9.6.1 Pre-action
Parties’ conduct before a patent action has begun is governed by the CPR. There is no specific pre-action protocol for litigation in the Patents Court, although the “Pre-Action Conduct and Protocols” practice direction applies.97 Paragraph 6 of this practice direction requires a claimant to write a “letter before action” to the defendant with concise details of the claim, including the nature of the acts complained of and the relief they seek. The defendant should be given a reasonable period of time to respond, typically 14 days but sometimes longer, before the claimant commences proceedings. This is so that the defendant has an opportunity to decide whether or not to contest the claim and also to enable both parties to explore whether or not settlement of the dispute is possible before proceedings are commenced.
If the claimant fails to send a letter before action in this way, it is open to the court to regard their conduct as unreasonable and to make an adverse costs award against them, especially if the defendant, when served with proceedings, indicates that they will in fact not contest them.
However, the court will take into account that, in some circumstances, it is undesirable for the claimant to give the defendant notice of proceedings. This is particularly the case where there is a race to the court between the two parties in the United Kingdom and another in another country in order for the relevant court to be first seized of jurisdiction.
Owing to the actionable threats provisions in the Act, as set out in Section 9.5.5 above, care must be taken in writing a letter before action to anyone other than the manufacturer or importer of a product or user of a process.
Before an action is started, the court can order that a party to a dispute gives disclosure of a specific class of documents in their power or possession. This will typically happen where the disclosure is either likely to promote settlement of the dispute, where it is likely to resolve the dispute or where it will result in the saving of costs.98 For example, where a patentee has granted a number of licenses under their patent, and the prospective defendant has indicated a willingness to take a license under the patent on similar terms to those already granted by the patentee, the patentee could be ordered to give disclosure of those licenses so that the defendant can see what might be similar terms of a license that they can agree to.