Section 61

Proceedings for infringement of patent

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61.-(1) Subject to the following provisions of this Part of this Act, civil proceedings may be brought in the court by the proprietor of a patent in respect of any act alleged to infringe the patent and (without prejudice to any other jurisdiction of the court) in those proceedings a claim may be made -

  • (a) for an injunction or interdict restraining the defendant or defender from any apprehended act of infringement;
  • (b) for an order for him to deliver up or destroy any patented product in relation to which the patent is infringed or any article in which that product is inextricably comprised;
  • (c) for damages in respect of the infringement [see s3 of SI 2006 No. 1028 for assessment of damages];
  • (d) for an account of the profits derived by him from the infringement;
  • (e) for a declaration or declarator that the patent is valid and has been infringed by him.

(2) The court shall not, in respect of the same infringement, both award the proprietor of a patent damages and order that he shall be given an account of the profits.

(3) The proprietor of a patent and any other person may by agreement with each other refer to the comptroller the question whether that other person has infringed the patent and on the reference the proprietor of the patent may make any claim mentioned in subsection (1)(c) or (e) above.

(4) Except so far as the context requires, in the following provisions of this Act -

  • (a) any reference to proceedings for infringement and the bringing of such proceedings includes a reference to a reference under subsection (3) above and the making of such a reference;
  • (b) any reference to a claimant or pursuer includes a reference to the proprietor of the patent; and
  • (c) any reference to a defendant or defender includes a reference to any other party to the reference.

(5) If it appears to the comptroller on a reference under subsection (3) above that the question referred to him would more properly be determined by the court, he may decline to deal with it and the court shall have jurisdiction to determine the question as if the reference were proceedings brought in the court.

(6) Subject to the following provisions of this Part of this Act, in determining whether or not to grant any kind of relief claimed under this section and the extent of the relief granted the court or the comptroller shall apply the principles applied by the court in relation to that kind of relief immediately before the appointed day.

(7) If the comptroller awards any sum by way of damages on a reference under subsection (3) above, then -

  • (a) in England and Wales, the sum shall be recoverable, if a county court so orders, by execution issued from the county court or otherwise as if it were payable under an order of that court;
  • (b) in Scotland, payment of the sum may be enforced in like manner as an extract registered decree arbitral bearing a warrant for execution issued by the sheriff court of any sheriffdom in Scotland;
  • (c) in Northern Ireland, payment of the sum may be enforced as if it were a money judgment.

Manual of Patent Practice

The proprietor need not be the registered proprietor (Hartington Conway's Applications [2004] RPC 161). A proprietor by virtue of a transaction (section 30(6): must be in writing) may bring proceedings, provided a traceable chain of title is established as per s7.

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