Time Limitations in Pursuit of Damages – UK/Europe

A brief summary is provided of the statutory time bars for filing infringement actions across Europe with a summary table providing an overview of the information here described.

The English Statute of Limitations

The English Limitations Act of 1980 prevents any infringement action being brought before the English Courts more than six years after the date of the act complained of. This means that no damages or accounts of profits are claimable for acts committed more than 6 years prior to the date of the claim. In instances where a further defendant is added to a claim, the limitation period then runs only from the date on which the further defendant was added and not from the initial date of the claim (Lubrizol v. Esso [1992] RPC 467 (CA))

One exception to this time bar in England applies as discussed in Morton-Norwich v. Intercem and United Chemicals ([1981] FSR 337). In this case the Judge held that where an infringement action includes “concealed fraud”, damages may be claimed for infringing acts which occurred more than six years prior to the date of the claims. In this context “concealed fraud” refers to fraud in the equitable, and not the common law sense. In the words of Mr Justice Graham sitting in the High Court in Morton-Norwich:

[concealed fraud] is used…. to denote conduct by the defendant which is such that it would be against conscience for him to avail himself of the lapse of time. If someone therefore knowingly commits a wrong in such circumstances that it is unlikely to be found out for a long time he cannot rely on the Statute of Limitations as a bar to a claim against him.”

In this case, the Defendant had been so evasive in a letter to the claimant regarding the defendant’s alleged importation of a patented drug that the Claimant as a result delayed filing an infringement action whilst they (the claimant) conducted further discovery. The additional discovery was necessary to uncover the identify of the actual importer as the Defendant’s information strongly suggested that they were not the importers. This delay resulted in the infringement claim being filed just outside of the limitation period in respect of some acts of infringement. Mr Justice Graham held that the limitation period did not apply and damages were therefore recoverable for all the acts complained of. Notably, even though this case was heard under the Limitations Act of 1939 and not 1980, it still remains the leading case regarding applicability of the limitation period and patent infringement.

Interestingly, the limitation period in Scotland, as set by the Prescriptions and Limitations (Scotland) Act 1973, is five years from the date of the infringing act or acknowledgement of infringement by the defendant.

The Statute of limitations across Europe

The Limitation period differs quite dramatically across Europe, as the table below demonstrates. Interestingly, several countries in Europe apply a “double test” when assessing the time bar for bringing an infringement action; not only is there a set “limitation period”, but a second period calculated from the date the claimant knew of the damage caused by the infringing act also applies. Both deadlines need to be met in order to successfully claim damages for past infringements. This is reflected in the requirement that the Patentee, once he has knowledge of the alleged infringement, does not acquiesce in bringing his claim since doing so will affect damages in some countries, e.g. Germany

Interestingly, under Spanish law the limitation period runs from “five years from the time that right [i.e. the right to bring an action for infringement] could have been exercised“, which has been interpreted as starting from the date in which the jeopardised party become aware of the infringing acts. In comparison, the five year period in which damages may be claimed for the infringing acts is the “five years immediately proceedings the data on which the action was brought.” These two periods appear to be in conflict with one another. Although one could easily imagine that in most cases the two five year periods would overlap, this would not always necessarily be the case.

An important point to note is that in Switzerland, the limitation period differs if an action is brought under civil or criminal law. Patent infringement can be a criminal offence under Swiss Patent law, although a criminal suit must be filed within 6 months of the date the claimant became aware of the damage caused by the infringement.

Country Time limit on bringing
infringement action (years)
UK 6 years from the date of the infringing
AT 3 years from the date of the infringing
BE 5 years from the date of the infringing
NL 5 years from discovery of alleged infringing
act, maximum 20 years from the date of the alleged infringing act
IT 5 years from the date of the act complained
The action does not require grant of
the patent although grant must have occurred by the time the Court decision
is issued
FR 3 years from alleged infringing act -
DE 3 years from date the claimant claims
knowledge of the infringement and a maximum of 30 years from the date
of the infringement
estoppels against patentee can happen
if patentee knew of infringing acts and acquiesced
CH Civil Law

1 year from date claimant knew of damage
caused by the alleged infringement, 10 years maximum from date of act

Criminal Law

5 years under criminal law, but criminal
complaint must be brought within 6 months of date damaged person became
aware of damage

Civil Law

defence under civil law if patentee acquiesced
for about 5 years

Criminal Law

Patent infringement can
be a criminal offence under CH patent law

SE 5 years from date of damage not date
of act of infringement
A compensation action is not limited
to 5 years where the damages occurred before the patent has been granted
as long as the action for compensation is brought within 1 year after
expiry of Swedish opposition term or if opposition filed then by the
time the opposition has been concluded
ES 5 years from date party jeopardised
by the infringing acts became aware of the infringing acts
Damages are calculable for the period
immediately preceding the date the action was filed. However,
the time period for bringing an action is for 5 years from the date
the claimant became aware of the infringement

For further information please contact Jon Broughton at HLBBshaw in Epping, Essex, UK. E-mail: jon.broughton@hlbbshaw.com. Visit the website at www.hlbbshaw.com.

The information contained in this alert is provided for informational purposes only and does not represent legal advice. Neither the APLF nor the author intends to create an attorney client relationship by providing this information to you through this message.


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