Isabelle Romet, Colm Ahern and Liad Whatstein provide insight into recent changes in patent law and the unique features of patent disputes in their jurisdictions. They also provide a framework for staying ahead in today’s increasingly competitive and globalised market.
Isabelle Romet: All patent practitioners will live a major change when the Unified Patent Court (UPC) opens at the end of 2016 or early 2017. This will be a unique experience and a major historical step forward. This revolution already requires intensive work to contribute to the elaboration of the system in order to make it as efficient as possible, assimilate these sets of new rules and test them with judges through mock trials, help our clients, worldwide, to define their future options and strategy.
Regarding French patent law, it was slightly modified by an act of 11 March 2014. The limitation period for acts of infringement was increased from three to five years. Customs measures very similar to those provided by European Regulation (EU) No. 608/2013 are possible against products coming from another European country since 18 April 2015.
Liad Whatstein: Israeli patent practice is characterised by a unique and complex patent term extension system which is based on multiple linkages to the shortest (in period and duration) PTEs/PSCs and to the earliest regulatory approval in recognised countries. The recent Amendment 11 entered in 2014 shortened the list of recognised countries from 21 to seven, but added several other provisions which may likely curtail eligibility for patent term extension. This is the third time the PTE provisions are revised since their inception in 2003. The revisions are mostly driven by generic pressure intended to limit PTE eligibility or duration. The most recent amendment was in fact prompted by a bilateral agreement between Israel and the US which aimed to somewhat mitigate the extensive pro-generic revision which took place in 2007. However, the legislative process eventually yielded, again, legislation which is biased against the innovation industry and likely to generate significant litigation in coming years to clarify some of the more obscure provisions of the novel legislation.
Colm Ahern: Although there are many different opinions as to how quickly the UPC will take off and to what extent rightholders will exercise their right to opt out, it is important to prepare for the more practical aspects of the new system. Many of the issues which currently dominate public debate such as fees and language will in the end only be remembered as teething problems. The new system requires a completely new breed of patent litigator who will feel comfortable appearing before courts in different countries, using different languages and who can adapt to rules that are different to those applying currently in each country. The procedure is largely front loaded which will be quite a challenge for practitioners from common law jurisdictions. Litigators will be required to be familiar with case law from many different European national jurisdictions if they are to survive in the very dynamic start-up phase where many different traditions will be merged. The analysis of scope of protection is still carried out quite differently by judges in London, Düsseldorf and Madrid despite the fact that they have all applied for many years the same rule which will be applied by the UPC. Counsel pleading before a panel of judges of mixed nationality will need to have an appreciation of where each one is coming from when an issue such as infringement hangs in the balance.
At national level, Spain will shortly have a new Patent Act which will replace the very successful 1986 Act, whose passage was one of the requirements for Spain’s entry into the EU. It drew heavily on German doctrine and created a high degree of legal certainty, which has been complemented by a body of case law that is in line with best practice in Europe. The proposed new Act is evolutionary and contains no radical departures, but rather introduces improvements in both prosecution and litigation. Substantive examination will now be obligatory for all patent applications. The anomaly of the local novelty requirement for utility models, which limited prior art to just Spanish disclosures, will be removed. The most significant changes are however procedural. The rules of territorial competence will bring most cases to those cities where specialist patent courts have been created. This has already happened in Barcelona and will probably happen soon in Madrid. Thus the de facto tendency of recent years for cases to be concentrated in these two cities will be accelerated. The new Act is expected to be approved by Parliament sometime in 2015.
Isabelle Romet: Patentees have various good reasons to choose France for a patent infringement case. Saisie-contrefaçon procedure makes it possible to gather quickly and efficiently infringement evidence before starting the proceedings.
Non literal infringement is broader in France than in many other countries, as still recently shown by the decision of the Cour d’appel de Paris of 20 March 2015 finding infringement by equivalents in a case relating to helicopters, in favour of Airbus Helicopters.
The winning rate is reasonable: as far as French designations of European patents are concerned, over the period 2000-2014 and in first instance, patents were held valid in 77 per cent of the cases and about 43 per cent of the patents found valid were found infringed, which means a rate of success of 38 per cent for the patentee. The duration of proceedings in first instance has decreased to 18 months on average and may be shorter when necessary.
Some patentees complain about the low number of preliminary injunctions: this is because French judges do not want to take the risk of granting preliminary injunctions on the basis of a patent which would later be found invalid or not infringed; this approach also protects the patentees from the risk of high damages to be paid to the defendant to compensate for the profits lost due to a preliminary injunction.
Liad Whatstein: In fact, most patent litigation in Israel is conducted at the patent office level. Israel has a pre-grant opposition system – ie, oppositions automatically suspend patent grant. In addition, unlike EPO proceedings for instance, opposition proceedings at the IL PTO are equivalent to full-scale litigation. Among others, the parties submit evidence and written expert opinions and thereafter there are extensive hearings with oral cross-examination of the witnesses and experts. Therefore, opposition proceedings need to be conducted by experienced litigation counsel. On the other hand, the number of patent infringement proceedings that are heard by the courts is quite limited. Preliminary injunctions are available in infringement proceedings if the patentee shows a prima facie case and significant damages are likely as a result of the infringement. Ex parte injunctions and Anton Piller orders may also be available in appropriate circumstances. The approach of the courts is essentially favourable to innovators, whereas at the IL PTO one could arguably detect at times an inclination to judge patents with an overly formalistic or restrictive approach.
Colm Ahern: Spain has currently well over 100 patent cases a year which places it towards the higher end of the scale in Europe, dwarfed however by Germany which has well over a thousand. Surprisingly some of the largest countries in Europe have only around 50.
Spain has an exceptionally efficient if harsh procedural law which is probably the most front-loaded in Europe. All pleading and documentary evidence including expert reports must be filed along with the initial submission to the court, and are precluded thereafter. Although tough on attorneys and clients it does lead to faster, more efficient proceedings which are very cost-effective. Because judges already have practically everything before them in documentary form, trials typically last one or at most two mornings and are usually confined to hearing a strictly limited number of expert witnesses clarify their reports. Judgment on the merits can usually be obtained within 12 to 18 months.
In most cases patent owners can choose where to bring an infringement case, which will normally be in Madrid or Barcelona where high volume has led to very good predictability regarding the outcome. Combined with the speed of the procedure, this has made Spain a very attractive venue for patent litigation.
Isabelle Romet: It is true that competition has increased in the legal market place with the number of practitioners. Our motto remains excellence based on experience, rigorous work, personal commitment and a true team spirit. To be as efficient as possible, we decided to dedicate ourselves to patent litigation and to organise our team to cover the multiple facets of patent disputes: we became “100 per cent patent litigation”.
For this purpose, we have developed a multidisciplinary team, including 12 attorneys-at-law, two scientific consultants (a professor of physics and chemistry and a doctor of pharmacy) and a network of high level scientists to help the attorneys-at-law to elaborate strong technical demonstrations, an economic litigation consultant to assess the financial stakes and calculate damages, a graphic designer to create all types of visual aids in support of our demonstrations and a team of legal translators; we keep on the lookout for cutting-edge technology.
Liad Whatstein: We strongly believe that the edge over the competition is first and foremost gained by the combination of litigation skills and scientific adeptness. Our lawyers have very strong and diversified scientific background. But most importantly, we always attempt to be creative on the scientific side whether it relates to the development of the patentability narrative or proof of infringement. Our team among others utilises cutting-edge analytical methods, supervised complex experiments for patent litigation and devised novel approaches for global patent litigation. In conjunction of course with a high level of service and responsiveness, we consider that scientific savvy is the most important asset a firm can provide to its clients.
Colm Ahern: Although the technical complexity of patent cases poses challenges, it increases objectivity and predictability. To increase competitive edge it is necessary to concentrate significantly more of the effort and therefore cost for the client in the preparatory phase long before a decision to go to trial is taken. Unexpected weaknesses which are painful and costly when pointed out by a judge or an expert witness can often be foreseen and acted upon earlier. In patent cases this usually means having lawyers who combine legal and technical qualifications and who can get a good appreciation of the complexities at an early stage.
Isabelle Romet: Our firm has developed an open network of foreign attorneys-at-law and patent attorneys. We create tailor-made teams in each case considering its legal and technical specificities, as well as the wishes of our clients.
Liad Whatstein: We have been working with numerous law firms in many jurisdictions. We have developed very strong professional and personal relationships with leading professionals in most important jurisdictions. The relationship is candid and honest and is merit based. When a client needs cross-border support we are in a position to offer the right contacts depending on the client’s technology, needs and resources. We always find the cooperation with additional firms from diverse jurisdictions to be a fruitful experience and we learn a lot by being exposed to different legal systems.
Colm Ahern: Patent cases which are confined to one country have become the exception rather than the rule. Cross-border litigation poses many challenges and requires an outward-looking approach with litigators who can work well in an international team, have good language skills and an appreciation of different legal systems and more importantly the interfaces between them. Issues such as extraterritoriality, jurisdiction, choice of law, possibility of discovery, use of foreign documents and witnesses all need to be carefully managed. But perhaps the greatest challenge is locating good quality local counsel which can be difficult if one is tied to one global supplier. This is where a large network built up over many decades can be decisive.