As long ago as 1892, a judge reportedly said that, short of losing all his family by influenza, the worst thing that could happen to a person was to become involved in patent litigation. Is this still the case, or are there sound strategies and tactics which can make the experience more gainful, resulting in protection for your IP and your business?
Gowling WLG's IP professionals from around the world examine patent litigation strategy in the early stages. Topics include:
- Which jurisdiction is best?
- If you are a likely defendant is it best to get in first with an invalidity action?
- Are there different levels of court available and if so which is best?
- How can you manage costs so they do not run away?
- What are the key early steps to build the best platform for the case ahead?
- Is there any merit in seeking interim relief?
This was the sixth installment in our Lifecycle of a Smart Idea series, which is dedicated to helping you maximize opportunities and minimize risk when taking your innovative ideas to the global market. Also watch our seventh episode on the defendant's view to that you can be "battle ready" when the first bell sounds in patent litigation.
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Details and top tips
On July 23, 2020, members of Gowling WLG's global intellectual property team presented a live webinar that looked at patent litigation strategy in the early stages. The webinar was scenario-based and gave viewers the opportunity to have an insiders look on how our team works together, across offices, to provide global advice to our clients. Below are a few top tips put forward by members of our panel.
Alexandra Brodie, Partner, Co-Chair of Global Tech, London
The benefits of litigating patents in the UK are:
- Fully articulated and argued case before specialist patent judges in the patents court.
- Respected fully reasoned judgment.
- Trial in 12-18 months, judgment within three months of trial.
- Permanent injunction available and damages of up to six years back.
- Appeal possible to CoA but judgments usually sound.
- Further appeal to Supreme Court unlikely.
- Limited disclosure and no jury.
Somethings to bear in mind, however, are:
- Can be costly in comparison to proceedings in Germany but will be cheaper than the US.
- First instance will be infringement and validity so will take longer than simply reaching infringement in Germany but will be shorter or the same re reaching infringement and validity in Germany.
Alexander Christophoroff, Partner, Moscow
Russia is a great jurisdiction for litigating patent infringement in certain situations, such as when:
- You are interested in the Russian market as it is indeed a giant market
- You want a fast and relatively cheap trial (like 6 – 9 months, which is faster than the time it takes to get a preliminary injunction in some other jurisdictions)
However, there are some things you should be aware of:
- You should have all evidence in hand, as there is no discovery, and you cannot rely on the judge to help you obtain evidence
- Preliminary injunctions and high damage awards are extremely rare in Russia
- We have a bifurcation system, so any invalidity issues are tried in a parallel procedure in the Patent Office, and it is quite strict in what amendments it allows. As such, you should be really sur that your patent is valid.
Jonathan Konietz, Senior Associate, Munich
Why consider Germany in the case at hand?
- Germany has specialised patent judges who usually render decisions of high quality. As such, a court ruling on infringement and/or validity, in particular with respect to a European patent, may have a wider impact.
- A key difference to many other jurisdictions is the bifurcated patent litigation system. Infringement and validity of a patent are dealt with in separate court proceedings. This can allow for a quick first instance court decision on infringement which would allow for a provisionally enforceable injunction. While this system surely has its disadvantages, it does allow for a quick infringement finding - before answering, and irrespective of, the Federal court's decision on the validity of the patent.
- Preliminary injunctions are available in Germany. This way, a provisionally enforceable injunction can be obtained within a few months or weeks or in very urgent cases even within days – (e.g. in case of infringement on trade fairs).
Things that can slow down a case in Germany are:
- The infringement court can stay the infringement proceedings pending a first instance validity judgment or at least preliminary opinion by the Federal Patent Court.
- Evidence of proof of infringement requires a court appointed technical expert.
Clémence Lapotre, Principal Associate, Paris
France has become known as a patent friendly jurisdiction. The following are three points of interest relating to patent litigation in France:
- A claimant can request a seizure order ex parte which gives authorisation to a bailiff, accompanied by the relevant expert(s) (in most cases patent attorneys and IT experts) with the assistance of police officer(s), to enter the premises of the alleged infringer or a third party and gather evidence.
- In France, the validity and infringement of the patent are assessed simultaneously in the same proceedings. It can speed up the process since the decision on the infringement will not be stayed if the validity of the patent is challenged by the defendant.
- In France, interim proceedings may be filed either before or after the action on the merits, regardless of any urgency requirement.
Jamie Rowlands, Partner, London (former Chief Representative Officer, Guangzhou)
Some points to make re litigating in China:
- There are now specialist IP Courts in many parts of China. This has greatly improved the prospects for foreign claimants litigating in China.
- IP Courts are generally neutral but claimants need to try ensure they find a way to choose a jurisdiction in China that best suits their case.
- A patent infringement case (single patent) will usually cost under £100,000. It will take between 9 to 12 months to reach trial, with usually 1 day in court. The timing of the handing down of a judgment can vary but can take 3 to 6 months.
- By law, it is possible to obtain an interim injunction in China and, in fact, our China team has secured an interim injunction relating to a design patent infringement. However, in practice, they are very rare in patent cases in China.
- Interim remedies such as evidence and asset preservation orders are available and can be used to cause disruption to a defendant's business. They should be considered but are not universally granted.
What are the challenges in China?
- Evidence of infringement need to be witnessed by a notary public. This requires use of private investigators in order to secure entry to defendant's premises with a notary. This can be challenging, time-consuming and expensive.
- Damages remain generally low and legal costs are rarely recovered by winning parties. Litigating in China is not about compensation. It is about securing a final injunction.
Patrick Smith, Partner, Calgary
Some things to keep in mind when preparing for patent litigation on multiple fronts:
- Three major issues should be addressed before starting litigation:
- reviewing/amending patents/patent applications
- gathering, sorting and analyzing documentation, and
- preliminarily identifying experts and witnesses.
- Any statement made by a client or their lawyer in one jurisdiction can constitute an admission capable of being used by an adverse party in some other jurisdiction. As a result, coordinating strategy requires that any position taken by a client is consistent throughout the jurisdictions.
- Litigation in different jurisdictions proceeds at different rates. The strength of an expert's testimony can be assessed for testifying in other proceedings. Note that deposition and trial testimony produces transcripts which can be used to impeach the expert in future proceedings.
- Even though judges deny it, judges may find comfort in reaching conclusions similar to that reached by a fellow judge in another jurisdiction. Patentees may want to consider enforcing first in jurisdictions with higher success rates.