Monday, 29 December 2014

Patent litigation and cost shifting in Europe: a new article

"Patent litigation and cost shifting in Europe: critical appraisal and proposal of alternative solutions" by Filipe Fischmann (Research Fellow, Intellectual Property and Competition Law, Max Planck Institute for Innovation and Competition), has today been published online for the benefit of e-subscribers to the Journal of Intellectual Property Law & Practice (JIPLP). You don't have to be a regular subscriber to read it, though, since non-subscribers can purchase limited-time access to it from the JIPLP website here. According to the abstract:
"This article analyses different costs rules and practices regarding patent litigation in Europe, explains the functions played by cost-shifting provisions and proposes the introduction of a modulated two-way fee-shifting system, in order to enhance patent litigation".
The author concludes:
Cost shifting is one of the fundamental elements of litigation, as it represents an important element in the decision to go to court. In Europe, the Enforcement Directive tried to harmonize national costs rules, but they, and the respective practices, are still particularly divergent among EU Member States, as the analysis showed. The different systems adopted by Germany and England and Wales show that each scheme has its advantages, but also some shortcomings. Although one Member State can learn from the practice of the others, its own tradition may represent a barrier to the implementation of alternative solutions.

However, the creation of the UPC represents an exceptional opportunity for the adoption of new measures on litigation rules in general and also on cost-shifting provisions in particular. Although the different traditions of each Member State may and should be considered, the creation of the UPC could allow the adoption of creative measures, as long as they comply with EU rules. The UPC should therefore make use of costs scales, profiting from the German experience, and of an issue-based approach, benefiting from the English and Welsh practice. Moreover, the UPC should reformulate the English and Welsh experience with certificates of contested validity and create a modulated two-way fee-shifting system, which may help improve the patent system.
This is obviously of interest to readers of PatLit who litigate patents in Europe, or may find themselves doing so under the new European patent regime in the near future.

1 comment:

MaxDrei said...

I am reminded of the debates back in 1973 when the EPC was written, on various aspects of the substantive law of patentability. Each country had its cherished traditions, its little legal quirks that it saw as indispensible, but each had to run the gauntlet of criticism from the other countries who lacked such a quirk in their tradition.

What emerged was a compact code of law, quirk-free, that contained only such provisions as could withstand critisim from all sides. It worked out well, didn't it?

Let there be a similar debate now, about cost-shifting. Brits say that the simple fixed fee scales in Germany have detrimental effects. Germany criticises the much more flexible taxed costs regime that rules in EW. Intuitively, one supposes that there is a middle way, that preserves the good and eliminates the bad. You know, rather like the Art 69 EPC Protocol, that insists upon a "balance" of fairness for the parties and predictability for those who are asked to finance the litigation.

A once in a lifetime opportunity, for sure, to advertise Europe as a jurisdiction fit for patent litigation.