An International Guide to
Patent Case Management for Judges

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9.6.2 Venue, jurisdiction and case assignment rules Jurisdiction, standing and service

All of the courts in England and Wales that handle patent litigation have jurisdiction over anyone carrying out one or more infringing acts occurring in their countries and can grant remedies covering the whole of the United Kingdom. They also have jurisdiction over anyone who is assisting the infringer to carry out infringing acts in that country, such as a parent company that runs a website directed to the United Kingdom. However, the courts no longer have jurisdiction over infringements of the equivalent European patent occurring in other European countries since the United Kingdom is no longer a party to the Convention on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters (Lugano Convention) or other similar treaty for the mutual recognition and enforcement of judgments in Europe.

The patentee and the exclusive licensee have standing to bring proceedings for infringement of a patent in the United Kingdom.99 If the defendant is domiciled outside the jurisdiction, the claimant will have to seek permission from the court to serve the proceedings out of the jurisdiction (on the basis of infringing acts in the jurisdiction) and serve in accordance with the rules of the Convention on the Service Abroad of Judicial and Extrajudicial Documents in Civil or Commercial Matters (HCCH Service Convention).100

Anyone has standing to bring proceedings for revocation of a patent and can serve such proceedings in the United Kingdom on the address for service registered against the patent at the UKIPO. Where the patentee is domiciled outside the United Kingdom, this makes service swift and straightforward and requires no translations or other Hague Convention requirements.

A claimant must bring all related claims in one set of proceedings in the United Kingdom. So, for example, if the patentee considers that a product infringes several of its patents, and if it starts proceedings for patent infringement, it must assert all of the patents it believes are infringed. The court will not permit the patentee to bring separate new proceedings later based on another of the patents in its portfolio that it alleges is infringed by the same product unless, for example, the facts giving rise to that infringement only came to light later. Bringing patents proceedings piecemeal in this fashion can be regarded by the court as an abuse of process.

A claimant must choose whether to issue their claim in the Patents Court or IPEC; see Section below. Court fees

To start proceedings, the claimant must pay the court an issue fee. The fee for cases with a value over GBP 200,000 is GBP 10,000. For lower-value cases, the fee is lower: five percent of the value of the claim for cases between GBP 10,000 and GBP 200,000 in value. For the very lowest value cases (under GBP 300), the issue fee is GBP 35. Individuals without the means to pay the issue fee can obtain a fee exemption known as “help with fees.”

There are only two other fees that usually need to be paid in a patents case at first instance. There is a GBP 255 fee for applications to the court, and a trial fee of GBP 1,090 is due when the date for trial is fixed. The court fees paid by a party are recoverable as part of that party’s costs (see Section 9.7.4 below).