What is the typical timeline and form of first instance patent litigation proceedings?
Australian patent proceedings are not bifurcated. Infringement claims and revocation counterclaims will be conducted together by the same Court at the same time.
Generally, all issues in the litigation are heard together at a final hearing. The judge may make an order for separate determination of a preliminary issue, however there is no practice of separate claim construction hearings and this issue will usually be dealt with at the final hearing.
In most patent litigation issues of liability and quantum will be split, with a separate hearing on quantum taking place only if liability is found.
An average patent infringement proceeding runs for around 18 months to two years, with judgments usually taking six to twelve months thereafter.
Infringement proceedings are typically initiated by a complaint. A preliminary injunction (PI) application may be filed together with the main action or separately before initiation of main proceedings. Furthermore, since urgency is not a requirement a PI may even be applied for during main proceedings.
Main and PI proceedings are held before the same court (Commercial Court of Vienna) and usually before the same senate.
In main proceedings, the court has to suspend proceedings if it doubts the validity of the patent (which is not uncommon). The defendant then has one month to file an invalidity application with the APO and provide proof of having done so to the infringement court. The infringements proceedings are only continued after there is a final decision in the invalidity proceedings.
There is not necessarily a special hearing on claim construction or on the issues of liability and damages in infringement proceedings. The course of proceedings is largely in the discretion of the judges, which may or may not decide to hold a separate hearing on these questions.
If a PI application is filed together with the main action, the latter is stayed until a final decision is reached in PI proceedings. If the PI application was filed separate from the main action and the PI is granted, the court will set a deadline for the applicant to file a main action (around 6 weeks). The subsequent main action is mandatory. If the applicant does not file the main action within this deadline, the PI may be lifted.
Contrary to main proceedings, in PI proceedings the infringement court has to rule on the question of validity on its own. It cannot suspend proceedings. In case of considerable doubts about the validity of the patent, it must deny the PI application or grant the PI only under a security deposit.
The duration of the first instance proceedings depends on the complexity of the case. Main proceedings that are not stayed due to an invalidity defence take between 1 to 2 years in first instance. A final decision in the invalidity proceedings before the APO takes between 2 to 4 years, which is, therefore, the duration that mains proceedings are prolonged in case of a suspension. First instance PI proceedings take between 3 to 9 months.
Infringement proceedings start when a patent owner files a lawsuit before a state court. The complaint must be filed containing strong grounds for infringement. In general, the parties also attach technical opinions prepared by experts from Brazilian and foreign universities in order to raise the chances of obtaining a preliminary injunction. Infringement arguments and claim construction must be included.
Regarding the validity of a challenged patent, the challenger can file an invalidity lawsuit against the patent owner and the BRPTO before a federal district court at any time during the term of the patent. In addition, art. 51 of the Patent Statute provides the possibility of a post-grant opposition procedure. The post-grant opposition can be filed by the BRPTO or by a third party until six months after the granting of the patent.
Disputes usually last between two to four years at first instance, depending on the court’s productivity and the parties’ will to litigate. Damages assessment is decided after the liability decision.
A patent infringement action will typically include at least pleadings, documentary and oral discovery, exchange of expert reports and trial before a Judge (no juries). The issues of infringement and validity (if raised) are typically heard and decided together with claims construction at trial.
It typically takes 2-3 years to obtain a first instance decision on infringement and validity. Many patent litigation proceedings in the Federal Court are specially managed, where a Judge or Prothonotary oversees the procedural aspects of the court to expedite the proceedings. Such proceedings can also be expedited, in which case the court will endeavour to have the action tried within two years of commencement.
Parties often consent to sever or bifurcate the issues of the quantification of damages/profits from the issue of liability. In the absence of consent, a party can bring a unilateral motion for bifurcation.
In China, the patent infringement and invalidity proceedings are bifurcated. In practice, the court would like to suspend the infringement case until the decision on the invalidity request is made. In invalidity proceedings, the claim would be construed and the court would hear the infringement case to determine the liability and damages issues based on the claim construction made in the invalidity proceedings. Generally, the decision on validity would be made within 6-8 months since the quest for invalidity is accepted. As for the infringement case, the time to make a first instance judgement depends on courts. If the litigation is heard in a court with a large backlog of cases (e.g. the Beijing Intellectual Property Court), the time even would be 2 to 2.5 years since the case is accepted.
Infringement and invalidity proceedings are bifurcated.
Only Industrial Property Office is able to cancel a patent. (The courts theoretically have the power to decide that the patent was not properly granted and decide to disapply the patent – however, this is very rare.)
Typical validity proceedings before the IPO involve 2 instances and then 2 instances of judicial review. The judicial review does not stay the enforcement of the challenged IPO decision. Each instance at the IPO level can be expected to take 9-18 months. The first instance of the judicial review takes 2-4 years, with the second instance taking around 1 year.
Infringement proceedings before the City Court take 9-24 months to judgment. The court generally requires technical assistance from experts. Generally experts from the field of ‘Patents and Inventions’ are relied on, but experts in other fields, such as ‘chemistry’, ‘machinery’ etc. can also be asked to assist. The parties can ask experts to prepare expert reports directly.
An expert in the field of Patents and Inventions is usually relied on to carry out the patent claim construction. The court can disagree with the experts claim construction.
Damages claims are not common, permanent injunction claims are more common. The total sum claimed in damages (which includes lost profit, and the sum of unjustified enrichment and the sum for reasonable compensation for immaterial harm caused) must be specified at the outset. In practice the plaintiff should be in position to prove that damage occurred, and its level without further assistance of the court. It is very rare for the court to examine the issue infringement in an interim judgment and only then to proceed to quantify the damages. This can realistically only occur if a permanent injunction or some other non-pecuniary claim (such as an apology) is made. It must also be noted that until the plaintiff formally claims the full sum in court the limitation period continues to apply.
In France, validity and infringement proceedings are heard together. Damages can also be decided simultaneously together with the ruling on validity and infringement, provided that the court have sufficient financial data. In the negative, it either sets a provisional financial award pending the transmission by the infringer of financial data, by application of Article 8 of the IP Enforcement Directive or appoints an expert who will then file a report to assist the court in determining the entire damage suffered by the claimant.
The fact that both validity and infringement are heard together has several advantages:
- The same court will construe the patent claims to decide on validity and infringement: this ensures a consistency in the construction of the patent claims;
- There is no gap between the decisions on infringement and on validity;
- There is no risk of suspension of the infringement proceedings pending the outcome of a revocation claim, which can lead to delay and is unfavourable to the patentee or its licensee.
In general, in patent disputes - if no special motion is filed – a decision on the merits is obtained within 18 months in first instance. In case of a proven emergency, the Presiding judge of the Paris District Court can authorize the claimant to commence a streamlined procedure for infringement
Germany’s patent litigation system is bifurcated. Civil Courts (Landgericht/Oberlandesgericht) are dealing with the patent infringement, whereas the Federal Patent Court (Bundespatentgericht) decides on the validity. Eventually, both strings of proceedings may be joined at the Federal Supreme Court (Bundesgerichtshof) at the highest level.
There are no special procedures on claim construction. Liability is generally no issue as there is an obligation for companies to monitor the market for potentially infringed patents. Besides, damages rulings in patent infringement proceedings are usually of a declaratory nature only. A specific amount of damages would have to be claimed in a separate new damages action.
After filing of the complaint, the duration of first instance proceedings differs from court to court. However, first instance infringement proceedings will typically take 12-16 months. A first instance nullity action before the Federal Patent Court will typically take about two years.
German patent litigation proceedings are “front-loaded”. This means that all necessary facts and any evidence must be presented already at an early stage, usually taking more or less the following steps:
• Claimant files the complaint with the court; advances payment of court fees
• Court serves the complaint on the defendant and sets a deadline for a reply (~ two months)
• Defendant submits the statement of defense
• Claimant submits counter-submissions within deadline specified by court (~ six to eight weeks).
• Defendant submits final response within deadline specified by court (~ six to eight weeks).
• Oral hearing is held (~ten to fourteen months after filing of the complaint)
• Court hands down the judgment (~ six to eight weeks after oral hearing)
According to recent amendments to the Civil Procedure Rules (January 1, 2016), strict timeframes for proceedings have been introduced, where both parties are obliged to file their written arguments and all respective evidence within 100 days of the action being filed. The timeframe is 130 days in case the defendant is a non-Greek resident. Both parties must then file their rebuttal arguments within 15 days. Each party has the right to submit up to five sworn affidavits in support of its own arguments and up to three sworn affidavits to rebut adverse party’s arguments. As a rule, the court will then hear the case without witnesses. If the court deems it absolutely necessary, it has the option of summoning one of the affiants to testify in court. Therefore, the hearing in a main infringement proceeding takes place approximately five months after the filing of the action and a decision may be expected after approximately six months.
According to the Greek law there are separate procedures before the competent civil courts for patent validity challenges and infringement actions. Consequently, full or partial nullity actions can be made in the form of an independent legal action or a counterclaim within the framework of the infringement proceedings. In practice, invalidity objections and nullity actions are the most common defences for infringers.
In India, there is currently no bifurcation regarding infringement and invalidity proceedings in a Patent litigation suit. While, validity of a Patent can only be challenged through a Counter-claim in a suit and such Counter-claim is considered a separate law-suit, both the suit and counter-claim are heard and disposed of together. Evidence is led by the Plaintiff first on all the issues, followed by the Defendant. All issues are thereafter argued by the parties in the same order.
There is no set time limit within which a case has to reach trial. The time taken will depend on the complexity of the case, the number of witnesses and whether there are pre-trial disputes on issues such as discovery. Cases in the Commercial List generally reach trial within 6 to 18 months of commencing proceedings.
Ireland is a common law jurisdiction and each party must set out its case by means of the exchange of pleadings, witnesses statements (including experts) and written legal submissions.
Patent proceedings are heard by a single judge and there is no jury present. It is a fundamental principle of the Irish law of evidence that witness testimony is given by word of mouth. However, in patent cases, it is frequently agreed that the witness statements will be taken as evidence in chief subject to elaboration and to the opponent having a right to cross examine. Written legal submissions are exchanged in advance of trial, and oral legal submissions are generally made at the opening and closing of the tral.
A plenary summons is used to commence infringement proceedings and a petition is used to commence revocation proceedings.
The procedural stages which must be adhered to by the parties may be summarised as follows:
• Issue of plenary summons for infringement (or petition for revocation) by the plaintiff;
• Entry of Appearance by the defendant;
• Delivery of Statement of Claim and Particulars of Infringement (or Particulars of Objection) by the plaintiff (petitioner);
• Delivery of a Notice for Particulars by the defendant seeking further details of the material facts being relied upon by the plaintiff;
• Delivery of Defence (to infringement) and Counterclaim (if any) (seeking revocation);
• Delivery of Notice for Particulars by the plaintiff relating to the Defence and Counterclaim (if any);
• Reply (and Defence to Counterclaim) by the plaintiff: this closes the pleadings;
• Discovery – either side may bring a motion for discovery if discovery is not agreed;
• Exchange of Witness Statements, expert reports and other pre-trial steps including details of experiments (if required) followed by the exchange of outline written submissions; and
Either party may deliver a notice for particulars seeking further particulars of the other side’s claim. In the Commercial Court, these procedural stages must be complied with according to directions given by the judge in charge of the Commercial List at various stages, including the initial directions hearing, the case management conference and the pre-trial conference.
Initial directions are made by the Court upon, or soon after, entry of the case into the Commercial List and usually provide a timetable for the exchange of pleadings. The range of directions which may be made is broad and can include requiring the parties to provide discovery or information relevant to the proceedings such as intended witnesses or particulars of a technical nature or the examination on oath of any witness in the case.
A case management conference may be held to ensure that, amongst other things, initial directions have been complied with, that the issues of fact and law in dispute are defined and/or that all pleadings have been delivered.
Pre-trial conferences may be held before a case goes to trial in the Commercial Court so that the Court has a clear picture of the state of the case before trial. At this conference, a judge will also seek to establish practical issues such as the likely length of the trial and whether any special technological arrangements may be required.
The trial commences with opening submissions from the parties, followed by any cross-examination of expert and fact witnesses, and closing submissions.
As noted above, infringement and invalidity issues are not bifurcated in patent infringement proceedings. When validity is directly challenged at the Patent Office during pending court proceedings, the Court will decide whether the Patent Office revocation proceedings will proceed and whether to stay the court proceedings pending a decision by the Patent Office.
Other than in exceptional circumstances, there are no preliminary ‘Markman’ hearings to determine claim construction the framework of patent litigation proceedings. In addition, in court proceedings usually infringement and invalidity are adjudicated together. However, in certain circumstances courts may prefer to reach a decision on invalidity before hearing and deciding infringement (e.g., in order to avoid potentially unnecessary disclosure of trade secrets bearing on infringement) or vice versa. While there are exceptions, liability and damages issues are normally bifurcated.
First instance patent litigation proceedings are usually concluded within two to three years but may sometimes be longer depending on the complexity of the matter. Patent Office revocation proceedings may be somewhat quicker.
Patent litigation can originate from a claim of infringement, a claim of non-infringement (resulting into declaratory proceedings) or a claim of invalidity (resulting into revocation proceedings).
Infringement and declaratory claims can be pursued either in the form of ordinary merits proceedings or in the form of urgent proceedings aimed at the grant of preliminary relief.
Invalidity claims are in principle pursued by means of ordinary proceedings, although the majority of the case law allows motions for preliminary declaratory relief based on invalidity arguments only.
There is no “bifurcation” between infringement and invalidity/revocation proceedings. Courts seized with ordinary patent infringement proceedings are always competent to hear a counterclaim of patent invalidity/revocation. Counterclaiming patent revocation in response to ordinary infringement proceedings is in fact standard practice for alleged infringers. Invalidity is also regularly used as a defence in preliminary proceedings.
The timeline of proceedings varies depending on the court seized. Taking the courts of Milan, Turin and Rome (arguably the main courts for patent litigation) as a reference, the average timeline of ordinary infringement and revocation proceedings can be identified in 2 to 3 years, whereas that of preliminary proceedings can be identified in 4 to 6 months.
A court firstly conducts proceedings concerning the presence/absence of patent infringement (the infringement issue) and then, after being satisfied that patent infringement exists, conducts proceedings concerning the calculation of compensatory damages (the damages issue). Further, in an infringement lawsuit, if the defendant argues that the patent is invalid, proceedings concerning the sufficiency issue and proceedings concerning the invalidity issue are carried out concurrently. The sufficiency-issue proceedings and the invalidity-issue proceedings are not separate from each other and are carried out together in the same infringement lawsuit. The issue of claim interpretation is also not separated from the sufficiency issue and the invalidity issue and is addressed in the same infringement lawsuit. The statistics from the Intellectual Property High Court indicate that the average period for proceedings for first instance civil cases relating to intellectual property in 2018 was 12.3 months.
Under Norwegian Law a defendant that wishes to invoke invalidity as defence against an infringement claim will have to file a counterclaim for invalidation before the same Court that handles the infringement case. Infringement and validity will then be handled in the same case and the Court will assess invalidity before it assess infringement (infringement will only be assessed if the Court concludes that the patent is valid).
All issues of claim construction are considered together with validity and/or infringement and the assessment of validity and infringement shall be based on the same construction of the claims.
Depending on the scope and complexity of the case – it typically takes between one year and one and a half year to obtain a first instance decision on infringement and/or validity.
Poland has a bifurcated system of recognizing patent infringement and validity.
Invalidation proceedings are handled by the Patent Office in the administrative procedure.
Infringement proceedings cover all steps of assessing the alleged infringement: determination what actions were taken by the defendant with regard to the allegedly infringing product or process, claim construction and establishing whether the defendant’s actions encroach upon the construed scoped of the patent. Liability is usually determined together with all requested remedies, although formally Polish procedural law allows for a separate determination of liability and remedies.
As Polish civil courts do not compose of technical judges, a court-appointed expert opinion is usually deemed necessary to recognize the infringement case. Obtaining and commenting such opinion can be very time-consuming thus typically it takes more than 2 years to obtain a decision in the first instance.
The validity proceedings are even longer, it may take more than 3 years until a decision is issued by the Patent Office.
VdA: Typically, validity and infringement (combined or not with damages) main actions are litigated at the same time (even if they are separately filed, the IP Court will in principle either attach both cases or stay the infringement case on the basis that the revocation case is prejudicial to the former). A patent law suit in the IP Court, with minor procedural issues, usually takes 1½ - 3 years to obtain a first-instance decision. Such timing will always depend on the complexity and the number of the matters involved. Typically proceedings take longer if, e.g., (i) the case involves foreign companies, (ii) parties request for a technical expertise to be carried out, (iii) new documents [technical or other] are attached by the parties during the course of the proceedings. Preliminary injunctions (“PI”) may take 8 months-1½year to be decided.
Patent proceedings brought under Law 62/2011 before an arbitral tribunal (“AT”) were typically (albeit not always) construed on the basis of threat of infringement. The issue of the AT’s jurisdiction to decide on patent validity with inter partes effect was commonly raised by the defendants, but the matter is still under discussion. Arbitral main actions would typically take 1-2 years as from the filing of the statement of case to be concluded in 1st instance (cf. paragraph above for the aggravating time factors).
Due to the scarcity of criminal patent infringement cases, a timeline is hard to provide.
The typical timeline of first instance patent litigation proceedings in Russia in regional economic court is 5-9 months.
Patent litigation system in Russia has a clear bifurcation, i.e. patent infringement case and patent validity case (used as a defence by defendant) are being considered in different fora and cannot be joint in the same procedure. Article 1399 of the Russian Civil Code (hereinafter RUCC) provides, that invalidation action against an issued Russian patent (based on the dispute on patentability issues, new matter requirement violation or double patenting prohibition violation) is to be filed with the Russian Patent Office (hereinafter RUPTO) (Chamber for Patent Disputes division). If there is a dispute on the inventorship or ownership, such claim is to be filed with the IP Court.
The average timeline for consideration of invalidation actions filed is 4-7 months. This term is about the same for the invalidation action case consideration in the RUPTO (patentability dispute) and in the IP Court (inventorship/ownership dispute).
A rough timeline is as follows:
• The Plaintiff files and serves on the Defendant the Writ, Statement of Claim and Particulars of Infringement. The Particulars of Infringement must state which of the claims in the specification of the patent are alleged to be infringed, and must give at least one instance of each type of infringement alleged.
• Within 8 days of the service of the Statement of Claim and Particulars of Infringement, the Defendant is to file a Memorandum of Appearance in the proceedings.
• Within 14 days of the service of the Statement of Claim, the Defendant must give prior notice of his intention to put in issue the validity of the patent. If the Defendant does not do so, its Defence and Counterclaim will be due within 14 days of the service of the Statement of Claim.
• If the Defendant files a Notice of Intention to Put in Issue the Validity of the Patent, the Defendant has to file its Defence and Counterclaim and Particulars of Objection within 42 days of the service of the Statement of Claim.
• Within 14 days of the service of the Defence and Counterclaim, the Plaintiff has to file its Reply and Defence to Counterclaim.
After the pleadings are in, the parties will proceed to the discovery stage. It is usually on or around this time that the Court will decide whether the proceedings should be bifurcated or not. It is more common for the Court to bifurcate the issue of liability and the issue of damages. Infringement and invalidity are generally heard together due to the need to engage expert witnesses for common issues such as claim construction. See also the answer to question 26 below.
Thereafter, affidavits of evidence-in-chief (“AEICs”) will be exchanged. It is usually on or around the stage of the exchange of AEICs that the Court will deal with whether the issues of claim construction will be considered separately from or together with infringement and/or validity, and in general how the trial of the matter should be conducted.
It typically takes around 1.5 to 2 years from the commencement of the proceedings to obtain a first instance decision.
Under the bifurcated system, where patent infringement actions are reviewed by the district courts, and patent invalidation cases are reviewed by the IPTAB, although the district courts have authority to review both infringement and invalidity issues, it generally give deference to the IPTAB on invalidity issues when an invalidation action is pending before the IPTAB. In reviewing infringement and invalidity issues, the district court considers the claim construction issue, but there is no separate procedure for claim construction under the Korean practice. Damages and liability issues are also reviewed by the district courts, which are addressed in the final decision of the district courts together with the invalidity, infringement and claim construction issues.
Generally speaking, first-instance proceedings take between 10 and 18 months, but may stretch up to two years or longer in exceptional cases. Meanwhile, the court acts as a fact-finder, and there is no jury trial and no rigid pre-trial/trial dividing line. Hearings are held approximately every four to five weeks where evidence and briefs are submitted, and fact and/or expert witness examinations can take place, along with at least one technical presentation hearing.
Patent invalidation actions before the IPTAB normally take about 9 to 14 months, but can be placed on an expedited track under certain circumstances, for example, when an infringement action is concurrently pending in a district court. Expedited proceedings normally take between six to ten months.
The typical timeline is 12 to 24 months in the first instance, depending on whether validity is an issue. Infringement and invalidity are formally separate cases but are normally joined. Claim construction is considered as an integral part of invalidity and infringement cases respectively. Damages are generally not bifurcated from the issue of liability but the plaintiff may choose to just seek declaratory relief of liability.
The proceedings consist of a preparatory, mostly written part, concluded by a full hearing where the case is argued and the evidence, including witness and expert testimony, is presented.
The FPC examines all questions relevant in patent cases, including claims construction, infringement, validity and damages. These questions are dealt with in the same proceedings.
Infringement actions are typically brought in a so-called action by stages. In the first stage, the FPC will decide on validity (if contested), injunctive relief, remedy and the rendering of account of profits, while it will decide on monetary relief (including quantum) only in the second stage.
An infringement action is initiated by filing a written statement of claim. In the statement of defence, the defendant will usually assert that the patent in suit is invalid, either by way of a defence or by filing a counterclaim. The FPC then summons the parties to an instruction hearing, in which it provides a preliminary assessment of the dispute, which then serves as a basis for court-mediated settlement negotiations. Many patent disputes are settled at this stage. Before this hearing, the claimant could file a reply limited to the question of validity of the patent in suit. As the claimant usually does not address the validity of the patent in the statement of claim, this allows the FPC to hear both parties’ view on validity before the instruction hearing. This practice has, however, recently been challenged by the Federal Supreme Court (“FSC”).
If the case is not settled, a second exchange of written briefs takes place. Afterwards, the lead technical judge will issue an expert opinion, which the parties may comment on. The parties are then summoned to the main hearing, following which the FPC will decide on the first stage of the infringement action, typically within 24 months of the commencement of the proceedings. If the FPC finds that there was an infringement and after the defendant provided the necessary information, the FPC will, after another exchange of written submissions, decide on monetary relief.
In most cases, there are separate hearings being held to examine issues of claim construction, invalidity, infringement, and damages. Typically, the parties are required to exchange briefs prior to each hearing. The IP Court reviews the technical issues (namely, validity and infringement issues) with the support of technical examination officers. Normally, the proceeding of patent infringement litigation takes one to two years at the first instance.
Typically, it could take between 18–36 months to obtain the IP&IT Court’s first instance decision.
The IP&IT Court normally considers all disputed issues (e.g., patent invalidity, patent infringement, damages) in the same trial proceedings; and there is no separate pre-trial hearing to consider issues of claim construction.
The IP&IT Court often hears invalidity and infringement issues simultaneously. However, the nature of the trial proceedings largely depends on whether patent invalidity is pleaded as a defense or a counterclaim in an action for patent infringement, or whether it is filed by an alleged infringer as a separate civil action. If patent invalidity is challenged in a separate action, the IP&IT Court may combine the invalidity action and the main action for infringement, and deal with both issues as part of the same trial proceedings. If there is no joinder, then the two actions can run before the court in parallel. Although the IP&IT Court has no obligation to stay the main infringement trial while the invalidity proceeding is ongoing, the court often chooses to do so for efficiency.
Further, the IP&IT Court will also consider and rule on damages in the same trial proceedings.
The patent litigation proceedings are handled in written format. The language of the proceedings is Turkish, and it is not possible to choose another language.
It is not a pre-requisite for the plaintiffs to send a warning letter to defendants before filing the patent infringement or invalidation actions.
Turkey does not have a bifurcated system meaning that invalidation and infringement procedures are separated. Invalidation actions can be filed either separately or as a counteraction within the time frame to respond to the infringement claim in an infringement proceeding. If the invalidation is filed as a counteraction, both the infringement and the invalidation claim are handled by the same court regardless of the jurisdiction rules.
However, in both cases, these actions are considered to be closely associated since the outcome of an invalidation action is retroactive and when a patent is invalidated, it shall be deemed to never be registered. As a result, even if the invalidation action initiates separately, the outcome of invalidation is awaited in the infringement action or the cases may be combined.
As for the civil actions, there are a set of regulations on how to proceed at each stage. Even though some steps may change based on the nature of the dispute, the phases of a civil action in general are as follows:
- If there is a preliminary injunction request, such request is initially examined. The court conduct such examination before or during a hearing.
- Once the plaintiff’s petition is duly served to the defendant, the defendant is obliged to submit a response within two weeks. Following the defence notification, the plaintiff is also obliged to respond within two weeks. Subsequently, the defendant can submit his second response to the plaintiff’s counter-arguments within two weeks as of the receipt. The defendant's submission to the plaintiff’s counter-statement concludes the exchange of petitions phase. The exchange of petition phase usually takes three months. After this phase, the judge determines a hearing date.
- Upon the end of the exchange of the petition phase, the preliminary examination phase begins. In this phase, the court examines the conditions of the conflict between the parties. This examination is considered as a preparation for the analysis of the merits of the case.
- The parties should file their evidence and arguments by the preliminary examination hearing. After that, new evidence and arguments may only be filed with the consent of the counterparty.
- After the preliminary examination phase, the investigation phase begins. The court evaluates evidence submitted as well as investigating the accuracy of the facts alleged by the parties. In order to examine the submitted documents’ accuracy, the court decides to confer with an expert witness.
- After the expert witness report gets delivered to the parties, the parties are entitled to file comments or objections against the report. Prior to the decision, the court evaluates the report and comments. If the court finds the report adequate, it does not ask an explanation and concludes the investigation phase. However, if the report is considered inadequate, further explanation can be requested from the expert, or another expert panel can be assigned.
- If there is a request for compensation, the file is also conferred to an accounting expert for calculation.
- Following the conclusion of the investigation phase, the judgement phase begins. In this final phase, the judge renders a decision after examining the accuracy of the claims. The judge then prepares the reasoned judgement, which is then served to the parties upon request
- According to the Turkish Procedural Law, the plaintiff bears the costs of the proceedings. Once a final verdict has been proclaimed by the court, legal proceedings' official expenses are paid by the losing party to the adverse party
- If there is a compensation claim regarding damages caused by infringement, the case has to be referred to the mandatory mediation, see Q19.
Generally, the proceedings before the first instance courts take around 18 to 24 months.
Conduct of civil litigation in England and Wales is governed by the Civil Procedure Rules (“CPRs”) and related Practice Directions (“PDs”). The IPEC and the Patents Court have each also issued further helpful guidance to parties litigating in those respective forums, in the form of the Patents Court Guide (latest version April 2019) and IPEC Guide (latest version July 2019). As most significant patent cases are typically heard in the Patents Court, this response provides a general overview of the proceedings in that forum.
Patent litigation proceedings in the Patents Court are commenced when a party files a claim form and particulars of claim. The defendant is then required to file an acknowledgement of service, as well as its defence (and any counterclaim).
Around one to two months following the exchange of the above pleadings, a Case Management Conference (“CMC”) will generally be held, during which the court will make an order for directions setting out in detail the timeline for progressing the matter to trial. A template example of such a directions order is provided as an appendix to the Patents Court Guide. The directions typically include orders in relation to: disclosure, the filing and service of fact and expert evidence, the setting of the trial dates, the exchange of skeleton arguments, and potentially a pre-trial review. The parties are encouraged as far as possible to agree on the order for directions prior to the CMC.
It will generally take around twelve months from the date of filing of a claim for the matter to proceed to trial. However, a patent trial may be expedited by the court in certain circumstances, having regard to factors such as the objective need for urgency, the prejudice faced by the opposing party, and the impact of expedition on the administration of justice. If there is a suitable degree of urgency (and availability in the Court diary), a case may go to trial within around six months.
Additionally, where a High Court dispute involves relatively few issues or little evidence, it may be eligible for the Shorter Trial Scheme, a now-permanent scheme involving simplified and expedited procedures, whereby a trial (of a maximum of four days) must take place within eight months of the CMC, and judgment must generally be delivered within six weeks of the trial.
Where both validity and infringement are raised by the parties to a patent dispute, these claims will typically be heard at the same time (i.e. no bifurcation of the consideration of validity and infringement). Claim construction is considered alongside infringement and/or validity. However, it should be noted that claims are construed independently of the features of the alleged infringing product or process.
A first instance decision will generally be handed down within about three months of trial.
Generally speaking, damages issues will be determined separately from and subsequent to a finding of infringement, and may require a further hearing or potentially an additional trial. However, where the basis of the patentee’s claim for damages is relatively straightforward or is not disputed, damages may be assessed in the course of the infringement decision, or shortly thereafter.
For litigation in a federal district court, the time from filing a complaint to a trial decision varies across the 94 district courts. Typically, the time to a decision is 24-36 months. That decision usually includes a single verdict covering infringement, validity, and damages. Many courts have patent “local rules,” which set deadlines before a trial for each side to disclose their infringement and invalidity contentions, and their positions on claim construction. Claim construction is usually decided through a specific briefing and hearing process during the litigation. However, judges are afforded deference in managing their own dockets, and so the process for claim construction in each case may vary.
Proceedings in the ITC are fast-paced and typically take 12-15 months to reach an initial determination. No damages are available at the ITC. The main remedy is an exclusion of the infringing goods. PTAB proceedings are limited to rulings on patentability, and must be completed within 12 months of the date the PTAB institutes a proceeding.
For court action, statutorily, the court must try the case within a period of 2 to 4 months. However, in practice, it can take 12-18 months for a case to come to trial. If the parties are able to reach an amicable agreement before the judgment is issued, the court will acknowledge the agreement and issue its decision accordingly. The decision is final and binding on all relevant parties.
If the case goes to trial, the court will rule on the case and render a judgment. A court’s judgment can only be appealed once. The court will begin an appellate trial within 6 to 12 months from the appeal. The appellate judgment takes immediate force. No further appeal is allowed.
Meanwhile, MOST will often resolve a patent infringement case within 2-5 months (if there is no appeal). However, in our experience, a complaint to MOST might be ineffective as MOST has recently been quite reluctant to deal with patent infringement.
During the infringement proceedings, the defendant might attack the validity of the patent. In principle, the court can rule on the validity of the concerned patents in an infringement suit. Recently, however, some authorities (including certain courts) have viewed that the court has no power to review the validity of the patent. Rather, the court only reviews the IP Office’s decision on granting the patent in question. As a result, in most cases, the IP Office, not the court, handles nullity issues.
For administrative actions (actions before the administrative bodies), the alleged infringer must bring the invalidation action to the IP Office in separate proceedings. Administrative enforcement agencies (such as MOST) cannot hear the invalidation action. In these circumstances, the enforcement agency can still proceed with resolving the patent infringement regardless of the ongoing invalidation action, provided that the patent holder swears under oath to the incontestable validity of its patent.