How to play the European litigation game

Managing IP is part of Legal Benchmarking Limited, 1-2 Paris Gardens, London, SE1 8ND

Copyright © Legal Benchmarking Limited and its affiliated companies 2025

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

How to play the European litigation game

European patent litigation is a game with very complicated rules, speakers agreed at a panel discussion during today's Managing IP International Patent Forum in London

“You take the rules as they are and try to use them,” said Lord Justice Jacob, who has recently retired from the Court of Appeal of England and Wales to become a professor at University College London.

He added that the lack of harmonisation in patent litigation is “a huge problem” for Europe and added that it is not likely to be resolved soon, given the recent adverse opinion from the Court of Justice on the proposed European Patent Court.

The effect, said Jacob, is that patents may be asserted in one country, such as Germany, while the defendant seeks revocation in another, such as the UK.

Richard Vary, director of European litigation for Nokia, backed this up. His company has been involved in 84 patent cases in recent years, he said. Of these, 51 have been in Germany and 19 in England. Typically, the UK cases involve Nokia seeking to revoke patents.

“There are a lot of relatively weak mobile phone patents out there,” said Vary. But he added that revocation strategies could be successful “if you get the timing right”.

He also welcomed moves by the validity court in Munich to give quicker preliminary opinions and to deal with cases where patent owners argue that a patent is narrow for validity purposes but broad for infringement.

Meanwhile, said Massimiliano Mostardini of Bird & Bird in Milan, since September last year the Italian courts have been willing to issue decisions finding non-infringement. These can be given in as little as two to three months or six months if the judge appoints a technical expert.

“The decisions are provisionally binding,” he said, adding: “Remember: Italy is not a normal country.”

Jacob welcomed the use of court declarations in principle, including declarations that it would be impossible to infringe a standard and declarations regarding an entire patent family.

“If there was the availability of relief that could deal with all the patents at once that would make things easier for everyone,” he said.

Vary said that in telecoms disputes many cases go before the US ITC, and the courts in London and Mannheim as they are perceived to be the quickest forums.

He added that, in Nokia's recent experience, the average cost of litigation per patent is about the same in the UK and Germany: “When you add up the total number of days in court, it balances out.”

Vary also recommended the opportunity to obtain a non-binding opinion from the IP Office in the UK. Nokia recently received an opinion on infringement and validity in two months, he said: “If you're looking for quick guidance, that seems to be the fastest.”

All the panellists agreed though that, unlike in the US, the availability of damages is rarely a priority in European forum shopping. “It [damages] doesn't feature on the list of where to sue,” said Jacob. “Damages are way down the list of considerations,” added moderator Morag Macdonald of Bird & Bird in London.

The International Patent Forum takes place today and tomorrow. More reports will be available on managingip.com.

more from across site and SHARED ros bottom lb

More from across our site

A settlement between Philips and Transsion and a loss for AstraZeneca in the UK were also among the top talking points
Working with Harvey and Microsoft, the firm has been at the forefront of developing AI tools for its lawyers, and is now exploring new projects and business models
The Emotional Perception AI case, which centres on the patentability of an artificial neural network, will be heard next week
Developments included a court order related to InterDigital’s anti-anti-suit injunction against Disney, and clarification on recoverable costs
Partners at Foley Hoag examine how recent CJEU jurisprudence may serve as a catalyst for recalibrating US judicial reluctance to entertain foreign patent claims
International law firms have high hopes for their IP practices in Saudi Arabia, with many opening offices, but recruiting and retaining talent in the Kingdom presents unique challenges
Patrick Ogola joins us for our ‘Five minutes with’ series to discuss helping African entrepreneurs on the global stage, and explains why young lawyers should speak up
Heli Pihlajamaa, the EPO’s principal director for patent law and procedures, joins us to take stock of the unitary patent following its second anniversary
Kelly Thompson, chair of South African firm Adams & Adams, discusses self-belief, self-doubt, and the importance of saying yes
The renowned food brands were represented by a host of lawyers, including members of the firms’ IP teams
Gift this article