Thursday, 19 March 2015

Patent litigation in England and Wales 2007-2013: is it a predictor for UPC behaviour?

Thanks to IP scholar and enthusiast Luke McDonagh my attention has been drawn to Examining Patent Cases at the Patents Court and Intellectual Property Enterprise Court 2007-2013, a 24-page report on patent litigation in England and Wales which was prepared by Luke together with two other scholars, Christian Helmers and Yassine Lefouili. You can access it on the GOV.UK website here.

To cut to the chase, the report concludes:
Our data show that 445 patent cases were filed at the PHC [that's the Patents Court] during 2007-2013, whereas a total of 96 patent cases were filed at the IPEC during the same 7-year period [presumably this includes cases filed in the Patents County Court, since the IPEC has only been in existence since 1 October 2013]. This demonstrates that the majority of patent litigation in the UK’s largest patent jurisdiction – England and Wales – takes place at the PHC rather than at the IPEC, even post-IPEC reforms [I think this is a reference to the Patents County Court reform of 1 October 2010, which have that court a considerable boost]. Nonetheless, we also observe that the amount of IPEC patent litigation has increased substantially post-reforms, while over the same period the PHC has not seen fewer cases – quite the opposite, in fact.

Regarding patent-level data, it is worth noting that a very large number of the PHC patent cases - 372 - concern an EP, while at the IPEC 47 out of 96 patent cases centre on an EP. In other words, EPs tend to be the subject of PHC litigation much more frequently than GBs, but there is a more even split at the IPEC. In terms of case-level data, we show that infringement is the most common initial claim at both the PHC and IPEC; but that revocation is a frequent claim at the PHC and a frequent counter-claim at both courts [this confirms the widely-held impression of court users]. With respect to litigant-level data, we observe that more SMEs (106) were involved in PHC litigation than were involved in IPEC litigation (41) over the same period, a fact which shows that despite the increasing popularity of the IPEC, a large proportion of litigant SMEs are familiar with the PHC, something which may enter into their UPC opt-out considerations [that familiarity may not be based on choice, but on technical issues such as the damages limit].

Looking ahead to the UPC, there is little doubt that the answers to two key questions - (i) whether UK firms will begin to opt for UPs, and thus litigate sole at the UPC for these patents and (ii) whether UK firms will decide to opt-out their EPs during the transitional period, and thus continue to solely conduct litigation concerning their EPs at the PHC/IPEC, will determine how substantial and immediate the impact of the coming into being of the UPC/UP will be felt with respect to the amount and types of cases filed at the PHC/IPEC. On the one hand, if patentees decide en masse to opt for UPs instead of EPs or GBs it would seem logical that there would be less litigation at the PHC and IPEC in the coming years. On the other hand, recent survey evidence suggests that not all current patentees are actually considering doing this in the early years of the new system; some are taking a ‘wait and see’ approach (McDonagh, 2014). Indeed, in the coming years patentees may decide to maintain a spread of different types of patents – GB, EP and UP – a decision that would leave multiple potential litigation venues open, and which in turn would mean that in the immediate term the current rates of patent litigation at the PHC and IPEC may not be drastically affected by the coming into being of the UPC. Ultimately, by providing an authoritative, data-driven account of patent litigation at the PHC and IPEC for the period 2007-2013 this report makes a useful contribution to current discussions concerning patent litigation within the UK and the wider EU [I feel that, whatever value these findings have for patent litigation in England and Wales, it is very difficult to draw from them to any likely guidance as to how the same litigants might perform under the UPC].


Anonymous said...

Has there been any analysis (e.g. post-litigation follow-up survey, for example) of whether the increase of cases at the IPEC (and High Court) was the result of factors intrinsic to the legal system or extrinsic factors such as the economic recovery leading to bigger war chests, more optimism about the outcome of litigation, and the greater opportunities for infringers in a growing, rather than contracting economy? In other words, were these results controlled for economic as well as legal factors?

Such surveys could also address the key question: was the existance of the IPEC a dominant factor in the decision to litigate, or would the litigation simply have proceeded via the High Court, for example, on the streamlined procedure. If the latter, I would see the value of the IPEC not necessarily in improving access to justice, but in ensuring that the resources of the High Court are only brought into play when a full-scale procedure is merited.

Jeremy said...

Good question: I don't think that there has been any formal attempt to integrate extrinsic factors into the High Court and IPEC data. Maybe other readers can advise.