Tuesday 30 June 2009

Streamlined or not, two days is all that's needed

PatLit is immensely grateful to Tim Powell (Powell Gilbert LLP) for information concerning an application for directions made last week before Mr Justice Floyd of the Patents Court for England and Wales. In Mobiqa Ltd v Trinity Mobile Ltd, an infringement/ revocation action involving a system for transmitting barcodes to mobile phones, he limited each side to two and a quarter hours of cross-examination in a trial fixed for two days.

It's refreshing to see that the judiciary are prepared to take an action by the scruff of the neck, as it were, and impose some sort of order and structure in order to keep the proceedings realistic. After reviewing the issues in dispute, the low level of complexity of those issues and the matters on which the parties were agreed he continued:
"7. Whether or not one calls these directions a streamlined procedure or not, it seems to me from what I have been told about this action that this action should be capable of being tried within a two day time frame. It seems to me that the issues which are raised are not technically very difficult and given that the case is to be tried in the High Court, it should not occupy more time than is necessary for it to be fairly disposed of. I start therefore with the objective that this case should be capable of being tried within two days.

8. What then is there left to decide? Mr Cuddigan [for the defendant] is right that his clients are entitled to choose between giving disclosure of documents or providing a product and process description. Standard disclosure is a less compact way of addressing the issues of infringement. Standard disclosure means that the claimant has to read the documents which were not prepared with a patent action in mind and dig out from them such material as he considers is necessary to establish its case on infringement. A product and process description is a purpose built document which is designed to facilitate the trial of the action and to release the burden on defendants who would otherwise have to trawl through documents to be certain that they have disclosed all the documents which they are obliged to do. For my part, I cannot in the present case understand why the defendants have not yet decided which course they are going to take. Nor do I understand what considerations they say are material to their decision. Nevertheless, they are right that they have in the normal course a right to choose between the two courses. The date for compliance with their obligations, whether they produce a PPD or whether they go by standard disclosure, will be the same. For that reason, I am not going to force them to produce a product and process description rather than standard disclosure. I would hope that in a case such as the present, it will prove possible to confine the documentation to a well drawn up and concise PPD.

9. The next issue to consider is whether there should be any restriction of cross examination. I am of the view that in a case such as this it ought to be possible to complete the cross examination of two expert witnesses and any factual evidence within a day. That, it seems to me, is the sort of case which this is and for that reason I propose to make an order ... simply limiting the cross examination on both sides to a total of half a day, which I calculate at two and a quarter hours. That of course will be subject to review by the trial judge, but it does not seem to me that whatever the importance of the case to either side, the nature of this particular dispute justifies more than half a day's cross examination. That will enable the case to be decided within the two day window.

10. Both sides have made submissions about the importance of the case to them and the proportionality of the procedure that should be adopted in order to decide the case. For my part, the overriding consideration is the nature of the dispute and where it stands in the overall complexity of patent applications that come before this court. It seems to me that it is nothing like a three to five day case, as the defendants contend. For my part, I cannot conceive of what could be discussed to cause the case to last an entire working week. Once the court is put in possession of the prior art with properly written skeletons, and the issue on infringement is identified, the parties ought to be able to present their closing submissions in half a day each without the need for any elaborate opening. Accordingly, what I propose to do is to make an order in that form, requiring disclosure or a product and process description by 24th August [the trial being fixed for the first available date after 1 December] and limiting cross examination on both sides to two and a quarter hours, allowing for a trial with an estimated length of two days and prereading of half a day to one day".
PatLit expects to see case management of this nature increase as the next generation of judges, for whom case management is integrated into their experience at the Bar, ascends to the Bench.

A quick reminder: last chance to vote

As a new kid on the blog, having only gone live this February, PatLit was excited and honoured to have made the starting line-up for the poll of Top Patent Blogs 2009. The 50 "top patent blogs" according to Technorati and Alexa figures are listed on IP Watchdog's polling card and there are actually two separate polls. The first, for which each voter may cast just one vote, is for the blog which the reader likes the best. The second, for which the voter may cast as many votes as he or she needs, is for the patent blogs which that voter regularly reads.

Voting lasts till 30 June (i.e. today) and the results, once tabulated, will be published at the beginning of July.

PatLit is delighted to be doing so well despite its infancy. At present, in the first poll (the popularity poll) the blog lies in 25th position out of 50, tying with Duncan Bucknell's well-established IP ThinkTank. In the second (the 'which-blogs-do-you-regularly-read' one), PatLit is even higher, at number 23.

If you'd like to vote, or are just curious to read the list of leading patent law blogs, you can visit the polling site here.

Monday 29 June 2009

Lost property: Bruegel paints an ugly picture

Lost property: the European patent system and why it doesn’t work is the title of an 81-page report by Bruno van Pottsleberghe on behalf of Bruegel, "a Brussels-based think tank contributing to the quality of economic policy making in Europe". Unlike some commentators, the author has had some genuine experience of the system and its impact on innovation: a former Chief Economist of the European Patent Office from November 2005 to the end of 2007, he holds the Solvay S.A. Chair of Innovation and teaches courses related to the economics and management of innovation and intellectual property.

Professor van Pottsleberghe clearly doesn't like the global patent warming phenomenon, which he describes as a "mass spamming" by patent applicants. His report -- which is well worth reading since it pulls no punches, whether above the belt or below -- is inevitably far more focused on the administration and governance side of things than on what happens to patents once, freed from the red tape of application, grant and opposition, they are actually exploited. However, he does have this to say about patent litigation:
"The Community patent and a centralised litigation system

The Community patent and a unified and integrated European patent litigation system are key ingredients for ensuring that the EU single market works properly. The failure to implement them means missed opportunities. It is paradoxical to have a patent office – the EPO – that covers the largest market in the world, and which ensures high-quality examination services, but has not contributed to the development of the largest market for technology due to prohibitive cumulated enforcement costs and a high level of legal uncertainty. If European governments wish to foster innovation and create a suitable environment for fast-growing technology-based firms, the Community patent project should become a prime objective. A centralised patent litigation system would reduce the prohibitive costs caused by parallel litigation and ease the uncertainty generated by differing litigation outcomes (22).

(22) Local chambers for infringement and counterfeiting issues should be created, which would then lead to a central chamber for patent validity issues (and then back to the local chamber for infringement and counterfeiting) that could be used by third countries as well. The system should ensure that at least one member of the local chamber would be part of the centralised process, in order to keep a degree of coherence in the assessment. This is required because during the invalidity proceedings patent holders try to reduce the interpretation of the claims (ie limit the breadth of protection associated with the patent), whereas during infringement proceedings patent holders logically try to broaden the interpretation of the claims".

Friday 26 June 2009

EPO appeal "invalid for insufficiency"

I've just come across (via PLC's IPIT & Telecommunications weekly email) the EPO Board of Appeal decision in Pipe for filling bottles/Gallardo Gonzalez, T 1581/08 - 3.2.07, 3 April 2009, a curious little decision in which the Board of Appeal refused to admit an appeal because it wasn't supported by proper grounds of appeal. Or, to put it another way, it's not just patents that can be invalid for insufficiency.

According to the Board, sufficiency of grounds of appeal is not a question of form but also one of substance: the mere existence of some argumentation in a document carrying the heading "Statement of the Grounds of Appeal" does not automatically meet the statutory requirement, even if it clearly related to the substance of the decision appealed against. As the Board said in para 3 of its decision:
"... Sufficiency of grounds of appeal is not a question of form, but of substance. The mere existence of some argumentation and carrying the heading "Statement of the Grounds of Appeal" or "Grounds" does not automatically pass the threshold of Article 108 EPC, even if clearly relating to the substance of the impugned decision .... On the other hand, sufficiency is also not a question of volume. There is no minimum requirement as to the length or the fullness of detail of the argumentation which is necessary for an admissible appeal. In this context a distinction is to be drawn between insufficiency for the purposes of admissibility and insufficiency as far as the persuasiveness of the grounds is concerned which - if the arguments are not convincing - results in the dismissal of the appeal...

According to the established case law of the Boards of Appeal the grounds for appeal should specify the legal or factual reasons on which the case for setting aside the contested decision is based. The arguments must be clearly and concisely presented to enable the Board and the other party or parties to understand immediately why the decision is alleged to be incorrect, and on what facts the appellant bases his arguments, without first having to make investigations of their own ...

Further, to be sufficient for the admissibility of an appeal the grounds must be analysed in detail vis-à-vis the main reasons given for the contested decision...

If no or insufficient relationship between the two can be established, the Board considers that the appeal is inadmissible.
The bottom line is that representatives of clients in appeal proceedings should check that the grounds for appeal do indeed actually specify the legal or factual reasons on which the case for setting aside a contested decision is based. These grounds should be analysed in detail in relation to the main reasons given for the contested decision.

In this case, said the Board, there was no analysis of the technical features of the claims -- there was just a vague reference to an unspecified document as prior art, so the grounds of appeal were insufficient.

Tuesday 23 June 2009

Woolly patents, global warming and the coming flood

At the meeting of the Organisation for Economic Cooperation and Development (OECD) earlier this month, there was a Roundtable on Competition, Patents and Innovation. The British delegation prepared a paper which touched on, among other things, patent litigation. The paper said:
"16. There have been growing concerns about increased pendency periods for patent applications. The EPO has itself mooted the existence of a phenomenon called “global patent warming”. This problem, according to the EPO, has three elements: “woolly boundaries” for patents, globalisation and increasing pendency periods owing to examination backlogs in patent offices. Can patent strategies that exploit this phenomenon, such as loading patent offices with multitudes of patent applications (often called “patent application loading”), have an adverse impact on consumer welfare? It is a feature of patent law that most patents are never worked and that many patents are never renewed. Many patented inventions have no commercial value, and by implication it is difficult to see how strategic use of the patent application process may in many situations have adverse welfare effects. Furthermore, many firms active in patent-rich markets may well be able to assess the viability of their competitors’ patents and, by extension, their patent applications. Lord Justice Jacob, an English patents judge, has said that what he calls patents with “woolly lines” are the ones that cause the trouble and lead to litigation. Moreover, patent infringement proceedings can only commence once the patent has been granted (though admittedly the infringement suit can extend of course to infringing acts done prior to grant) – as such, even marking items with “patent pending” does not necessarily mean that a competitor will not work the invention or “work around” it.

17. All that said, it may well be that, in some cases, pending patent applications will deter potential competitors from working the invention(s) to which the application(s) relates for fear of an eventual lawsuit, especially if the patent applicant is better resourced than the would-be competitor - who may be unable to risk eventual costly patent litigation even if, at the end of the day, the patent is declared invalid. In such a case, it is obvious that the public may be deprived of the benefits of competition with respect to the invention which is of dubious novelty, inventiveness or other aspect of patentability. Patent application loading may also have welfare implications by raising rivals’ costs, either by increasing the need for firms to conduct more extensive patent searches, assessing a greater number of their competitor’s patent applications, or unnecessarily incurring research and development costs in order to “work around” the inventions to which the applications relate. “Patent flooding” may similarly be problematic when engaged in by a firm that already has a myriad of patents in respect of competing technology: forcing cross-licensing may allow it to leverage its strength and raise prices across the board for the technology while potentially deterring innovation, particularly if the cross-licences include exclusivity provisions. Moreover, where “evergreening” at the end of the patent lifecycle occurs through myriads of applications for perhaps dubious improvement patents, then this may have the clear effect of excluding others from being able to work the technology in question in the most commercially attractive way and from delivering the benefits of competition".

Monday 22 June 2009

The tangled tale of a pre-TRIPS patent in Spain

PatLit doesn't get to hear much about Spain, so today's note in for International Law Office by Yvonne Sastre of Grau & Angulo was particularly welcome. Her article, "Preliminary Injunction Petition for Alleged Patent Infringement Rejected", discusses a decision last March of the Fourth Commercial Court, Barcelona, to dismiss the petition of Sanofi-Aventis and Bristol-Myers Squibb for interim injunctive relief against various pharmaceutical laboratories for alleged infringements of the Irbesartan patent. You can read the piece in full here.

In terms of European patent history, it's quite absorbing since the patent goes back to 1991 -- when chemical and pharma patents were not yet available in Spain -- and its history takes in the momentous changes resulting from TRIPS. The patent's post-grant history is even more remarkable, but PatLit won't spoil the story. The interesting thing here is to work out the grounds on which this elderly patent might have deserved preliminary injunctive protection on the facts as provided.

Sunday 21 June 2009

Cross-border litigation consultation: little time to act

Christopher Stothers, on behalf of the Competition Law Association, has written as follows:
"Some of your readers may be unaware of the European Commission's Green Paper consultation on the Brussels Regulation 44/2001.

This is a broad consultation on the Regulation, based on a 2007 study. Importantly for IP practitioners, the Commission is considering some pretty fundamental changes to the conflict of laws rules applicable to IP disputes. In particular, there are proposals to deal with Italian or Belgian torpedoes and to reverse the outcomes of Case C-4/03 GAT v Luk and Case C-539/03 Roche v Primus, allowing cross-border infringement actions to proceed even where the validity of the patents is challenged before national patent offices or courts.

The website is here and the consultation closes on 30 June 2009.

An ad hoc committee of the LIDC (International League of Competition Law) was set up to respond to the consultation. The committee is chaired by Rhodri Thompson of Matrix Chambers and I've been asked to participate as a representative of the Competition Law Association, which is the British group of the LIDC. Members of the LIDC are welcome to send me their views, which I'll do my best to incorporate in the response (if I get them very soon)".
PatLit endorses the sentiment expressed by Christopher that anyone who wants to make his or her own submissions had best get a move on, given the short time within which one may do so.

Wednesday 17 June 2009

When experts change their minds

In Edwards Lifesciences AG v Cook biotech Inc [2009] EWHC 1304 (Pat), a decision last Friday by Mr Justice Kitchin of the Patents Court, England and Wales (noted by the IPKat here), a question was raised regarding the credibility of an expert witness. In particular, does the fact that an expert changes his opinion undermine his value as an expert? No, according to the judge, who explained as follows:
"9. Professor Rothman is a consultant cardiologist and the Director of Cardiac Research & Development at Barts and the London NHS Trust and Honorary Professor of Interventional Cardiology at Queen Mary, University of London. Interventional cardiology has been the focus of Professor Rothman's entire career and he is recognised as one of its pioneers. He has worked with cardiovascular stents since the early 1980s and over the years has advised many different companies operating in the pharmaceutical and medical device sectors in relation to a wide range of devices used in conjunction with interventional cardiology.

10. Edwards accepts that Professor Rothman is a skilled and expert cardiologist but contends his evidence was partisan, as illustrated by a marked shift in his opinions from those he held in an earlier case between Edwards and a company called CoreValve. I think it fair to say the opinions expressed by Professor Rothman in his reports in the two cases are indeed different in material respects and this formed the basis of a good deal of his cross examination. However, as Cook submits, opinions may change in the course of a case, particularly after cross examination, and I accept that in formulating his reports in this case Professor Rothman may have given further consideration to the abilities of the ordinary skilled person. Importantly, I believe Professor Rothman answered the questions put to him fairly and frankly and I found his opinions cogent and reasonable".

Tuesday 16 June 2009

Claim construction post-Protocol amendments: no change

Ancon Limited v ACS Stainless Steel Fixings Limited [2009] EWCA Civ 498, a decision of the Court of Appeal for England and Wales, is what one might call a "minor appeal". The patent which was allegedly (i) infringed and (ii) invalid, depending on which side you are on, was low-tech. The trial judge was not one of the more techie members of the Patents Court and the appellate judgment, inclusive of a lengthy summary of the principles of claim construction, barely topped 30 paragraphs.

The Court of Appeal, consisting with the parties' agreement of an even number of judges (Lords Justices Waller and Jacob) since the third member of the court was unwell, allowed the claimant's appeal against a finding that the contested patent was not infringed [for a note on the first instance decision click here]. Nonetheless the decision contained something of broad value to patent litigators: an affirmation that the new-style Protocol to Article 69 of the European Patent Convention was not intended to have the effect of expanding the scope of infringement so as to include matters that might have remained non-infringing under the old version. As Jacob LJ said at para. 3:
"Ancon say that the Judge construed claim 1 (the only claim that need be considered) too narrowly. ACS say he was right. So the whole question essentially turns on the proper construction of claim 1. In their skeleton argument for Ancon Mr Daniel Alexander QC and Mr James St. Ville tentatively advanced a further argument – that even if the claim as properly construed did not cover the ACS assembly, there was infringement nonetheless by virtue of the amendments made to Art 69 of the EPC and the Protocol thereto in 2000. In the event it is not necessary to consider this argument. All I would say is that has considerable difficulties both because our House of Lords has indicated it makes no difference ... and because a trawl through the travaux préparatoires to the EPC 2000 does not show a clear intention to change the law".

Monday 15 June 2009

Patents County Court reform: now's the time!

Hot off the press today are the proposals published by the Working Group of the Intellectual Property Court Users' Committee for reform of the Patents County Court, England and Wales. The document is some 24 pages in length. It lists the Group's members, provides both background and executive summary, details the proposals and the legislation that would be required in order to implement them and also bravely addresses some potential difficulties.

The Group is made up of the Patents Court's three most patent-oriented members -- Mr Justice Kitchin, Mr Justice Floyd and Mr Justice Arnold -- together with the Patents County Court's Judge Fysh QC and representatives of both the professions and their clients: Richard Miller QC (for the IP Bar Association), Alan Johnson (secretary to the Patents County Court Users’ Committee), Philip Westmacott (secretary to the Intellectual Property Court Users’ Committee), Alasdair Poore (for the Chartered Institute of Patent Attorneys), Philip Harris (for the Institute of Trade Mark Attorneys) and Tony Rollins (for the IP Federation).

The executive summary helpfully focuses on the essence of the Group's proposals:
"The Patents County Court (“PCC”) was created by Parliament to serve the interests of small- and medium-sized enterprises (“SMEs”) by providing an affordable forum for intellectual property litigation. The PCC has not succeeded in providing this, however. There are two main reasons for this.
The first is the fear of having to meet a substantial, and unpredictable, adverse costs award if unsuccessful. The second is that the procedure of the PCC is itself costly, because it is identical to that of the High Court. Changes both to the costs regime and to the procedure of the PCC are therefore needed. As regards costs, we propose that the regime be altered so as to restrict costs recovery to a scale basis except where the conduct of a party has been unreasonable.
On procedure, we propose that procedural rules should be made specifically for the PCC which are tailor-made to enable affordable litigation of intellectual property disputes by SMEs.
The main procedural changes would be:
 to require parties primarily to present their cases by sequential written
 to impose robust case management;
 to permit or require disclosure, experiments, factual evidence, expert evidence and cross-examination only where a cost-benefit test is satisfied;
 to limit trials to one or at most two days.
We also propose that the PCC should be clearly differentiated from the High Court".
Time is of the essence. In order for comments to be carefully considered and then passed on to Lord Jackson by 31 July 2009, the Group asks that you let Philip Westmacott have your comments by not later than 3 July 2009 (you can email Philip here).

You can read the proposals in full here.

Friday 12 June 2009

Revocation proceedings not an abuse of process even if not commercially justified

In TNS Group Holdings Ltd v Neilsen Media Research Inc. [2009] EWHC 1160 (Pat), a decision of Mr Justice Arnold of 20 May, the Patents Court for England and Wales ruled that the Patents Act 1977, s.72(1), which states that "any person" may apply to revoke a granted patent, means exactly what it says. On this basis, the intention of a claimant in revocation proceedings is irrelevant and it is not therefore an abuse of process to bring a revocation action even if the applicant has no commercial reason to do so. In this case, the patent owner had offered the claimant a licence to use the patent (for television audience management measurement systems) on terms which -- though confidential -- must have been sufficiently attractive for the patentee to be able to argue that the plaintiff would be no better off if the patent were revoked than if it remained in force.

The judge went further: a claimant's declared intention to use validity decision in the United Kingdom as persuasive authority when seeking revocation in other European jurisdictions was legitimate, since consistency of decisions as between European jurisdictions is a desirable end. As he said (at para.26):
"It is commonplace for parties litigating on the same European patent in a number of Contracting States to put before the courts of one Contracting State decisions arrived at in one or more other Contracting States. I do not see that such conduct can possibly be stigmatised as an abuse of process. That is particularly so given that such judgments may come to the attention of courts in other Contracting States in any event. The courts of all the Contracting States are seeking to apply the same substantive law. It would be most unfortunate if anything were to be done which made it more difficult for the courts of the Contracting States to arrive at common answers to common questions".
Having so held, Arnold J in any event refused to stay the revocation action before him, pending the outcome of opposition proceedings in the European Patent Office since the EPO proceedings would take at least two years longer than a final decision in the UK courts.

Thursday 11 June 2009

Translation costs: can anyone top this figure?

Lest anyone imagine for a minute that the cost of translation is a trifling consideration, here's a link to a note in the excellent Patently-O weblog on yesterday's ruling in Ortho-McNeil Pharm., Inc. v. Mylan Labs., Inc. (Fed. Cir. 2009)(Dyk, J.), full judgment here. The title of the note -- "Court Costs: $1,000,000 in Translation Costs Awarded to Prevailing Party" -- gives a good clue to what comes next, since the trial court awarded costs in favour of the successful party that looked like this:
Fees of Clerk $ 75.00
Service of summons & subpoena $ 1,676.81
Court reporter fees:
* Trial transcripts $ 31,225.18
*Deposition transcripts $ 112,911.70
* Witness fees $ 53,939.94
Exemplification & copying fees $ 89,424.20
Interpretation $ 24,512.36
Translation $ 1,011,712.00
Total $ 1,330,401.39
In this action, which involved a US patent for levofloxacin, the Federal Circuit upheld this assessment, with the exception of the cost of the depositions, which were split between this action and another in which the same patent was being litigated.

PatLit wonders whether its readers have ever seen larger translation bills. If you have, please email one of the team or post your figure by using the Comment feature below.

Wednesday 10 June 2009

EU to "clarify" parallelism of jurisdiction rules

The European Union's Council Decision of 27 November 2008 concerning the conclusion of the Convention on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters has been published today on the website of the Official Journal.

This Decision addresses parallelism between the Brussels and Lugano Convention regimes on jurisdiction and on recognition and enforcement of judgments in civil and commercial matters and declares that the rules of the Lugano Convention should be aligned with the rules of Regulation 44/2001 (which modernised the rules of the Brussels Convention and made the system of recognition and enforcement swifter and more efficient) in order to achieve the same level of circulation of judgments between the EU Member States and the EFTA States. Annex I of the Decision states:


‘The European Community hereby declares that, when amending Council Regulation (EC) No 44/2001 on jurisdiction, recognition and enforcement of judgments in civil and commercial matters, it intends to clarify the scope of Article 22(4) of the said Regulation with a view to taking into account the relevant case law of the Court of Justice of the European Communities with respect to proceedings concerned with the registration or validity of intellectual property rights, thereby ensuring its parallelism with Article 22(4) of the Convention while taking into account the results of the evaluation of the application of Regulation (EC) No 44/2001".

For the record, Article 22(4) of the Regulation currently provides as follows:
"In proceedings concerned with the registration or validity of patents, trade marks, designs, or other similar rights required to be deposited or registered, the courts of the Member State in which the deposit or registration has been applied for, has taken place or is under the terms of a Community instrument or an international convention deemed to have taken place.

Without prejudice to the jurisdiction of the European Patent Office under the Convention on the Grant of European Patents, signed at Munich on 5 October 1973, the courts of each Member State shall have exclusive jurisdiction, regardless of domicile, in proceedings concerned with the registration or validity of any European patent granted for that State".

Tuesday 9 June 2009

Evidence in process patent infringement proceedings: can you help?

PatLit publishes this evening a reader's request for information:
"In process patent infringements the problem is that the patent holder has considerable problems in presenting evidence on the process actually used by the alleged infringer. In some cases the reversed burden of proof in TRIPS Article 34 (or rather its domestic implementation) may be applied. This does not however resolve the problem. The alleged infringer is usually more than eager to present evidence (via expert witnesses) that the process used is completely different from the patented process. The patent holder and the court may naturally rely on these expert witnesses, but due to risk of bias, since the witnesses have been called by the alleged infringer, the best way to resolve this evidentiary problem would be for the court to engage an independent expert who would visit the plant in order to find out what process has been used.

Now to my question: I have heard that Mr Justice Laddie may have used this type of independent expert at least in one case where the process was located in India. Have I been misinformed or is there such a case?"
Does anyone know? If you do, can you please post the response below so that all PatLit readers can share it?

Friday 5 June 2009

The new European patent order -- a little more progress

Following PatLit's item on the latest European Union developments nearly a month ago, The Guardian has since reported that the Member States have agreed to ask the European Court of Justice to rule on whether "the draft plans to cut the cost of defending patents in a new system of courts would be compatible with EU law". The article continues:
"A one-stop system for filing and defending a patent in the EU has been a goal for decades but was thwarted by disagreement over which languages and court structure to use [These are only some of the issues. Others exist too].
Now EU states have been discussing a draft agreement [here] that would set up a unified patent litigation system with the European Court of Justice having a role.
Vladimir Tosovsky, industry minister for the Czech EU presidency, said the ECJ's opinion was needed before making further progress. "If such an agreement is concluded it would be much more effective to settle disputes in this area", Tosovsky told a news conference after a meeting of EU industry ministers [it's definitely preferable to settle disputes concerning the proposed system in advance and at the Commission's expense rather than in arrears and at litigants' expense -- but why can't we know what questions are being asked?].
In March the EU's executive European Commission formally asked member states for a mandate to set up a court system that would have jurisdiction over existing European patents and a future single EU community patent. This would avoid the need for a company to defend a patent in several national courts, a costly process.
By 2013 a unified court system would save an annual 148 million euros to 289 million euros ($202-394 million), the Commission has said. [The bases for calculations of this nature are inevitably conjectural. A new system may cause more litigation, therefore more spend]
"Once the Court of Justice gives an answer to the question then we will determine the further procedure," Tosovsky said.
If the ECJ gives the green light to details such as how many local and regional courts are needed, how to fund them and which languages should be used would have to be thrashed out"
We await further developments with excitement and trepidation.
For more information see IP:JUR here 

Monday 1 June 2009

Where in the world ...? Second Global IP Index reviews 24 places to litigate patents

Last month saw the publication of the second Taylor Wessing Global Intellectual Property Index. According to the firm's website,
"Based on an innovative analysis of surveys of senior industry figures globally and an array of published empirical data, the index provides an assessment of the best and worst jurisdictions to obtain, exploit, enforce and attack particular types of IP. Where once anecdotes, conjecture and even some prejudice may have informed our view of a particular jurisdiction, we are now able to rely on statistical analysis.

GIPI 1 [= Global Intellectual Property Index 1] covered the three main IP rights of trade marks, patents and copyright in 22 jurisdictions. GIPI 2 provides an update on that, using data from even more respondents (20% more than in GIPI 1), to whom we are most grateful. In addition, GIPI 2 includes:

* coverage of Ireland and Turkey, bringing the total to 24 jurisdictions;

* assessments relating to designs and domain names;

* consideration of regional systems of the Community Trade Mark/OHIM and European patents/European Patent Office (not fully ranked); and

* assessments of the cost-effectiveness of enforcement in each jurisdiction".
On patents, the report had this to say:
"Initial observations
Remarkably, the ratings for all jurisdictions have risen ..., with a narrowing of the margin between the lowest and highest ranked countries. The UK remains 1st and Germany has climbed into 2nd place ahead of the USA.  Australia is now 4th ahead of the Netherlands and Canada. Ireland is a new entry in 8th place sharing the same rating as Singapore. Japan consolidates its mid-field position in 10th place and South Korea moves further up to 12th place.
Turkey is another new entry, in 17th place. Mexico, South Africa and UAE show strong gains in their ratings. The BRIC jurisdictions again occupy the bottom four places of the Patent Index although they have all gained points in their ratings. Russia is now leading this group with the strongest score gain of any country.
The biggest fallers in rank (ignoring the effect of new joiners) were Israel, Spain and Poland.
Respondents continue to identify the same factors as key to high scoring as in GIPI 1. These are:
* Relatively speedy and effective procedures.
* Specialist patent courts.
* Well-respected and experienced judges.
It is these, above even cost considerations, that continue to place the UK, Germany and USA in the top 3 positions, both overall and also for each of enforcing, exploiting and attacking patents. ...
It was concluded in GIPI 1 and now confirmed by GIPI 2 that cost considerations play a role, but not a determinative one, in the ratings and ranks. This was somewhat unexpected, given the present adverse economic climate. When asked to score jurisdictions for cost-effectiveness of enforcement, the spread of scores was narrower overall. As with all the other major IP rights, Germany was rated highest for cost-effective enforcement by a clear margin and, as with trade marks, Mexico came 2nd. With virtually identical scores, New Zealand, Canada, France and the UK come next. The USA came last.
To have the UK ranked highly for cost-effectiveness may surprise some. This is not least given the very public criticism made by a High Court judge in his judgment last year against a patentee for racking up £6 million in legal fees on enforcing its patent and defending it against a revocation counterclaim. With losers generally having to pay a substantial part of the winner’s costs, the possibility that those costs can approach this figure is a disincentive to litigation. It has to be said that this case was exceptional, with costs about five times more than an average one. However, it has resulted in the English patent court judges taking a more proactive role in seeking to cap patent action costs. 
Significantly, the USA was ranked bottom, alongside India as the least cost-effective country for patent enforcement (just below China). Aside from cost considerations, England is still perceived as somewhat anti-patent, at least for pharmaceuticals. It topped the score table, by some 40 points, for challenging patents. In fact, this reputation and that score may be less justified now since, in just over 30% of the English cases in 2008, the patent was held to be valid – considerably up on previous years.
In Germany, the EU Enforcement Directive was implemented during 2008 broadening patentees’ rights to information concerning the scope of infringing acts and gathering evidence. In particular, the court practice on granting pre-trial inspection orders was confirmed by statutory provisions added to the German Patents Act Although Germany and the US have tended to be regarded as patentee-friendly systems, they were likewise high scorers for attacking patents.
Other common law countries also saw gains in ratings but not necessarily rank:  Australia is rated highly for obtaining and exploiting patents but drops back a little in the contentious arena. Judges and court users have long recognised a need to streamline the Australian patent litigation system. This has led to the Australian Federal Court to rolling out an intensive case management procedure that aims to limit discovery and expert evidence.
New Zealand increases its rating but falls effectively one place. ... “New Zealand’s patent law is over 50 years old and antiquated for emerging technologies.”
Canada, dropping one rank but with a slight rating increase, is criticised for being the only G7 economy not having patent term restoration. ...
The Asian jurisdictions all see rating gains: Japan and South Korea showed respectable gains in ratings points and retained their mid-table positions. ... [Japan's] specialist IP courts are perceived to have been further improving both their speed and quality of first instance decisions. Singapore’s slight gain may reflect the benefits of recent amendments to its laws aimed at facilitating patent licensing (its highest rate and ranking, 7th, was for exploiting patents). China’s increased score still leaves it bottom of the table. ...

Israel’s drop in rank, but gain in rating, suggests its progress is not as good as others. It has notably remained in this year’s Special 301 Priority Watch List largely because its laws do not, according to the USTR, satisfactorily prevent unfair commercial use of undisclosed test data used in applications for marketing  authorisation and makes no allowance in patent duration for delays in obtaining such authorisation (i.e. there is no equivalent to the UK Supplementary Protection Certificate). Mexico is likewise hauled up for this.
There was again major disparity across Europe for dealing with patent disputes. Score variances of 231 points (attacking patents) and 211 points (enforcing patents) arose between the top and bottom scoring EU Member States. The latter were Spain, Italy, and Poland. The rank variance was from 1st to 20th/21st, so almost the entire GIPI table. To the extent there is a centralized European system at all (for obtaining and attacking patents), the European Patent Office would have been placed 7th overall and slightly higher for obtaining patents. The latter may reflect the implementation of the London Agreement which has assisted in cutting back on the material cost of translation in obtaining European-wide patent protection.
However, responses expressed mixed feelings about the EPO:"
This year's survey is not only wider in scope and deeper in content -- it is also more rigorous in terms of methodology than its predecessor. Taylor Wessing has provided a valuable service to the patent litigation community in commissioning this work and making it available to the critical scrutiny of all. It would be good to think that work of this nature, which reflects the opinions of those who work within the patent dispute resolution system, would be given as much weight as some of the more academic materials on which Europe's leaders are likely to base their next moves towards European patent litigation reform.