9.5.4 Claims for declaratory relief
As mentioned above, Section 61 of the Act makes it clear that, on a claim by the patent proprietor or an exclusive licensee, the court has the power to grant a declaration that a patent is valid and has been infringed. Conversely, Section 71 provides a route by which a person can obtain a declaration that a patent is not, or would not be, infringed:
Without prejudice to the court’s jurisdiction to make a declaration apart from this section, a declaration that an act does not, or a proposed act would not, constitute an infringement of a patent may be made by the court or the comptroller in proceedings between the person doing or proposing to do the act and the proprietor of the patent, notwithstanding that no assertion to the contrary has been made by the proprietor, if it is shown –
- (a) that that person has applied in writing to the proprietor for a written acknowledgment to the effect of the declaration claimed, and has furnished him with full particulars in writing of the act in question; and
- (b) that the proprietor has refused or failed to give any such acknowledgment.85
A party seeking a declaration of noninfringement, prior to serving proceedings on the patentee, must first send a notice to the patentee containing a description of their product or process to give the patentee the opportunity before proceedings are issued to agree that that product or process is not an infringement.86
However, as both Sections 61 and 71 make clear, that is not the limit of the court’s declaratory jurisdiction. CPR 40.20 provides that “[t]he court may make binding declarations whether or not any other remedy is claimed.” This provides the court with a discretionary power to grant declaratory relief, which it will normally exercise only if there is a sufficiently well defined issue between the parties and if granting the declaration would serve a useful purpose. The court should also take into account justice to the parties and any other special reasons.87
This jurisdiction has been used to grant declarations that a specified product was old or obvious at a particular date.88 The practical effect of such a declaration is that the patent proprietor cannot then assert, against that product, any patents it obtained with that (or a later) priority date. This form of declaration (sometimes called an Arrow declaration, after the first case in which it was recognized)89 is of particular use where a patent proprietor has divisional applications in prosecution that a party justifiably fears may be asserted against it if and when they are granted. It allows such a party to gain commercial certainty without having to wait until the patents are granted and then apply to revoke them. However, it is always necessary to demonstrate that the declaration would serve a useful purpose.90