EU patent enforcement: a comparative guide
The comparative strengths and weaknesses of European nations’ patent enforcement systems were laid bare during the conference, which took place on September 24.
The UK is considered strong for both discovery and fact-finding, as well as having reputable judges, but its robust analysis of patent validity makes nullity or serious claim limitation more likely. In France, evidence collection tools are seen as robust, but damages and reimbursement of costs are not yet high enough. While Germany’s system of handling infringement separately from validity is viewed as a plus, on the negative side, an infringement case can be stayed because of a direct nullity action. Like in France, evidence collection tools in Italy are considered good, as is the ability to enforce even during the application period of a patent. However, as in Germany, a direct nullity action can lead to an infringement case being stayed. Finally, while the Netherlands can provide a pan-EU preliminary injunction within six to eight weeks, a perceived weakness is that in accelerated proceedings there is limited time to respond to a counterclaim for invalidity.
Against this backdrop, the landscape for preliminary injunctions was then reviewed. All the aforementioned EU states allow for such injunctions, but the timeframe for obtaining one varies. For example, Germany can issue a preliminary injunction within a few days in some cases, as can the UK, depending on the urgency. It typically takes six to eight weeks in both the Netherlands and France, but more likely nine to 12 months in Italy. The prospects of getting a preliminary injunction also vary country by country – for example, you have approximately a 55% chance in Germany but just 35% in France; on the whole, Germany, the UK and the Netherlands are seen as injunction-friendly.
As discussions on cross-border litigation continued, the telecoms sector came under the spotlight. Challenges discussed were the differences in legal systems and lack of harmonisation across Europe, plus peculiarities surrounding fair, reasonable and non-discriminatory (FRAND) licensing. Factors in deciding where to bring a lawsuit include timing, approach to validity and infringement, and the existence of specialised and experienced courts and judges. Germany is considered the key jurisdiction for FRAND litigation, followed by the UK and the Netherlands. Arbitration is also an option for resolving disputes, offering confidentiality and the option to choose judges, but the costs in Europe can be high.
Building a strong IP department
Clarissa de Jager, general counsel and director of IP at Ceres Power in the UK, began a discussion on how to build a strong in-house team by emphasising the need for a creative IP strategy.
“There is more and more technology being driven by innovative people. But what are private practice or in-house doing differently? Do we have a fresh approach to meet the needs of new innovative tech companies? Or is it ‘same old’? Ceres Power has been doing business with the big boys; we have learned creativity,” she told the audience.
She explained that her company has a unique approach to hiring external counsel. Not only does it look for the best people to work with, it chooses individuals from multiple firms and puts them together to make a dream team of IP counsel.
“We handpicked a team we could work with, drawing from various firms across the world. We had a mixed team and forced a collaboration with our external advisors. This is tough because they aren’t trained for that – our training is in an adversarial system, and collaboration is something others do!” she said.
She ended by saying that while having a strong patent portfolio is very important when making a deal with bigger companies, the real substance comes from trade secrets.
“In the deals that we did, they had of course seen all our patents as public information, but could not replicate our technology. That was because the glue that held it all together was trade secrets and our clever, clever engineers. The value of the deal lay as much – if not more – in our trade secrets and people. The patents were a stepping stone,” she said.
Should you feed patent trolls?
One of the more heated discussions took place on the audience floor, rather than on the stage, during a conversation on non-practising entities (NPEs) – some of which are described as patent trolls.
One audience member said the debate on trolls is a grey area, posing the question of whether it is right, from a reputational viewpoint, for companies to ‘feed’ trolls by negotiating with them. But this sparked a response from another attendee, who asked why the nature of a patent is considered to have changed just because of who owns it. “It’s either valid or not,” he said, explaining that he has represented a so-called troll that has spent millions getting to where it is today. “I don’t understand this debate about trolls,” he added.
The first audience member responded again, saying he has had approaches from trolls but would not negotiate with them because “feeding the trolls is making the situation worse”. Someone else then pointed out that, according to research on NPEs in Europe, the issue of trolls is insignificant. In fact, they said, the research showed that the number of NPEs that were sued was higher than the number that had sued others, in a reverse of what might be expected. “The issue in Europe is totally different to that in the US,” he added.
Blockchain and Brexit
The conference had kicked off with a conversation on patent strategy for Europe in 2020. Speakers cited blockchain as an example of the recent developments and challenges that in-house IP teams face in patenting new software.
Statistics given by the EPO said there are 1,873 blockchain patent families, with most new filings in Europe hailing from Denmark. Panellists noted that their IP challenges are different from those of previous generations because of eligibility standards around software and inventorship.
The end of the discussion briefly turned to Brexit with comments that while the current situation doesn’t affect patents directly, it will have an impact. “The main thing is to build a strategy when we don’t know what is going to happen. We think there will be mechanisms, but they aren’t here yet.”
The European Patent Forum was hosted by Managing IP.
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