How to play the European litigation game

“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.