Tuesday, 28 September 2010

Patent dispute resolution: three current articles

In "IP litigation or ADR: costing out the decision", Journal of Intellectual Property Law & Practice (2010) 5(10): 730-735, Peter Jabaly (Rutgers Law School) writes about the cost of settling IP disputes. His abstract reads as follows:
"Legal context. It is currently appropriate to discuss alternative dispute resolution (‘ADR’), while the global economy continues to experience a deep and widespread recession. This is because businesses mired in IP disputes are increasingly reluctant to expend ever-dwindling resources on protection and enforcement of their IP rights. In a similar vein, international patent and trade mark filings in 2009 have fallen by nearly 5 and 17 per cent, respectively ...  Meanwhile, the IP field has not fully embraced ADR: the percentage of arbitrations has rapidly increased in other areas but not in IP, where it has remained stagnant ...
Practical significance. A conventional litigation is long and costly, whereas ADR is relatively inexpensive and very fast. In the USA, the average cost of patent litigation is $2M, trade mark litigation is $600K, and other types of IP litigation average between $500K and $800K. This, of course, does not include the price of an appeal, which may add another $2M to patent litigation. The time involved is possibly more astonishing: the average IP litigation lasts 2 years. Add an additional year for an appeal ... ADR can take as little as 5 or 6 months. If the time difference would come at a significant cost to your client, then consider ADR, preferably in the original contract.
ADR is cost-efficient due, in large measure, to the curtailed procedure. In the case of arbitration, an appeal is rare, only the most serious cases alleging fraud get a second-look. Furthermore, ADR is confidential. For public firms, litigation could affect their ability to raise capital or acquire lucrative contracts because of the requirement that all litigation be disclosed to shareholders or potential shareholders".
Non-subscribers to this journal can access this article by clicking here and scrolling down to Purchase Short Term Access.

The September 2010 issue of Managing Intellectual Property (MIP) carries an article entitled "Where to win: patent-friendly courts revealed" by two Finnegans authors, Michael Elmer and Stacy Lewis. This handsomely-illustrated piece provides data and commentary drawn from Finnegan's Global IP Litigation Project and, while in the case of some countries the volume of data is relatively small, the methodology is helpfully explained.  The authors add, with regard to patent litigation in China: "No objective data exists as to what percentage of wins is actually enforced in practice" -- an observation which litigants would do well to bear in mind.

Not yet published in the Journal of European Competition Law & Practice (JECLAP) is "The AstraZeneca Judgment: Implications for IP and Regulatory Strategies" by David W. Hull (Covington & Burling, Brussels).  According to the abstract,
"In a judgment issued on 1 July 2010, the General Court largely upheld the Commission's decision imposing a €60 million fine on AstraZeneca for abusing its dominant position by engaging in certain IP and regulatory strategies aimed at protecting its product against generic competition and parallel imports from other Member States".
In his concluding comments the author says:
"While the Commission has remained openly sceptical about the merits of reverse payment patent settlements in the pharmaceutical sector, it has generally adopted a cautious tone regarding possible enforcement actions involving other IP and regulatory practices that were examined in the course of the sector inquiry. The AstraZeneca judgment could lead the Commission to alter its tone and pursue a more aggressive enforcement strategy. The initial target of enforcement actions would likely be pharmaceutical companies, but companies in other industries that rely heavily on IP and regulatory strategies to protect their markets could eventually find themselves in the Commission's crosshairs".

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