Wednesday, 29 May 2013

Best Practices in IP 2013: patent enforcement

The final session of today's Tel Aviv conference, "Best Practices in Intellectual Property 2013: International Perspectives on Creating and Extracting Value", dealt with enforcement -- including patent litigation.  Moderated by Zeev Pearl (Pearl Cohen Zedek Latzer), the session was opened by Luc Savage (Orange), who spoke on the advantages of patent pooling.  Some patents are "standards-essential", he said, while others are "commercially essential" [a term with which, this blogger is embarrassed to say, he is unfamiliar]. This was contrasted with "privateering", as described by Ruud Peters (Philips), a way of licensing third-party ships to seize the ships of one's enemy (and now licensing a third-party company to sue in respect of the products of one's competitors).  This can obviously benefit both the patent owner and the privateer.

Daniel Pabst (Pabst Licensing) then explained the policy developed by his family in protecting the family business's patents, which were treated with disdain both by its bank and by its infringing competitors. The company ceased to trade as a manufacturer, laid off its workforce and became a licensing company. Working closely with customers of its licensees, who were encouraged not to purchase components who had not concluded patent licences, Pabst has managed to retain a large share of its markets -- though it has been dragged into patent litigation from time to time in which the effect has been for infringers to take licences.

Huw Evans (Norton Rose LLP) reviewed the pooling, privateering and licence-company options: all were viable in appropriate circumstances. He also spoke of FRAND-based patents and the circumstances in which an injunction might be available even where the patent owner has made it plain that it is willing to license a standard patent on fair, reasonable and non-discriminatory terms (on which see the Huawei CJEU reference here).

The panelists then reviewed the problems faced by the small patent owner faced with infringements by large-scale corporations, particularly where that patent was its sole asset and was at risk of being invalidated in a counterclaim, as well as the routes to settlement where litigation is threatened. The need for a small company to be able to get on with its business, unencumbered by the expense and stress of patent litigation was recognised, even where that company was being asked to pay a royalty for use of a patent where it considered that there was no need for it to do so.

Earlier sessions of this conference have been noted on the IPKat herehere and here and on IP Finance here and here

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