Key issues before launching patent infringement action
Key issues before launching patent infringement action

The following IP practice note provides comprehensive and up to date legal information covering:

  • Key issues before launching patent infringement action
  • What is the alternative?
  • Housekeeping and formalities for the patent
  • Set up litigation procedures to keep your house in order
  • Disclosure
  • Privilege
  • Threats
  • Who did it?
  • Check the patent claims
  • How much?
  • More...

This key issues Practice Note aims to provide a checklist of practical matters to consider before starting patent infringement litigation in the English courts.

What is the alternative?

  1. Have you considered alternative dispute resolution (ADR), whether by mediation, arbitration or expert determination? The courts are placing greater emphasis on asking the parties whether they have looked at this, so it needs to be considered and ideally documentation that records the decision on whether to use ADR to resolve your dispute should be generated. The court also has the power to stay a case while the parties attempt ADR, if the court thinks it appropriate.

  2. If you consider mediation, there are a number of highly regarded individuals and organisations that can assist in mediation. They vary quite widely in price range and specialisation. See Practice Note: IP and mediation for more details on how to approach mediation

Housekeeping and formalities for the patent

  1. Make sure the patent has been maintained up to date. Check the register of patents and ensure its renewal fees are paid to date and that the patent belongs to the correct person

  2. If a licensee is going to take action against the infringer, ideally an exclusive licensee should be entered on the register of patents (otherwise there are limits on costs recoverability even if it wins, if the licence was not registered in

Popular documents