Patent litigation: some recent literature

"The Transitional Period of the Agreement on a Unified Patent Court", by leading German scholar and Hogan Lovells counsel Winfried Tilmann, has just been published online in the Journal of Intellectual Property Law & Practice (JIPLP). According to the abstract:

The Transitional Period of the Agreement on a Unified Patent Court (UPC) provides for the options of continuing to use the national courts or opting out of the jurisdiction of the UPC.

Both options raise a number of questions which are discussed in this article and which reveal that both options are complicated and possibly dangerous for one or both parties in patent litigation.

The author advises that one should not make use of these options but should rely instead on the advantages of the Unified Patent Court Agreement.

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If you are thinking of litigating patents in Russia (and this blogger guesses that most readers of this blog have a long list of items on their "to do" list before they get round to litigating patents in Russia), the current issue of The Patent Lawyer is just for you.  The publishers can almost be forgiven for employing the hackneyed symbol of the electric lightbulb on the cover, since they have done something with it that suggests a modicum of inventive step. Further details of this publication can be unearthed by accessing its website here.

Inexperienced litigation and relitigation: a couple of recent articles

A couple of good pieces of relevance to patent litigation are now available online to subscribers to the Journal of Intellectual Property Law & Practice (JIPLP), published monthly by Oxford University Press; short term access to them can also be purchased by non-subscribers.  They are:

Darren Smyth (UK and European Patent Attorney, a partner at EIP and head of the EIP Elements practice group), "Patent law decisions from Supreme Courts: how can non-specialist judges decide this field of law?".   According to the abstract

"This article considers recent patent decisions from the Supreme Courts of the United States of America, India and the United Kingdom, and identifies the common theme that they display surprising lack of appreciation of basic tenets of patent law or, in some cases, of the practical realities of the patent system. The issue appears to be general in nature, irrespective of jurisdiction, and inherent to systems where superior courts are generalist in nature and lack patent specialists.

It is then questioned whether judges who have not trained in this field can plausibly be entrusted with guiding the development of the jurisprudence of patent law. It is proposed that superior courts should be supplemented with judges having patent experience".

Professor Eddy D. Ventose, "Clarifying the law relating to double jeopardy in patent litigation".  This is a Current Intelligence note on Resolution Chemicals Ltd v H. Lundbeck A/S [2013] EWCA Civ 924, Court of Appeal, England and Wales. In short:

"The Court of Appeal of England and Wales has simplified the test relating to privity of interest, enabling litigants to know the circumstances in which a party will be prevented from re-litigating a matter".

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".

SMEs and patent litigation: are we asking the right questions?

The April 2010 issue of Sweet & Maxwell's monthly European Intellectual Property Review (EIPR) leads with an Opinion by Dr Sivaramjani Thambisetty (right), who lectures in IP law at the London School of Economics. Entitled "SMEs and Patent Litigation: Policy-Based Evidence Making?", this piece suggests that, in a number of recent policy documents, there is little evidence for the claims made that access to justice is denied. Dr Thambisetty identifies five assumptions concerning patent litigation and (Small and Medium-Sized Enterprises) SMEs that permeate the current policy debate in England and Wales:

1. More litigation would mean better enforcement and therefore better use of the patent system;

2. SMEs would patent more only if there was better enforcement;

3. SME access to cheaper patent litigation is in the public interest;

4. We can and must emulate the German example;

5. A streamlined procedure would attract a greater number of cases from within and from outside the United Kingdom.

The questions must be asked: are these the right assumptions upon which we should be proceeding, and what evidence can we attach to them?

Some of the answers, and indeed a good number of further questions, can be expected following the anticipated publication of the Study into current social, economic & business issues for small & medium-sized firms in the enforcement of Intellectual Property Rights in the UK. This study, commissioned by the Strategic Advisory Board for Intellectual Property Policy (SABIP)
from the Intellectual Property Institute, in partnership with Oxford University and expert practitioners, has sought to explore current social, economic and business issues for small- and medium-sized firms in the enforcement of intellectual property rights in the UK. The project involved surveying SMEs and legal professionals. If nothing else, it should give the most current and accurate account of what SMEs and micro-businesses think, how they make their IP litigation decisions and what they think of the results.

Latest Patent World

The June 2009 issue of Patent World, published 10 times a year by Informa, is now out. Items of interest or concern to patent litigators include a piece by Mark Scarsi and Caitlin Hawks (Milbank Tweed Hadley & McCloy), "Rocket docket no more?", which discusses two recent decisions that have affected the flow of patent trials to the Eastern District of Texas, suggesting that clarification of transfer of venue principles will result in more disputes being heard elsewhere. Marjan Noor (Howrey) also reviews national decisions in Europe on the stay of actions pending the outcome of oppositions before the European Patent Office in the UK, Germany, France and the Netherlands.

Patent World's homepage is here.