This Practice Note discusses direct, indirect and contributory infringement of patents. It sets out how the Patents Act 1977 (PA 1977) defines prohibited (ie infringing) acts, such as making a product or using a process, and explains how the courts decide whether that product or process falls within the scope of the patent. This Practice Note also addresses key matters relevant to patent infringement proceedings, such as who can sue, when to sue and the burden of proof. Introduction to patent infringement In order to establish infringement of a patent it is necessary to prove that there has been a prohibited (ie infringing) act committed in relation to a product or process which falls within the scope of the patent. These elements of patent infringement are discussed in Infringing acts and How the courts decide whether a product or process falls within the scope of a patent below. It is important to be aware that there are also certain permitted, non-infringing acts (such as those done for private, non-commercial, or experimental purposes) and statutory defences to patent infringement.

This Flowchart provides an overview of a UK patent infringement action with links to relevant Practice Notes, Precedents and court forms. The first stage covers claim preparation and pre-action matters. The second stage covers the letter before action alleging infringement. The third stage covers commencing proceedings. The fourth stage covers case management and allocation. Stage five covers disclosure of documents and evidence of fact and of experts. The sixth stage covers trial preparation and trial and the seventh stage covers post-trial matters. The Flowchart covers proceedings brought in the Intellectual Property List in the Business and Property Division of the High Court, including the Intellectual Property Enterprise Court (IPEC) sub-list and the Patents Court sub-list. Stage 1—preparing to bring a claim and pre-action matters Claim preparation and pre-action matters—Practice Notes • Patent infringement • Patents—entitlement and co-ownership • Exceptions and defences to patent infringement • Patent invalidity—grounds of revocation • IP and mediation • Interim and final injunctions—overview Claim

The rationale behind patents, which protect new inventions, is that they encourage innovation because they reward the patent owner with 20 or more years during which they can prevent others from infringing their patent, that is, making, using, importing or selling the invention without permission. For more information, see Practice Note: Patent infringement. In the UK, patents are granted following a formal application and examination procedure. During this process (which is referred to as patent prosecution), the patent application is examined by a patent examiner at the relevant intellectual property office (eg the UK Intellectual Property Office or European Patent Office (EPO)) to check that the invention claimed is patentable (ie satisfies the patentability criteria) and that the patent application meets certain formal requirements. For more information, see Practice Notes: Patentability and exclusions from patentability, Patent applications—how to obtain patent protection in the UK and European patents—application procedure. Following Brexit, the UK remains part of the European patent system and can continue to be designated in European patent applications because the EPO and the European Patent

Grounds of patent revocation Patents may be revoked (ie removed from the register of patents) if they are held to be invalid in some respect. If a patent is revoked it is treated as if it never existed. The grounds of revocation are set out in section 72 of the Patents Act 1977 (PA 1977). These grounds include that the invention is not a patentable invention (eg it is not new, inventive or capable of industrial application) and that the specification does not disclose the invention clearly and completely enough for it to be performed by a person skilled in the art. This is known as ‘insufficiency’. This Practice Note discusses patent invalidity for insufficiency. For more information about the other grounds of invalidity, see Practice Notes: • Patent invalidity—grounds of revocation • Patent invalidity—obviousness • Patent invalidity—lack of novelty Claim construction/scope The court must construe the claims of a patent, ie determine their meaning and scope, in order to determine whether the claim is valid and/or infringed. For more information about claim construction, see Practice Note:

Grounds of patent invalidity and revocation Patents may be revoked (ie removed from the register of patents) if they are held to be invalid in some respect. If a patent is revoked it is treated as if it never existed. The grounds of patent revocation (which are also the grounds on which the validity of a patent may be challenged) are set out in section 72 of the Patents Act 1977 (PA 1977). One of the grounds of revocation is that the invention is not a patentable invention. PA 1977, s 1 provides that a patentable invention is one that: • is new (ie it was not ‘anticipated’) • involves an inventive step (ie it was not ‘obvious’) • is capable of industrial application • is not excluded from patentability by PA 1977, ss 1(2)–(3) or 4A This Practice Note discusses patent invalidity due to a lack of novelty, which is sometimes referred to as anticipation. For information about the other grounds of patent revocation and a detailed discussion regarding invalidity due to obviousness and insufficiency,

Grounds of patent invalidity and revocation A patent may be revoked if it is held to be invalid on one or more grounds. Revocation has retrospective effect, meaning that the patent is treated as if it had never been validly granted. The grounds of patent revocation (which are also the grounds on which the validity of a patent may be challenged) are set out in section 72 of the Patents Act 1977 (PA 1977). One of the grounds of revocation is that the invention is not a patentable invention. PA 1977, s 1 provides that an invention is patentable only if it: • is new (ie it was not anticipated by the prior at) • involves an inventive step (ie it was not obvious to the person skilled in the art) • is capable of industrial application, and • is not excluded from patentability by PA 1977, s 1(2)–(3) or 4A Another ground of revocation is that the specification does not disclose the invention clearly and completely enough for it to be performed by a person skilled

This Agreement is dated [insert date] Parties 1 [insert name] [of OR a company incorporated in [insert jurisdiction, eg England and Wales] under number [insert registered number] whose registered office is at] [insert address] (Licensor); and 2 [insert name] [of OR a company incorporated in [insert jurisdiction, eg England and Wales] under number [insert registered number] whose registered office is at] [insert address] (Licensee), each of the Licensor and the Licensee being a party and together the Licensor and the Licensee are the parties. Background (A) The Licensor is the [owner of OR applicant for] the Licensed Patents and possesses the Licensed Know-How. (B) The Licensor wishes to grant a licence to the Licensee to exploit the Licensed Patents and the Licensed Know-How and the Licensee wishes to accept that licence subject to and in accordance with the terms of this Agreement. The parties agree: 1 Definitions and interpretation 1.1 Definitions In this Agreement: Affiliate • means any entity that directly or indirectly Controls, is Controlled by, or is under common Control with, another entity; Business Day • means a day other than a Saturday, Sunday or public holiday in England; Commencement Date • means [the date of this Agreement OR [insert date]]; Confidential

This Agreement is dated [insert date] Parties 1 [insert name] [of OR a company incorporated in [insert jurisdiction, eg England and Wales] under number [insert registered number] whose registered office is at] [insert address] (Licensor); and 2 [insert name] [of OR a company incorporated in [insert jurisdiction, eg England and Wales] under number [insert registered number] whose registered office is at] [insert address] (Licensee), each of the Licensor and the Licensee being a party and together the Licensor and the Licensee are the parties. Background (A) The Licensor is the [owner of OR applicant for] the Licensed Patents and possesses the Licensed Know-How. (B) The Licensor wishes to grant a licence to the Licensee to exploit the Licensed Patents and the Licensed Know-How, and the Licensee wishes to accept that licence subject to and in accordance with the terms of this Agreement. The parties agree: 1 Definitions and interpretation 1.1 Definitions In this Agreement: Affiliate • means any entity that directly or indirectly Controls, is Controlled by, or is under common Control with, another entity; Applicable Laws • means all applicable laws, statutes, rules, regulations, and guidelines, including all applicable standards or guidelines promulgated by any applicable

Precedent Summary Letter of claim—patent infringement This is a Precedent ‘outline letter of claim’ as it is called in the Civil Procedure Rules, also known as a ‘letter before action’, or a ‘cease and desist letter’. It is for alleged infringement of patents. Drafting Notes are included to explain how to balance the Practice Direction Pre-Action Conduct and Protocols requirements of a letter of claim with the unjustified threats provisions under section 70 of the Patents Act 1977. Suggestions for draft undertakings are also included. Particulars of Claim—patent infringement claim This is a Precedent Particulars of Claim for a patent infringement action. Particulars

A patent search is the process of systematically reviewing existing patents and published patent applications to assess whether an invention is new and potentially patentable, and to identify relevant prior art. It is a descriptive term used in patent practice across England and Wales, Scotland, Northern Ireland and Ireland, rather than a concept defined in statute.In UK and Irish practice, patent searches are commonly conducted before filing a patent application with the UK Intellectual Property Office, the European Patent Office or the Intellectual Property Office of Ireland. They are also used in freedom-to-operate analyses, due diligence, infringement risk assessments, portfolio management and contentious patent proceedings.Searches may cover national patent registers, European patents, international (PCT) applications and foreign patent offices’ databases, as well as non-patent literature. While searches are often carried out by specialist patent attorneys or search firms, the scope and reliability of the search, and any opinions on patentability or infringement, require careful legal evaluation.Across the UK and Ireland, the underlying concept and practice of patent searching are broadly consistent, although procedures and official search reports differ between patent offices.

This Practice Note explains how long patents last and how they must be maintained by renewal in order to last that long. It also explains how to restore a patent that has lapsed or will soon lapse. Obtaining a patent in the UK There are two types of patents available in the UK: • UK national patents—these are granted by the UK Patent Office under the Patents Act 1977 (PA 1977) • UK designations of European patents (EP(UK) patents)—European patents are granted by the European Patent Office (EPO) under the European Patent Convention (EPC). An EP(UK) takes effect automatically in the UK upon publication of the mention of grant. The UK is an EPC contracting state, as are several other non-EU countries, including Norway, Switzerland and Turkey, and may therefore be designated in European patent applications A patent applicant can also use the Patent Cooperation Treaty (PCT) system to apply to the World Intellectual Property Organization for international coverage. There are two phases in a PCT application—the international phase and the national (or regional) phase.

This Practice Note introduces the requirements under the Patents Act 1977 (PA 1977) and European Patent Convention (EPC) for something to be considered patentable. What is a patent? Patents protect new inventions and may cover aspects such as how things work, what they are made of and how they are made. The rationale behind patents is that they encourage innovation by rewarding the patent owner (patentee) with up to 20 years during which they can prevent others from making, using, importing or selling the invention without permission (even if they are not deliberately infringing). For more information about what patents are and what they protect, see Practice Note: Introduction to patents. Patents are registered rights which are granted following a formal application and examination procedure. There are two types of UK patents: • UK national patents (UK patents)—these are examined and granted by the UK Intellectual Property Office (IPO) under the provision of the PA 1977 • UK designations of European patents (EP(UK) patents)—these are examined and granted by the European Patent Office (EPO) under the provision of the EPC and validated in