Which aspects of patent litigation, either substantive or procedural, are most in need of reform in your jurisdiction?
Ensuring appropriate limits on discovery, which can prove one of the most time-consuming and expensive aspects of patent litigation.
Although PIs for the production of evidence are available, there is room for improvement as to the availability and effectiveness of such measures. It also remains to be seen if courts will effectively apply the new tools under the implemented Trade Secret evidence to balance the interests of patentees and parties alleging trade secret protection.
Moreover, orders for the production of evidence under Art 6 Enforcement Directive are largely toothless, as refusals to obey do not carry a sanction.
The post-grant opposition system.
There are currently no identifiable areas strongly in need of reform. As discussed above, it appears that the Courts are beginning to address the historic difficulty in obtaining interlocutory injunctions in patent litigation in Canada, and the Supreme Court of Canada struck down the ‘promise of the patent’ doctrine that had complicated Canada’s approach to patent utility.
The following aspects of patent litigation are most in need of reform in China: increase in damages, distribution of burden of proof and trial period.
Clarification of when a threat of infringement is actionable in pharmaceutical disputes.
Our French system might be adapted to allow accelerated procedures as they exist in the Netherlands. Currently accelerated procedures exist but they require the proof of emergency and are not adapted to patent disputes as the defendant can file its defence (including its counterclaim for invalidity) just before the hearing. Moreover, they would be adapted in SEP litigation where prior to filing its action, the patentee has to offer a FRAND licence, failing that its action would be considered as an abuse of dominance.
Recovery of costs, as the reimbursable costs are much to low given the complexity of and the effort necessary for patent litigation proceedings.
Besides, awarded damages are rather low compared with other jurisdictions (e.g. US). Introducing the concept of additional or punitive damages could deter patent infringers from entering the German market.
Despite the fact that the judges serving in Greek specialised patent courts (in Athens and Thessaloniki) are highly qualified graduates of the National School of Judges, where they received special training in IP law and possess a high level of knowledge in IP matters, their “Achilles’ heel” remains their lack of technical background. This makes their expertise prove insufficient in patent cases which involve complicated technical issues. Consequently, measures should be taken to the direction of educating highly specialized judges who will be able to deal with highly demanding technical matters.
Developing legal jurisprudence regarding the breakthrough developments being made in the field of Artificial Intelligence;
The provision of patent term adjustment/waiver of maintenance fees for time lost during patent prosecution should be added.
Proposals are currently being examined for the establishment of a dedicated IP and Technology division of the Commercial Court.
The rules surrounding discovery in Ireland are in need of reform.
The pre-grant opposition system still existing under Israeli law is problematic and should be abolished. Among others, opposition proceedings could easily last for two to three years and sometimes for much longer. Therefore, the pre-grant opposition system can be abused to block patent grant and prevent enforcement for many years. In addition, the Patent Term Extension system in Israel which is based on multiple linkages to foreign PTEs/SPCs requires a thorough review as it was tailored to limit PTE protection in a manner which is not commensurate with the objectives of the patent system.
The institution of specialized IP courts over 15 years ago and the consequent improvements that our jurisdiction has been achieving ever since in terms of timeline of proceedings and quality of the judgments have made of Italy a go-to jurisdiction for patent litigation matters in Europe.
A few, distinguishing aspects of our procedural system make Italy particularly attractive for patent strategies, such as the possibility of enforcing patent applications and to obtain PI relief before patent grant, or the approach our courts take to the remedy of infringer’s profits, which is basically automatic following a finding of infringement and, according to recent case law, subject to a 10-year statute of limitation.
The biggest room for improvement lies with the way in which our judges tackle on the technical issues underlying the case. While our judges have no technical background and therefore need to rely greatly on the opinion received by the Court Appointed Expert, they are not directly involved in the process leading up to the CAE opinion. The CAE is left to deal with the parties and dispose of their arguments when writing his opinion. Being directly involved in said process, for instance by introducing the feature of proper “expert witnesses” akin to what happens in the UK and by allocating more room to oral discussions, would allow judges to better grasp on the technical background of the case and result in more efficient, balanced judgments.
In recent years, the need for reform has been most heavily discussed regarding the introduction of the procedures for facilitating the collection of patent infringement evidence items which unevenly exist on the alleged infringer’s side. The recently promulgated revision to the Patent Act (2019 May) involves establishing an inspection system under which, if patent infringement is suspected, neutral technical experts (designated by the court) enter the alleged infringer’s factories, etc., conduct investigations of such factories, etc. which are required to prove the existence of infringement upon the patent rights, and file an inspection report with the court. This system is due to come into effect on October 1, 2020 and will be available during patent infringement proceedings (i.e., after the filing of a lawsuit), and, upon the patentee’s filing of an application for inspection, the court is entitled to issue an order for inspection if the following aspects are admitted: (i) the need for evidence collection; (ii) the probability of infringement; (iii) the difficulty of collecting evidence items through other means; and (iv) the appropriateness of such means.
The above revision to the Patent Act also involves revising the provisions concerning the presumption of compensatory damages, as mentioned in question 25 above.
The Norwegian Patent Litigation regime is fairly up to date and well-functioning and we consider that there are no pressing needs for reforms to the system.
There are two major aspects of patent litigation which need urgent reform in Poland: the legitimate interest as a requirement to initiate invalidity action and the lack of post-grant patent amendment procedure.
Both issues are addressed in the pending Industrial Property Law amendment.
Finally, an explicit regulation of the contributory infringement would certainly be appreciated by the practitioners.
VdA: The limited number of judges in the IP Court and their limited previous experience in IP litigation, the administrative procedure for patent grant, the grounds for patent revocation and the special regime of pharmaceutical patents enforcement (Law 62/2011).
We think that lack of legal provisions over indirect (contributory) patent infringement in the Russian patent law is a serious limitation. Provisions on compulsory patent licensing need to be fairly addressed as well.
One notable aspect of patent litigation which warrants consideration for reform concerns the guidelines for party-and-party costs which is payable to the successful party in patent litigation. The daily tariff rates for party-and-party costs for trials depend on the subject matter of the dispute. While the general complexity of intellectual property litigation has been duly recognised by the guidelines so as to attract the highest tariff rate, it remains the case that the time and expense required in addressing the highly specialised and technical issues arising from patent disputes usually significantly exceed that reflected in the applicable tariff rate for intellectual property disputes in general. A significant proportion of costs are incurred in the preparation of expert reports by parties’ appointed expert witnesses on technical or scientific matters.
The same concern applies to the quantum of security for costs awarded to a defendant to a patent action, as the award of security is guided by the costs guidelines referred to above.
Another aspect of patent litigation which may attract reform relates to the issue of excessive prior art citations pleaded by party seeking invalidation of the patent in suit, which has the effect of unnecessarily increasing the complexity and costs of litigation. Reforms to limit unnecessary prior art citations are required to ensure that the true issues engaged by the dispute are resolved in a timely and cost-efficient manner.
Similarly, the excessive number of claims asserted by a Plaintiff in a patent infringement suit may also need to be curtailed by the Court. One approach that might be considered is that of identifying which claims have independent validity (i.e. claims that can be said to have independent validity even if the independent claims that they stem from are invalidated), pursuant to the English High Court case of Edwards Lifesciences AG v Cook Biotech  EWHC 1900 (Pat), where the Court has an active role in ensuring that a Plaintiff makes a realistic identification of claims that are independently valid.
Although the court-supervised discovery is provided by the Korean patent law, this does not mean that plaintiff in a patent infringement action can readily procure evidence without limitation. There is still an ongoing discussion regarding (i) the degree of plaintiff’s initial burden of proof for a court to order a defendant to submit evidentiary materials, (ii) the scope of evidentiary materials the court can order to submit, and (ii) the sanction measures in case of non-compliance with the order while balancing the interests and burdens of the plaintiff and the defendant.
The obligation to post security at a specific amount prior to the Courts’ decision on interim injunctions is impractical, as a negative decision can be based on an insufficient guarantee. A system such as in other jurisdictions, where the decision is unenforceable until a court established guarantee has been provided would be more efficient.
Obtaining monetary relief has always been difficult under Swiss law. In particular, some courts have proven to be very strict when it comes to quantifying and substantiating damage claims.
From a substantive perspective, the amounts of monetary remedies granted by the IP Court are relatively low, and attorney fees and the costs incurred from collecting and investigating the infringement cannot be included in the damage compensation. These show the undervaluation of the patent. In addition, the patent invalidity ratio determined in infringement litigation is also slightly higher than that in other countries, which is a critical issue that Taiwan needs to consider.
Procedurally, there is a provision allowing the plaintiff to obtain a compulsory evidence collection order, a court order compels the defendant to produce materials that are in possession of the defendant but necessary for the plaintiff to establish its case. However, there are still cases in which the courts dismiss plaintiffs’ motion for said order. Reasons given by the IP Court for its denial of said orders include: to avoid the abuse of the proceedings, to avoid undue impact on the stock price of the alleged infringer, and to avoid unwanted disclosure of an alleged infringer’s trade secrets. Whether these reasons are legitimate grounds for the IP Court’s denial, Taiwan shall reconsider its evidence collection mechanism.
Both substantive and procedural aspects of Thai patent litigation are in need of reform. The Patent Act is ambiguous and silent on many issues, which makes assessment of patent validity and infringement challenging and subject to discretion and different levels of understanding of the individual judge adjudicating each case. Also, the procedural aspect of patent litigation needs to be modernized and streamlined for fairness and efficiency.
Our experience indicates that the approach to the preliminary injunctions needs to be revised, since, in any event it takes long time for a decision to be finalized and become enforceable. Even if the plaintiffs succeed at the end and considering the fact that the first instance courts cannot be enforced until they are finalized, the preliminary injunctions should be more common. Otherwise, taken into account the lack of tools to extend the patent protection term, the benefit to be obtained from a patent significantly decreases.
Moreover, judges with technical background will increase the quality of the patent litigation. The establishment of specialised chambers in Court of Appeal and regional courts will also be helpful for judges to be more experienced and this will also expedite the appeal procedures.
Delay – whilst the route to trial is fairly swift, taking about one year from filing the claim (and with provision in place for expedited trial timelines of six to nine months where necessary), parties can wait a long time to have their appeals heard. On average it takes 12 to 18 months from receiving the first instance judgment to receiving a judgment from the Court of Appeal, and another 12 to 18 months to be heard at the Supreme Court. Given that appellate courts are typically concerned with reviewing issues of law, parties do not typically require this amount of time to prepare their appeal cases, and are therefore left at the mercy of the court timetable as to when their disputes are finally determined.
Service out of jurisdiction – the current rules in CPR Part 6 are antiquated and do not reflect the way global businesses are run these days, with email being the primary means of borderless communication. Service out of jurisdiction can be a long and protracted process taking several months before the substantive stages of the proceedings can properly begin. There are however indications that the Patents Court is changing its approach in this respect. In a recent service out of jurisdiction application by Edwards Lifesciences Corporation, Arnold J ordered service by email on German company Meril GmbH and Indian company Meril Life Sciences Pvt. Ltd.
Accessibility of case information – there is no comprehensive, central and publicly accessible service to provide essential information (e.g. hearing dates, parties, legal representatives) and access to key documents (e.g. pleadings, orders, skeletons) in relation to on-going cases. Whilst the Patents Court maintains a Patents Court Diary, this is updated relatively infrequently and cannot be relied upon to provide accurate information. The implementation of an easily navigable public database that is updated in real-time would be a boon to the public interest in transparency of and access to justice, as well as to third parties with an interest in on-going cases.
Disclosure Pilot – the new Disclosure Pilot being trialled in the Patents Court, discussed further at Question 13 above, has introduced a level of uncertainty into the disclosure regime for patents cases. Given that disclosure has always been significantly more limited for patents cases than general litigation, some of the new procedural rules, for instance the disclosure Models A – E are not easily applicable to patents cases, particularly given that disclosure is often dispensed with in favour of a PPD. Parties are finding that a significant amount of time and cost is going into navigating these new rules that are not well-suited to patent litigation.
Patent eligibility under 35 U.S.C. § 101 has been a perennial source of legislative and policymaking attention in the United States since at least 2010, when the Supreme Court decided Bilski v. Kappos, 561 U.S. 593 (2010). Congress has considered proposed legislation to clarify the application of § 101, especially the exclusion for purely “abstract ideas.”
Venue, and forum shopping generally, are also issues ripe for reform. While TC Heartland LLC v. Kraft Foods Group Brands LLC, 137 S. Ct. 1514 (2017) confirmed that patent suits may be brought in districts where the defendant “resides” (i.e., their state of incorporation), venue remains uncertain beyond that. Specifically, there are diverging opinions addressing whether defendants can be sued in states where they have minor or fleeting business operations.
The law of damages for patent infringement is also unsettled in several respects. For example, there are often disputes around when a patentee can seek a royalty based on the “entire market value” of an accused product, how to identify the smallest saleable patent-practicing unit for purposes of determining a royalty, and how damages for standard-essential patents should be assessed.
In general, IP enforcement regarding patent litigation in Vietnam has seen positive progress. However, some issues remain headaches to rights holders:
- When dealing patent infringement cases, enforcement bodies sometimes come under great pressure from local authorities with close ties to the infringers, especially for pharmaceutical and/or agrochemical patents, so cases get delayed.
- Enforcement bodies often do not have sufficient expertise to deal with patent infringement.
- Invalidation proceedings before the IP Office have a great impact on IP enforcement, especially patent enforcement, and can often put an end to administrative action against patent infringement. Also, the proceedings can substantially prolong the civil procedures as the court always tends to ask the IP Office for its judgment on the validity of the concerned patents. However, in most cases, the IP Office does not extend any help to the court and often declines to clarify the matters raised by the court. Meanwhile, there is no fast-track regime for invalidation proceedings amid the enforcement process.
- The drug authority does not help patent holders much in the enforcement process. The authority even refuses to withdraw market authorisations of infringing generic drugs in defiance of confirmation of patent infringement from the competent authorities.