From the monthly archives:

April 2009

International Patent Litigation: A Review

by Andrew Watson on 23 April 2009

The “flat world” (as Thomas Friedman put it) and the ease of global communication and transport bring with it more global business, and more global business means international disputes. In the IP world, this is no truer than in the realm of patent litigation, with its expense and potentially high stakes. International Patent Litigation by Globe Law and Business and edited by David Wilson addresses what happens when faced, either as a defender or a pursuer, with the prospect of litigating internationally.

As the preface notes, “the increase in the need to effectively resolve patent-related disputes has led most jurisdictions to develop specialised procedures and … tribunals to be able to deal with the unique nature of patent litigation.” So it’s not enough to merely know about legal disputes in place for the jurisdiction at issue, but rather about how patent disputes are handled by the legal system.

The role of the book is to give an overview to the strategist or manager of international patent litigation, rather than an in-the-trenches guide to conducting patent litigation in a specific jurisdiction. On that end, it is useful, and pitched at, in house counsel, though I’d add that it’s almost purpose-built as a handy resource for IP strategists.

In the first chapter David Wilson (the book’s editor) gives a key overview of the strategy and considerations involved when trying to orchestrate an international patent spat on either side. The remainder of the book covers the specificities of 13 major European jurisdictions and the other (than the EPO) two players in the tri-lateral system – the United States and Japan.

The introductory chapter on strategy and management of international litigation covers all the bases efficiently, and (quite sensibly) even includes a handy checklist of areas to consider, such as:

  • pre-filing evidence gathering
  • availability of interim relief
  • timescale of the proceedings
  • disclosure/discovery

Wilson also highlights practical issues that we’ve seen at ipVA, such as one subsidiary within a company holding the patent without ever giving an actual licence to another subsidiary that actually exploits it.

The country-specific chapters cover even the simple stuff that makes figuring out a new jurisdiction much easier, such as the types of lawyers involved (who does what). This can serve as an especially sobering reminder to consider looking at the credentials of key personnel for jurisdictions that don’t restrict the rights of audience, such as Finland. The UK section concentrates on English law and the Patent Courts rather than Scotland (as few cases tend to brought there).

Each jurisdiction profile also features

  • An overview of the court system
  • Claim construction
  • Infringement versus validity as separate proceedings
  • Disclosure and evidence gathering
  • Damages
  • Costs

…and much more, as well as…

  • A hand bullet point summary of the jurisdiction as a conclusion.

Reading each section also provides a window into the “local lingo”, so that users can understand when, for example, their lawyer starts talking about Anton Piller she isn’t referring to their associate. Several sections, such as the Japanese coverage, even has some handy flow charts and corresponding time lines for litigation in the Tokyo and Osaka district courts.

Though there are certainly moves to further harmonize patent litigation and enforcement, such as the EPLA, Community Patent or the recently proposed Unified Patent Litigation System, changes to jurisdiction-by-jurisdiction enforcement of patent rights remain firmly fixed on the horizon. This book provides concise and practical insight when considering the prospect of enforcement across a flat world.

International Patent Litigation is available from Globe Law and Business at http://www.globebusinesspublishing.com/IPL/

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IP is the new oil

by Andrew Watson on 18 April 2009

In IP Is Now Job One For Every Senior Executive (Forbes), Mark Blaxill and Ralph Eckardt describe IP’s role for the modern business, echoing many of the themes we’ve been discussing here at ipVA, especially around IP and the need to move it as a forward-looking business issue. As you might expect, I whole-heartedly agree with all these points (and they’ve come up with some great quotes along the way).

In approaching these themes, they also expand on the role of IP at a national level, and in so doing compare IP to oil:

The U.S. is currently the Saudi Arabia of IP reserves. American companies control 33% of the world’s triadic patents… . By comparison, Saudi Arabia has only 20% of known oil reserves. And IP has an enormous beneficial impact on our balance and terms of trade.

Which incidentally make me wonder about where then lies IP’s “pipeline politics” – perhaps the evolution of TRIPs at the WTO? They also go on to compare the US position with its (supposed arch-rival in IP), China:

But the rest of the world is nipping at our heels. China, for example, is not content to serve as the world’s low-cost manufacturing hub. It has set its sights on IP as its next chief driver of economic progress. In 2007 the chief scientist for China’s Academy of Sciences, Niu Wenyuan, called intellectual property rights “the No. 1 strategic reserve in the 21st century” and added that their “significance is not inferior to any other strategic reserve, be it food or energy.”

Regardless of whether IP is as significant as energy or food, I do think that the “stuff” IP protects (call it intangibles or intellectual capital or just innovation) definitely makes a significant driver of growth for both individual companies and nations as a whole. China’s quite right to explicitly consider its role internationally. Indeed, innovation is one of the great strengths of UK plc, and unlike oil, the UK has significant reserves: So let’s go about getting better at recognising, exploiting and protecting it.

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Broken IP business structures

April 8, 2009

Andrew and I recently completed an article for Managing IP on Broken IP structures for the April issue, which is now out. Subscribers (including trial users) can now see the article up on the Managing IP site. The seeds from this article were planted back at the 2008 IP Business Conference in Amsterdam, when a […]

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IPReader links for 6 April

April 6, 2009

New and noteworthy links from around the web: Republishing MySpace Post in Local Paper Might Be IIED–Moreno v. Hanford Sentinel – Interesting case of potential tort of Intentional Infliction of Emotional Distress (IIED) involving a newspaper publishing a MySpace post without permission. Playmobil figurines, a vicar and a copyright dispute – A bit of Friday […]

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