Lifecycle of a Smart Idea | The game begins: Strategies for the early stages of patent litigation: The defendant's view

66 minute read
07 August 2020

In this seventh episode in our series, "Lifecycle of a Smart Idea," Gowling WLG's IP professionals from around the world explore the tactical considerations that underpin the planning stages of a succesful patent litigation defence on a global scale.

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 webinar series is designed to give you great insight into the lifecycle of a smart idea, and to enable you to plan ahead to maximise benefits and opportunities. See also episode six on the claimant's view.

The salient points

With a view to helping you better prepare for future patent enforcement actions, we outline some of the salient points from that discussion.

Germany, China and Russia

Germany, China and Russia have bifurcated proceedings, in which claims of patent infringement and invalidity are decided independently by separate courts. Because of this, once presented with an infringement suit, defendants are strongly advised to file a nullity action to attack the validity of the patent-in-suit as soon as possible. They can then request a stay of the infringement proceedings pending a decision in the parallel nullity or opposition proceedings.

Germany

In Germany, any defensive strategy must involve quickly filing protective briefs to mitigate the risk of an ex parte interim injunction.

France

In France, seizure procedures present an especially immediate risk. A seizure or saisie-contrefaçon is a very powerful tool in France that enables a patent owner, duly authorized by the judge in ex parte proceedings, to have a bailiff (usually assisted by a patent attorney and other experts) enter the premises of the alleged infringer and search for evidence of the infringement, as well as technical and financial information. 

Russia

In Russia, there is no discovery and the burden of proof falls on the claimant, making infringement cases in this jurisdiction potentially more difficult for the claimant. Defendants, on the other hand, can play such obstacles to their advantage.

Common law jurisdictions

In common law jurisdictions such as Canada, the United States, and the UK, interim injunctions are only granted when there is an argument by the claimant of irreparable harm. With this criterion in mind, the securing of potential expert witnesses will be vital for defendants from an early stage.

Internationally

For many companies with international supply chains, patent litigation presents unique challenges, as well as opportunities. For instance, defendants can consider sending third party notices to companies in the supply chain that potentially contributed to the alleged infringement, inviting them to join the proceedings. This will not only help in view of potential recourse claims, but it may also significantly increase the cost risk for the plaintiff. In any event, international coordination will be critical to success in these situations.

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The scenario


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