Monday, March 9, 2020

Gilbert and Hillson on Remedial Flexibility in the U.K.

Penny Gilbert and William Hillson have published an interesting paper titled Exceptions that prove the rule--flexibility of remedies for patent disputes in the UK courts, in the January 2020 issue of the German journal Mitteilungen der deutschen Patentanwälten (pages 1-5).  The article is in English.  Here is the abstract:
The UK courts have traditionally adopted a flexible, case-by-case approach to granting remedies for patent disputes, in which the specific circumstances of the patentee, infringer and (increasingly) third parties are taken into account.  UK judges have been willing to stay, vary  or grant exceptions from final injunctions or orders for product recall/destruction, or even grant wholly new remedies, where this is deemed necessary to properly balance the legitimate interests of all parties.  In some circumstances, this may mean that certain infringing acts are permitted to continue.
I don't know how widely this journal circulates outside of Germany, but if you're interested in gaining a better understanding of the topic, you should try to get a copy.  As the abstract states, the article discusses the U.K. practice regarding injunctions, which in recent years sometimes involves a consideration of proportionality.  This will occasionally lead to a stay or carve-out of an injunction, as in Edwards LifeSciences LLC v. Boston Scientific Scimed Inc. (see previous discussion here) and Regeneron v. Kymab and Novo Nordisk (discussed here), though in other cases not (as in TQ Delta v. ZyXel, discussed here).  One of the major issues in Germany right now is whether to amend the Patent Act to make it explicit that courts may grant these stays pending design around or sell-off (known as Aufbrauchfristen)--though as noted previously (see, e.g., here and here), German courts may remain unenthusiastic about doing so, and the commentary accompanying the draft legislation in Germany generally disavows consideration of third-party interests other than in connection with compulsory licensing.  The Gilbert & Hillson article also provides a good summary of Arrow declarations (see previous discussion on this blog here), which are a type of declaratory judgment available under circumstances in which the patentee is engaging in "obstructive or evasive behaviour," for example by prosecuting  multiple applications all covering largely the same subject matter, and the defendant seeks assurance that its products are identical to or obvious in view of the prior art.    

On a somewhat related note, I guess by now everyone's heard the news that the U.K. won't be part of the Unitary Patent and Unified Patent Court systems?    

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