What is the forum for the conduct of patent litigation?
First instance patent proceedings are conducted in the Federal Court of Australia. Appeals are heard by the Full Court of the Federal Court of Australia, and with special leave, the High Court of Australia.
There is no formal specialist patent division of the Federal Court. However patent cases are generally allocated to a member of a panel of judges with experience in patent matters, some with a technical background.
Austrian has a bifurcated system. In infringement proceedings the Commercial Court of Vienna has exclusive jurisdiction. Invalidity proceedings and opposition proceedings against national patents take place before the Austrian Patent Office (APO).
Patent infringement cases before the Commercial Court Vienna are decided by specialist senates composed of two professional judges and one lay judge with technical expertise, who is usually a patent attorney. Decisions of the Commercial Court may be appealed to the Higher Regional Court Vienna, where patent cases are also decided by a three-judge senate, with one lay judge with technical expertise. An appeal to the Austrian Supreme Court is possible if the case depends on a fundamental question of law of importance beyond the particular case. At the Supreme Court, a senate of two technical judges and three professional judges decides patent cases.
Opposition proceedings are decided by the Technical Department of the APO and the Revocation Division decides in invalidity proceedings. Cases are decided by one legally qualified and two technical members in opposition cases and by two legally qualified and three technical members in invalidity cases. Decisions of the APO may be appealed to the Higher Regional Court Vienna and then – in cases dependent on a fundamental question of law – to the Supreme Court. The composition of the deciding senates at the Higher Regional Court and the Supreme Court is the same as in infringement cases.
Brazil adopts a bifurcated system. The federal courts decide invalidity cases and the state courts hear infringement. The system shares similarities to the German bifurcated process.
Some states have specialized IP courts. Rio de Janeiro is the only state that has specialized federal district courts as well as federal appellate chambers to hear IP invalidity cases.
Invalidity can be raised as a matter of defense (art. 56, paragraph first, of the Patent Statute #9,279/96). However, the Superior Court of Justice has split decisions over whether the state courts can accept the invalidity defense.
Validity lawsuits have the BRPTO (INPI) as a mandatory party, named as co-defendant together with the patent owner. Venue is established at the patent owner´s principal place of business or at the INPI’s headquarters (Rio de Janeiro or Brasilia, the legal venue established by Statute #5,648/70). If the patent owner is a foreign company, art. 217 of the Statute #9,279/96 and unsettled case law, establishes that the lawsuit can be filed in the office location of the attorney at law with legal power to represent the patent owner.
Patent infringement actions are filed before state courts. Some states, such as São Paulo and Rio de Janeiro, have district courts specialized in commercial disputes, including patent litigation matters. São Paulo has specialized chambers at both the first instance and the appellate level. São Paulo and Rio de Janeiro are the largest forum with patent litigation in Brazil.
Patent infringement actions in Canada can be heard in the first instance in either the Federal Court or in an appropriate court in one of the Canadian provinces. The Federal Court is a Court of national jurisdiction. Further, the Federal Court has exclusive jurisdiction over patent impeachment actions by which the Court can order that the Canadian Patent Office expunge a patent from the register. As such, the majority of patent infringement actions in Canada are brought in the Federal Court. While the Federal Court does not necessarily have patent specialists or technical Judges, many of the Judges have considerable experience with patent litigation.
References to the courts and their procedures throughout this paper are with respect to the rules and procedures of the Federal Court system, except where there is express reference to the provincial courts systems. While the substantive law of patent litigation will be the same throughout all jurisdictions, and the various provincial courts systems and procedures are similar to that of the Federal Court, there can be some differences.
The patentee can enforce a patent before the Beijing Intellectual Property Court, Shanghai Intellectual Property Court, Guangzhou Intellectual Property Court or one of the 20 Intellectual Property tribunals which are located in Nanjing, Suzhou, Wuhan, Chengdu, Hangzhou, Ningbo, Hefei, Fuzhou, Jinan, Qingdao, Shenzhen, Tianjin, Zhengzhou, Changsha, Xi’an, Nanchang, Lanzhou, Changchun, Wulumuqi, Haikou. Generally, the patentee would consider the capability of judges, difficulty in gathering evidence, and trial period, etc. to choose the court or tribunal.
Except for design infringement cases, all of patent cases shall be appealed with the Intellectual Property Tribunal of the Supreme Court.
The City Court in Prague is the only court with jurisdiction to hear patent related disputes at first instance. All appeals are heard by the High Court in Prague. Extraordinary appeals are heard by the Supreme Court. Constitutional complaints are heard by the Constitutional Court (a complaint may be filed without an extraordinary appeal being heard first).
The City Court proceedings are heard before panels of judges (‘senates’). The Court has a number of IP specialised senates, however, the judges are all lawyers; there are no technically trained or specialised judges. The courts rely on court experts to resolve technical issues.
The High Court sits in panels on IP cases. All judges are lawyers without technical experience. The Supreme Court and Constitutional Court judges have no IP specialisation.
The Industrial Property Office ‘IPO’ is the only body able to cancel a patent.
It is also possible to seek a (non)infringement opinion from the ‘IPO’, where the IPO rules on whether a described object/process falls within the scope of protection of a patent or not.
In both cases the 1st instance decision is made by a technically trained IPO officer. The decision can be appealed to the President of the IPO. The president decides based on the advice of a panel of 5 IPO officers, of whom one is legally trained and the reminder technically qualified.
A judicial review application can be filed against the decision of the President of the IPO to the City Court in Prague (administrative division) and is heard by an IP specialised senate. The appeal (‘cassation complaint’) is heard by the Supreme Administrative Court, which has an IP specialised senate. A constitutional complaint may be filed to the Constitutional Court.
In France, since 1 November 2009, only one single Court has exclusive jurisdiction over patent litigation: the Paris civil court of first instance (Tribunal de grande instance de Paris, hereinafter “the Paris District Court”) has exclusive jurisdiction over patent disputes, i.e. patent infringement, patent revocation, declaration of non-infringement entitlement disputes, patent co-ownership disputes. The Paris Court has one Chamber (the 3rd Chamber) with four panels of three judges in charge of IP matters. The presiding judge of one of the panels hears preliminary injunction proceedings or, if proceedings on the merits are already pending, they are heard by the supervising judge in charge of the management of the case.
The fact that in France, only one single Court has exclusive jurisdiction is a great advantage, to ensure legal certainty and a consistency of case law, even though when a new legal provision is inserted into French law, certain discrepancies can be observed. However, one of the presiding judges of the Panels plays the role of coordinator for the whole Chamber to ensure consistency. This situation avoids forum shopping which is called to be discouraged according to the right to a fair and just trial.
The appeal of the judgments of the Paris District Court are directed to the Paris court of appeal which has a Chamber specialized in IP with two panels of three judges
As in most of the jurisdictions in Europe, the judges of the court of first instance and of the court of appeal are not technical judges but have the ability to understand technical questions.
In Germany, twelve designated District Courts (Landgericht) are competent to hear patent infringement proceedings, having specialised patent litigation chambers consisting of three legally qualified judges and no technical judge.
The claimant can choose to file its lawsuit either at defendant’s domicile or where the infringement took place or is likely to take place. Thus, forum shopping is generally possible, in particular if internet offers are involved.
In general, all patent infringement courts apply the same procedural and material rules. However, local judicial practice on specific legal questions, such as preliminary injunctions, varies which may make specific courts more preferable than others.
Further, the courts have different experience with patent litigation, with Düsseldorf, Munich and Mannheim being the most frequented (new cases in 2018: Düsseldorf: 425, Munich: 144, Mannheim: 175), followed by Hamburg, Frankfurt and Nuremberg.
Greece has two specialised EU trademark and patent courts based in Athens and Thessaloniki. As forum selection is of key importance so that court proceedings take place before a court with sufficient expertise in patent law, patent owners may wish to initiate court proceedings before specialised courts and not the local courts. Legal theory and case law agree in that the competence of the specialised courts in Athens and Thessaloniki is reserved for main patent actions (ie, main infringement actions and nullity actions against a patent), but not for temporary restraining orders or injunctions. Consequently, the competent courts for preliminary proceedings are the local courts. Due to the fact that the local courts’ lack of expertise in patent law could have a negative impact on the protection of patent owners’ rights, patent owners tend to try to file preliminary proceedings before the specialised courts in Athens or Thessaloniki.
a) The hierarchy of Courts in India entails, the following Courts:
-The Supreme Court of India being the Apex Court, which exercises original and appellate jurisdiction over the entire territory of India.
- High Courts at state level which are at the top of the judiciary for each of the States.
- The District Courts are courts of original jurisdiction. A District Court also includes the City Civil Court, and the Courts of Additional District Judge, Joint District Judge, Assistant District Judge, and the CJ of the Small Causes Court.
b) As per Section 104 of the Indian Patents Act, 1970 no suit for declaration as to non-infringement or for any relief under Section 106 (for groundless legal threats) or for infringement of a patent shall be instituted in any court inferior to the District Court having jurisdiction to try the suit.
c) The District Court having jurisdiction means the court where the Defendant voluntarily resides or carries on business, and where there are more than one Defendant, where at least one of them at the time of commencement of the suit voluntarily resides or carries on business, or where the cause of action arose. There are some High Courts which exercise ordinary original jurisdiction and have powers to entertain suits relating to patent infringement. However, where a counterclaim for revocation of a patent is made by the Defendant, the suit, along with the counterclaim, where pending before a District Court, shall be transferred to the High Court for decision as per the proviso to Section 104 of the Patents Act, 1970.
d) The Delhi High Court is particularly favorable and has an Intellectual Property savvy bench. Some of the Judges even have a technical background.
Patents in Ireland are principally governed by the Patents Act 1992, as amended (the “Patents Act”). Actions for patent infringement are generally brought before the High Court. The Commercial Court is a division of the High Court and patent disputes are generally transferred into that division. Cases admitted to the Commercial Court are subject to a case management system intended to ensure that they are progressed in a manner which is “just, expeditious and likely to minimise the costs of proceedings”.
Actions seeking revocation of an Irish patent may be brought before the High Court or the Controller of Patents, Trade Marks and Designs (the “Controller”).
Actions concerning short term patents may be brought in the Circuit Court (which usually has a monetary jurisdiction of up to €75,000) regardless of the amount of the claim.
Whilst there is currently no specialist IP division of the Commercial Court, Irish judges assigned to hear these disputes generally have experience in the area. It is also anticipated that an IP and Technology Court will be in place by early 2020 as a sub-list of the Commercial Court.
Patent infringement litigation is conducted at any District Court having local jurisdiction. There are six District Courts (Tel Aviv, Jerusalem, Central-Lod, Haifa, Nazareth ¬and Be’er Sheva). In many cases, all of the District Courts will have local jurisdiction and the plaintiff will be able to choose in which District Court to file the claim.
A validity challenge can be made as part of the defence against patent infringement (‘indirect attack’). The validity challenge as well the infringement issues will be heard by the District Court.
As an alternative to challenging validity as a defence to infringement in District Court proceedings, the defendant can challenge validity at the Patent Office, either following allowance (during a non-extendable period of three months; pre-grant opposition) or after patent grant (no limitation period; revocation proceedings). Appeals on Patent Office decisions can be filed at the Tel Aviv or Jerusalem District Court. It is arguable that these two District Courts have also first-instance jurisdiction to hear direct validity attacks on granted patents. However, there is some conflicting authority on this point and in any event, a direct patent challenge in the courts should only be considered under special circumstances.
There are no specialized patent chambers in any of the District Courts. However, patent cases are often assigned to judges with previous experience in patent matters. All in all, the majority of patent litigation is conducted at the Tel Aviv District Court and there are obvious advantages in bringing proceedings before this relatively experienced court. However, various factors may be relevant depending on the circumstances of each case and choice of the most suitable District Court should be made on a case by case basis.
Commercial chambers instituted in 23 among the main court districts retain exclusive jurisdiction for intellectual property cases, including patent infringement and invalidity/revocation actions.
Commercial judges are selected among senior members of the judiciary system. While Italian judges have a legal, non-technical background, our commercial judges are specifically skilled in patent matters, although their level of experience in the field may vary depending on the court seized.
The court having territorial jurisdiction to hear a patent infringement action is the court of the domicile of the defendant or, alternatively, of the place where the alleged infringement is taking place. Patentees may avail of the latter criterion to forum shop to their courts of choice.
Patent lawsuits are under the jurisdiction of the Tokyo District Court or the Osaka District Court in the first instance. The Tokyo District Court has four intellectual property divisions, while the Osaka District Court has two intellectual property divisions. Further, the Intellectual Property High Court handles patent lawsuits in the appeal instance and lawsuits for cancellation of trial decisions (i.e., lawsuits seeking cancellation of a JPO trial decision in, for example, a patent invalidation trial). In the first instance, when both the Tokyo District Court and the Osaka District have jurisdiction over a case, the parties are allowed to select either one of the District Courts, and such selection is generally made in consideration of which District Court is geographically advantageous for such parties. In the appeal instance and lawsuits for cancellation of trial decisions, the parties are not allowed to select any court other than the Intellectual Property High Court. The judges in the first and appeal instances do not necessarily have knowledge concerning technical matters.
Oslo District Court is the mandatory first instance venue for patent litigation in Norway.
In the District Court, the Court is constituted with one legal judge. In addition, two technical expert judges are normally called for in patent cases. Each party may request expert judges, and the Court may decide to call expert judges independent of any such request. There is no permanent group or list of expert judges from which the experts are appointed, and the Court regularly asks the parties to come up with recommendations. The appointment is sometimes complicated and time consuming.
The patent infringement cases, concerning both interim and final measures, are recognised by non-specialised, common civil courts composed of lawyers. There are no technical judges or assistants who could support judges having only legal background.
Regional courts have jurisdiction in first instance.
The lawsuit may be filed to the court having jurisdiction based on the defendant’s seat or place of business or the place where infringement occurred. The choice of the court amongst those having jurisdiction in a given matter is within the plaintiff’s discretion.
Due to a generally small number of patent litigation cases in Poland, plaintiffs most commonly choose a more experienced court amongst those allowable in a given matter.
Patent litigation generally takes place before the Intellectual Property Court (“IP Court”). This specialised state court, with jurisdiction at a national level, has been operating in Portugal since 30.03.2012 and is competent to handle all actions concerning industrial property in all forms as provided in law, including both patent enforcement and invalidation proceedings. The IP Court is composed of 3 judges, who generally do not have a technical background. The judges are however usually assisted during the final hearing by technical advisors, designated by institutions in the relevant technical field of the matter in dispute.
In pharmaceutical patent cases, litigation under Law no. 62/2011, of 12 December (“Law 62/2011”), as amended by Decree-Law 110/2018, of 10 December (“DL 110/2018”), was designed as a pre-emptive action. According to this regime, the parties (patent holder and generic company) can agree to submit the dispute to voluntary arbitration within 30 days of the publication of the marketing authorization (“MA”) application by the relevant medicines agency, INFARMED; if they don’t, the patent holder shall bring the case before the IP Court within the same period, by filing a full statement of the case.
Patent infringement is considered a criminal offence, so criminal proceedings are also available and are conducted before the criminal courts. These are however not usual.
For alternative dispute resolution in patent cases, please see our answer 19.
A patent infringement claim should be filed with the first instance court at the location of defendant. If single patent infringement case involves several defendants (e.g. manufacturer and seller of the infringing goods), then the case can be filed with the court of any of co-defendants’ location upon the choice of the plaintiff.
The respective court can be either a district court of general jurisdiction (if defendant or/and plaintiff are physical persons) or regional economic court (if defendant and plaintiff are legal entities or individual entrepreneurs).
Some regional economic courts in Russia have specialized panel of judges focusing on intellectual property. Usually plaintiffs in patent infringement cases choose Moscow or St.Petersburg courts via forum shopping available by buying suspected product in these major Russian cities.
An action for patent infringement in Singapore is governed by Part XII of the Patents Act (Cap 221, Rev Ed Sing) (“PA”). All claims of patent infringement must be commenced in the Singapore High Court .
However, where patent revocation is concerned, the appropriate forum to bring such a claim in will depend on the stage in which the application for revocation is brought. There are two categories of cases where an application for revocation is brought.
The first is where there is an ongoing action for patent infringement in the High Court. In this case, the Defendant will have to include a prayer for the revocation of the Plaintiff’s patent in its Defence and Counterclaim, and this will be heard together with the ongoing action for patent infringement.
The second is where there are no ongoing actions for patent infringement, and the application for revocation of a patent is brought by an interested party, who is seen to be “attacking” the validity of the patent as a stand-alone application. In this situation, the Registrar at the Intellectual Property Office of Singapore (“IPOS”) has exclusive jurisdiction to determine the validity of the patent in issue.
However, the above position should now be read in light of the Intellectual Property (Dispute Resolution) Bill (the “IPDR Bill”), which seeks to amend the PA to clarify that the High Court has jurisdiction to revoke patents. This applies regardless whether the revocation is sought by way of a counterclaim or as a standalone action. The IPDR Bill was passed in Parliament on 5 August 2019 and will be gazetted and come into force at a later date.
Under the Supreme Court of Judicature (Amendment) Bill (the “SCJA Bill”) which was tabled for First Reading in Parliament on 7 October 2019, Singapore High Court will be restructured into the General Division of the High Court (“General Division”) which will comprises the existing High Court, and a new Appellate Division of the High Court (“Appellate Division”). The Court of Appeal, the apex Court of Singapore, remains unchanged. The new Appellate Division will hear all civil appeals from the General Division except for certain prescribed matters. An appeal arising from a case heard in the General Division relating to the law of patents (even if the appeal does not raise any issue relating to the law of patents) is such a prescribed matter, and will therefore continue to be heard in the Singapore Court of Appeal.
Korea has a bifurcated system for handling patent disputes. Patent infringement actions for damages and/or permanent injunctions are handled at first instance by the district courts, while patent invalidation proceedings are handled exclusively by the Intellectual Property Trial and Appeal Board (“IPTAB”) within the Korean Intellectual Property Office (“KIPO”).
The first instance civil trial of a patent infringement action is heard by one of the following district courts, depending on the location of the defendant: Seoul Central, Daegu, Suwon, Busan, Daejeon, and Gwangju District Courts. Notwithstanding the foregoing, a plaintiff in any patent infringement case may file an action before the Seoul Central District Court at its discretion. In practice, most patent infringement actions are filed in Seoul Central, which has several panels of judges that are assigned IP matters. Patent infringement actions are reviewed by a panel of three judges, often times assisted by technical advisors (most often provided by the court but sometimes dispatched from the KIPO or IPTAB).
Patent invalidation actions are tried exclusively before the IPTAB. The IPTAB is an administrative tribunal under the auspices of KIPO and manages administrative actions relating to intellectual property rights. In general, first-instance invalidation actions are reviewed by a panel of three trial examiners, but by a panel of five for certain actions deemed to have significant implications.
The Patent and Market Court at first instance, and the Patent and Market Court of Appeal at second instance, have exclusive jurisdiction. The Patent and Market Court of Appeal has discretion to allow further appeal to the Supreme Court (subject to certiorari being granted).
The panel of judges consist of both legal and technical judges, i.e. judges with suitable scientific qualifications.
The Federal Patent Court (“FPC”) is the one patent court of first instance for all of Switzerland. It has exclusive jurisdiction over disputes regarding validity and infringement of patents. For disputes that neither concern validity nor infringement, but still have a connection with patents, such as disputes arising out of patent license agreements or disputes relating to the title to patents or their assignment, there is a concurrent jurisdiction of the FPC and the 26 higher cantonal courts.
The FPC was created to vest jurisdiction in the hands of a specialised court composed of judges with legal and technical backgrounds. It takes its decisions generally as a three-member panel, of whom at least one member has legal training and one member has technical training, typically in the relevant subject matter. Therefore, the parties may expect a high level of expertise.
Taiwan’s Intellectual Property Court (IP Court) has jurisdiction over the first and second instances of patent infringement litigation. The IP Court is staffed by technical examination officers who have expertise in various fields and who have served previously as examination officers at Taiwan’s Intellectual Property Office (TIPO). The technical examination officers not only review arguments made by both parties in respect of technical issues, but also provide to the judges consulting opinions.
The Central Intellectual Property and International Trade (IP&IT) Court, which is located in Bangkok, is a specialized court that has exclusive jurisdiction over civil and criminal proceedings in relation to intellectual property and international trade disputes, including patent litigation, in Thailand.
Thailand does not have a jury system, and judges preside over the courts. Further, different numbers of judges and levels of specialized judicial expertise are required, depending on the level and type of court. The IP&IT Court has two types of judges: (a) career judges, who are judicial officials with special training in intellectual property or international trade, and (b) lay judges, called “associate judges,” who are qualified external experts appointed by the court. An IP&IT Court trial is adjudicated by at least two career judges and one lay judge.
All patent cases are handled by the specialised Intellectual and Industrial Property Rights Civil Courts (“IP Courts”), which only exist in Istanbul, Ankara, and Izmir. In other cities, the 3rd Civil Court of General Practice is authorized to deal with patent disputes.
All first instance courts, including the IP Courts, consist of one judge, and not a panel of three judges. Although judges do not have a technical background, the judges of IP courts generally have a good understanding of intellectual property law.
According to the general jurisdiction rules of the Civil Procedural Law numbered 6100 (“CPL”) and specific rules of the Industrial Property Rights Law numbered 6769 (“IP Law”), several courts are authorized to handle disputes:
- The court of the domicile of the defendant
- The court of the domicile of the plaintiff
- The court of the place where the infringing act was carried out
- The court of the place where the act of infringement produced its effects
In case the defendant resides in Turkey, the courts where the defendant is domiciled have jurisdiction. If the defendant does not reside in Turkey, the court of jurisdiction is the court in the location of the business of the plaintiff’s agent. If the agent’s record has been deleted from the registry, the court of jurisdiction is the specialised IP courts of Ankara, where the Turkish Patent and Trademark Office (“TPTO”) is located.
Generally, both the plaintiff and the defendant would prefer the dispute be handled by the IP Courts as long as the jurisdiction rules allow the action to be filed in Istanbul, Ankara or Izmir since these courts have extensive knowledge about IP disputes.
In the United Kingdom, there are three different legal jurisdictions: England and Wales, Scotland, and Northern Ireland. Patent litigation claims brought in Scotland and Northern Ireland are respectively heard in the Court of Session and the High Court of Justice in Northern Ireland. As the majority of claims are brought in England and Wales, the remainder of this response will address patent litigation in England and Wales only.
Patent litigation claims in England and Wales are brought in either the Patents Court of the High Court of Justice of England and Wales (hereafter the “Patents Court”, the “High Court” or the “Court”) or the Intellectual Property Enterprise Court (“IPEC”).
The IPEC was established to deal with patent and other intellectual property disputes that are less complex and typically of lower value than those heard in the High Court. Its processes are intended to encourage more streamlined and cost-effective litigation, with claims having a limit of £500,000 in value, and recoverable costs typically being capped at £50,000.
For matters that are more complex, longer and/or exceed the IPEC caps on claim value and costs, these will be brought in the Patents Court. The judges and deputy judges of the Patents Court have specialised experience in dealing with patent matters, both in their judicial careers and often from their practice prior to being appointed to the bench. Some Patents Court judges also have technical degrees, which assist them in navigating the technical and legal nuances of complex technical subject matter. Patent cases are assigned a technical difficulty rating from 1 to 5 (from least to most complex), with cases of a difficulty rating of 4 or 5 normally heard by one of a specified subset of judges and deputy judges who have particular expertise and qualifications to hear technically complex patent cases.
Both the IPEC and Patents Court will generally sit in London, but may hear trials outside of London at the application of the parties where it would save time or costs to do.
In selecting a forum, parties should weigh up the streamlined and cost-effective nature of proceedings in the IPEC against the Patents Court’s greater technical specialisation, and its ability to award damages and costs on an uncapped basis.
It should be noted that a claimant’s initial choice of forum is not final, as cases can be transferred between these courts upon application by one of the parties. In the recent case of Kwikbolt Limited v Airbus Operations Limited  EWHC 2450 (IPEC), the court summarised the factors to take into account when considering a transfer, namely: i) the financial position of the parties; and ii) whether it is appropriate to make the transfer. This point ii) will be determined by considering: the value of the claim; complexity of issues; estimated trial length; the importance of the outcome to the general public; and what is in the overall interest of justice. Specialist judges are not a factor to take into account, as these are available in both courts.
Additionally, the Comptroller-General of Patents, Designs and Trade Marks (the “Comptroller”) in the UK Intellectual Property Office (the “UK IPO”) has jurisdiction to hear disputes relating to ownership; compensation (i.e. of employee inventors); entitlement; the grant of compulsory licences; supplementary protection certificates (“SPCs”); and, in some limited circumstances, infringement and validity disputes. The Comptroller may only give an award of damages in respect of the infringing goods and/or a declaration regarding the validity or infringement of the patent. Nevertheless, they have the same power to revoke a patent as the court under the Patents Act 1977 (the “Patents Act”). However, disputes before the Comptroller are relatively infrequent.
Finally, while the UK has ratified the Unified Patent Court (“UPC”) Agreement, this court is yet to be formally established. The UPC, once operational, will be a court common to contracting member states which will have exclusive competence in respect of unitary patents, and also European patents where the patentee or applicant has not opted out under the transitional provisions. Further, under the transitional provisions, actions for infringement or for the revocation of European patents may still be brought before national courts.
In the United States, patent suits are often initiated in a federal district court. There are 94 federal district courts in the United States. Each patent suit is assigned to a single judge and, except in abbreviated new drug application (“ANDA”) litigation (a proceeding specific to pharmaceutical patents), a party to the litigation may request a trial by jury. While some jurisdictions have specified judges to handle patent suits, most judges are generalists and handle any cause of action that can be filed in a federal court.
In addition to the federal district courts, there are three specialty forums for patent disputes. The Court of Federal Claims (“CFC”) hears patent infringement actions against the federal government. The International Trade Commission (“ITC”) is an administrative agency through which a patent owner may request an exclusion order blocking imports of infringing products. The Patent Trial and Appeal Board (“PTAB”), which is part of the United States Patent and Trademark Office (“USPTO”), hears post-grant patentability challenges like inter partes review (“IPR”). Unlike the federal district courts, CFC, and ITC, the PTAB does not decide issues of infringement.
The following authorities are empowered to enforce patent rights in Vietnam:
(i) Administrative bodies:
- Inspectorates. These include the Inspectorate of the Ministry of Science and Technology and the inspectorates of the Departments of Science and Technology at the provincial level, which deal with administrative action for patent infringement.
- Customs. Customs can seize patent-infringing goods at the borders of Vietnam. To some extent, customs seizure can be regarded as another administrative action.
- Chairpersons of People’s Committees. Chairpersons at the provincial and district levels do not directly handle patent infringement; however, they impose administrative sanctions on infringers in accordance with the petitions from customs or the inspectorates.
(ii) Judicial bodies:
The People’s Court system has jurisdiction over patent infringement. There is no special chamber that deals with patent infringement; IP disputes are treated similarly to other disputes when it comes to resolution by the courts.
The major differences (also the pros and cons) of patent enforcement through (i) administrative bodies and (ii) the court are as follows:
2-5 months for the authority to render the ruling
12-18 months per level of adjudication
The ruling is subject to four appeals (two levels of administrative appeals and another two appeals before the administrative court).
The first-instance judgment is subject to appeal. The appellate ruling is final.
In general, the Inspectorate of the Ministry of Science and Technology (MOST) is the most renowned of all the authorities in terms of its IP expertise and experience, but its knowledge may be considered modest by international standards.
MOST often relies on expert opinions from the Vietnam Intellectual Property Research Institute (VIPRI) and/or the Intellectual Property Office of Vietnam (IP Office).
Courts often have limited experience and expertise in handling patent infringement.
Courts also often rely on expert opinions from VIPRI or the IP Office to rule on disputes.
The typical remedy is a monetary fine. Damage compensation is not available.
Apart from a final injunction, the plaintiff can claim (i) damages, (ii) reasonable attorney fees, and (iii) a public apology.
Monetary fines are not applicable.