power of the Comptroller is limited as in determining a substantive area of law. They also cannot grant injunctions and thus, the Comptroller Office is not used often for such case. In this case, Abigail must consider taking the matter to either the Patents Court or IPEC and may choose between them based on the facts and situations surrounding the concerned disputes.

IPEC handles simpler or smaller value claims especially involving small to medium sized enterprises. The IPEC has the multi-track and the small claims track procedure. The latter concerns simple cases with a lower level of damages. The former is capped at up to £500,000 compensation claim and £50,000 for the legal costs and at £25,000 for proceedings regarding damages or account of profit. The latter is capped at £10,000 in compensation. Thus, IPEC hears more of the straightforward cases with a lower monetary value. The Patents Court hears complex or commercially significant claims especially involving larger companies. It hears cases where the amount sought is over £500,000 unless the parties refer it to IPEC or the court itself transfers the case upon the request of a parties.

Based on the nature of the current case, it is advisable for Abigail to take the matter to IPEC. IPEC will be appropriate as the case seems a simple case of direct infringement. As Abigail’s business has just taken off after the invention of the product, the matter may fall within the compensation cap of the small claims track procedure.

In terms of a particular of claim and filing the claims, the Patents Court will require Abigail in her infringement action to set out the particulars of claim with the concise statement of the facts verified with a statement of truth. The particulars will be provided as a separate document with details of the infringement (as direct infringement) and identification and example of the infringement incidents. These

Blu Tirohl, Law for Artists: Copyright, the Obscene and All the Things in Between (Taylor & Francis 2014) 167.
HM Courts & Tribunal Service, ‘The Intellectual Property Enterprise Court Guide’ accessed 27 October 2021 .
HM Courts & Tribunals Service, ‘Patents Court’ accessed 27 October 2021 .

requirements must be adhered to as provided under Part 63.6 Civil Procedure Rules and Practice Direction 63. In comparison, as per Part 63.20, the statement of case will set out concisely the facts and arguments. This will also mean that it includes claim construction allowing a detailed case management at an early stage in the proceedings. Further, IPEC procedure does not require pre-action protocol, which saves time. Considering this factor, Abigail must approach the IPEC.

Based on the discussion above, Abigail can understand that the key differences between the Patents Court and IPEC are that the statement of case required in the latter is more detailed, enabling IPEC to consider the matter in question more fully during the case management conference stage in order to determine the next steps before the trial.

If Abigail does not desire to opt for litigation or the court proceedings as stated above, she may choose to go with an Alternative Dispute Resolution, such as mediation. Mediation is the most popular form of ADR as it enables a dialogue that can lead to a to a settlement sooner than a litigation. Abigail can discuss the matter in person with Ababygirl saving the time to get to a trial and having a realistic assessment of risks and costs involved in case of non-settlement. Mediation can also happen during the procedural steps if the matter proceeds with litigation or before an appeal. Even the court may encourage mediation and a refusal to mediate can result in costs sanctions.

In IP related cases such as the current matter, IP disputes involve issues less susceptible to a negotiated settlement than a purely financial claim. Thus, it will be more desirable for Abigail to seek injunctive relief. However, Abigail must also consider that there is a mediation service offered by the Intellectual Property Office (UKIPO) to facilitate resolution of IP disputes, such as the current matter. Mediation will ensure reputation of the parties are intact, reality check on the parties, creative solutions, develop new relationships, and save expenses and costs among others.

Wright v Michael Wright Supplies Ltd and another [2013] EWCA Civ 234; Halsey v Milton Keynes General NHS Trust [2004] EWCA Civ 576
Nick Gardner, ‘Mediation and its relevance to intellectual property disputes’ (2014) 9(7) Journal of Intellectual Property Law & Practice 565-574.

As the current matter involves about ownership, mediation will be appropriate without involving the complexities and costs of litigation.

A contract is between the parties who signed the contract. This means that the obligations of the parties are stipulated only in the contract. Only the parties can enforce the contract. The privity of contract, thus, offers certain advantages while taking an action based on breach of contract rather than pursuing action based on criminal law or civil actions such as torts.

For a tort action, there must be a civil wrong. It requires a proof of a duty of care (Donoghue v Stevenson) where the harm is caused due to the breach of such duty (Caparo v Dickman [1990] 2 AC 605). The breach of a duty is primarily fixed by law. In contract law, the duties of the parties are derived from the contract the parties entered into. Such duty is only owed by the parties to each other. For an action for breach of a contract, the parties are required to show the contract is a valid contract and a party has failed to perform the obligations in the contract. This means that the legal obligation arises from the agreement between the parties and not stipulated by the law as is required in torts.

Due to the privity of the contract, the damages are fixed by the agreement. This means that the measure of the damages is defined by the kind of breach provided in the contract (enabling to place the innocent party in the position they would have been in had the contract was properly performed). However, in tort, the damages depends in the extent of the harm caused by applying tests such as the degree of

Intellectual Property Office, ‘Patents: Deciding Disputes’ accessed 27 October 2021 .
Johnston Deakin and Markesinis, Markesinis and Deakin’s Tort Law (5th ed., Oxford University Press 2003) 74.
Donoghue v Stevenson [1932] AC 562.
Caparo v Dickman [1990] 2 AC 605.
Johnston Deakin and Markesinis, Markesinis and Deakin’s Tort Law (5th ed., Oxford University Press 2003)
Robinson v Harman [1848] 18LJ Ex 202

foreseeability or risk of harm balanced against the benefits if the harm was not caused.

In terms of damages, tort action is limited to monetary awards and may be punitive damages. A breach of contract action can lead to a monetary award, specific performance (where the obligation/subject matter is unique and damages is not enough), or a recission of the contract (cancellation of a contract entered into through misrepresentation).

Just like in tort action, a strict liability is important for action under criminal law. If a party is found liable, it is the state that will impose the punishment. This is different from a breach of contract that is between private parties. This means a party can directly take action against the other party. The advantage that a breach of contract claim offers is that the standard of proof is the balance of probabilities, where a criminal proceedings requires proving beyond reasonable doubt, which will be more challenging.

The Company is the sole owner of any of its intellectual property, including but not limited to inventions, designs, reports, manuals, papers or any other form of information relating to the products or services of the Company. The Company owns any intellectual property developed by the employee during their employment. No employee has a claim over any intellectual property of the Company. Any intellectual property produced or formulated by the employee during the term of this Agreement shall be freely communicated to the Company and shall be and remain the property of the Company.

Johnston Deakin and Markesinis, Markesinis and Deakin’s Tort Law (5th ed., Oxford University Press 2003), 80.
Falcke v Gray (1859) 4 Drew 651.
Salt v Stratstone Specialist Limited T/A Stratstone Cadillac Newcastle [2015] EWCA Civ 745.
See Re H (Minors) [1996] AC 563.
See Health and Safety Executive, ‘Proving the offence’ accessed 27 October 2021 .

Take a deeper dive into Comparative Analysis of Patent Eligibility United States vs Europe with our additional resources.

Bibliography

Legislation

The Patents Act 1977

Cases

DLP Limited [2007] EWHC 2669 (Pat).

Donoghue v Stevenson [1932] AC 562.

Caparo v Dickman [1990] 2 AC 605

Falcke v Gray (1859) 4 Drew 651.

Halsey v Milton Keynes General NHS Trust [2004] EWCA Civ 576

Re H (Minors) [1996] AC 563.

Robinson v Harman [1848] 18LJ Ex 202

Salt v Stratstone Specialist Limited T/A Stratstone Cadillac Newcastle [2015] EWCA Civ 745.

Wright v Michael Wright Supplies Ltd and another [2013] EWCA Civ 234

Books

Deakin J and Markesinis, Markesinis and Deakin’s Tort Law (5th ed., Oxford University Press 2003)

Department of Trade and Industry, Intellectual Property and Innovation (H.M Stationery Office 1986)

Tirohl B, Law for Artists: Copyright, the Obscene and All the Things in Between (Taylor & Francis 2014)

Journals

Gardner N, ‘Mediation and its relevance to intellectual property disputes’ (2014) 9(7) Journal of Intellectual Property Law & Practice 565-574

Websites

Health and Safety Executive, ‘Proving the offence’ accessed 27 October 2021

HM Courts & Tribunal Service, ‘The Intellectual Property Enterprise Court Guide’ accessed 27 October 2021 .

HM Courts & Tribunals Service, ‘Patents Court’ accessed 27 October 2021 .

Intellectual Property Office, ‘Patents: Deciding Disputes’ accessed 27 October 2021 .

Intellectual Property Office, ‘Patents hearing manual‘ accessed 27 October 2021 .

A patent can be infringed either directly or indirectly. The current problem question is related to direct infringement of a patent belonging to Abigail. For addressing a patent infringement case, the legal framework offers different forums to a claimant to act against an infringer. The current case involves determining the appropriate forum for Abigail to act against Ababygirl.

Considering the facts of the current case, this essay will consider the option of the Comptroller Office; the Patents Court; or the Intellectual Property Enterprise Court (IPEC). There could also be a consideration of employing an Alternative Dispute Resolution if Abigail desires a non-litigation approach.

The essay will determine the scope of authority of the Comptroller Office in regard to the current case and determine whether it would be advisable for Abigail. For instance, the Comptroller office may be appropriate as the current case ownership of a patent. Further, the essay will also discuss the limitation, such as determining a substantive area of law or granting injunctions.

A similar discussion will also be conducted concerning IPEC and the Patents Court. The former deals with smaller value claims and the latter deals with claims of higher value and thus, with complex cases. Points such as this would help differentiate that the former may be more appropriate for the current case. Similar differentiation will also be made in terms of the Civil Procedure Rules applicable.

The essay will also review the appropriateness of ADR, particularly mediation that is also offered by UKIPO and may be encouraged by the courts. It will highlight the advantages such as saving time to get to a trial; a realistic assessment of risks and costs; or an open dialogue between the parties.

On a separate note, the essay will highlight the advantages arising from privity of contract while taking an action. For example, a contract is unlike tort that requires, rather than validity of the contract, proof of duty of care fixed by law and not by parties in a contract. The essay will also highlight the requirement of strict liability is criminal action, which is not so in a breach of contract claim. It will highlight the standard of proofs needed to show the advantage of a breach of contract claim.

Finally, this essay will provide a sample of a contract clause that will enable Abigail to protect her IP rights effectively and avoid future disputes. For example, the language will include terms such as exclusive ownership of its IP rights including those her employees will create during their employment.