Global patent litigation: how and where to win January 2015 Véron & Associés 1 Global Patent Litigation: How and Where to Win Asian tour January 2015 Part I: Global Forum Shopping France 1.1. Executive Summary (5 minutes) 1.1.1. Main Characteristics of Forum 1.1.2. Available offensive and defensive actions 1.1.3. Available remedies for a patentee 1.2. Key data regarding patent litigation in the forum (10 minutes) 1.2.1. How many cases initiated and decided (first instance and appeal)? 1.2.2. Fields of technology 1.2.3. Who are the claimant? 1.2.4. What are the chances of success (patentee v. accused infringer)? 1.2.5. How long does it take? 1.2.6. How much does it cost? 2
17
Embed
Global Patent Litigation: and Where to Win - LE CABINET · Global patent litigation: how and where to win January 2015 Véron & Associés 2 Global Forum Shopping France 1.1. Executive
This document is posted to help you gain knowledge. Please leave a comment to let me know what you think about it! Share it to your friends and learn new things together.
Transcript
Global patent litigation: how and where to win January 2015
Véron & Associés 1
Global Patent Litigation: How and Where to Win
Asian tour January 2015
Part I: Global Forum ShoppingFrance
1.1. Executive Summary (5 minutes)1.1.1. Main Characteristics of Forum1.1.2. Available offensive and defensive actions1.1.3. Available remedies for a patentee
1.2. Key data regarding patent litigation in the forum (10 minutes)
1.2.1. How many cases initiated and decided (first instance and appeal)?1.2.2. Fields of technology1.2.3. Who are the claimant?1.2.4. What are the chances of success (patentee v. accused infringer)?1.2.5. How long does it take?1.2.6. How much does it cost?
2
Global patent litigation: how and where to win January 2015
Véron & Associés 2
Global Forum ShoppingFrance
1.1. Executive Summary (5 minutes)
1.1.1. Main Characteristics of Forum
1.1.2. Available offensive and defensive actions
1.1.3. Available remedies for a patentee
1.1.4. Duration of proceedings
3
French Courts structure
Average of 180 decisions a year
4 panels (“sections”) of 3 judges
12 IP specialist judges
Average of 80 decisions a year
2 panels (“sections”) of 3 judges
6 IP specialist judges
The Tribunal de Grande Instance de Paris has exclusive jurisdiction for patent cases
Around 20 patent cases decided a year
1. Main characteristics of Forum
4
Global patent litigation: how and where to win January 2015
Véron & Associés 3
Offensive and defensive actions
Offensive actions: Cease and desist letters (never compulsory) Action for patent infringement Preliminary injunctions Customs actions
(Stronger since Act of 11 March 2014)
Defensive actions: Opposition procedure for European patents only
(no opposition for French patents) Patent revocation proceedings
(Be carefull: statutes of limitation of 5 years) Action for a declaration of non infringement
(a prelitigation phase is compulsory) Declaration of non‐essentiality for Standard Essential Patents
5
Infringement and invalidityare decided by the same court
Unified system > one judgment decides on: Patent construction Patent validity Patent infringement
The judgment also decides on: Injunction which is of right (usually enforceable pending appeal) Damages or Damage enquiry + account on damages
(also enforceable pending appeal) Other remedies requested
– Publication of the decision
– Recall and destruction of products
Contribution to the costs of the winning party
6
Global patent litigation: how and where to win January 2015
Véron & Associés 4
Duration of patent proceedings
7
Global Forum Shopping
1.2. Key data regarding patent litigation in the forum (10 minutes)
1.2.1. How many cases initiated and decided (first instance and appeal)?
1.2.2. Fields of technology
1.2.3. Who are the claimant?
1.2.4. What are the chances of success (patentee v. accused infringer)?
1.2.5. How much does it cost?
8
Global patent litigation: how and where to win January 2015
TGI Paris ‐ Nationality of parties(2000 – June 2014)
12
0 20 40 60 80 100 120 140 160 180 200 220
ILLUFICADKESSEBEJPGBIT
CHNLDEUS
0 20 40 60 80 100 120 140 160 180 200 220
MCTWCASEKRJPNLESGBBECNCHITUSDE
Global patent litigation: how and where to win January 2015
Véron & Associés 7
TGI Paris ‐ Validity and infringement FR/EP(2000 – June 2014)
13
TGI Paris ‐ Validity and infringement FR/EP(2000 – June 2014)
14
Global patent litigation: how and where to win January 2015
Véron & Associés 8
TGI Paris ‐ Validity and infringementEuropean patents (2000‐2009 v. 2010‐2014)
2000-2009 2010-2014
15
TGI Paris ‐ Patent litigation by industry including patentee win rate
(2000 – June 2014)
16
12
16
26
30
32
46
56
69
82
109
131
137
246
25%
50%
27%
63%
16%
20%
18%
22%
28%
37%
40%
34%
40%
0 50 100 150 200 250
Biochemistry
Telecoms
Entertainment
IT
Pharma
Chemistry
Physics
Medicine
Electricaltechniques
Construction
Householdproducts
Industrialtechniques
Mechanicalengineering
Win rate pertechnical field
Number ofpatents pertechnical field
2000-1st half of 2014
Global patent litigation: how and where to win January 2015
Véron & Associés 9
First instance decision is often decisive
Cour d’Appel of Paris2000 ‐ June 2014 Judgmentsaffirmed / reversed
Cour de Cassation2000‐2013(2014 data NA)Decision quashed / appeal rejected
Affirmed50%
Partially affirmed
34%
Reversed16%
17
Cour d’Appel of Paris ‐ Validity and infringement(2000‐2014)
18
Global patent litigation: how and where to win January 2015
Véron & Associés 10
Cour d’Appel of Paris ‐ Validity and infringementEuropean patents (2000‐2009 v. 2010‐June 2014)
2000-2009 2010-2014
19
Average costs
First instance proceedings
– Simple matter: €100.000 ‐ €200.000
$120.000 ‐ $240.000
– Average matter: €200.000 ‐ €300.000
$240.000 ‐ $350.000
– Difficult matter: €300.000 ‐ €500.000
$350.000 ‐ $600.000
Appeal: 70% of costs of 1st instance
20
Global patent litigation: how and where to win January 2015
Véron & Associés 11
Part II Procedural and substantive issuesFrance (10 minutes)
2.1. Interim injunctions
2.2. Proving your case
2.2.1. Gathering of evidence
2.2.2 Role of experts
2.3. Damages calculation and damage assessment proceedings
21
Preliminary injunctionPreliminary injunctions available: decided by the presiding judge (or judge in charge of case management) quite difficult to obtain
(patent validity and infringement must be clear and strong) rarely granted ex parte
(urgency not sufficient to justify ex parte)
Duration of preliminary injunction procedure: 1 to 4 months for ordinary matters a few days in case of urgency (some pharma matters or for trade show)
Trends: No formal “clear the way doctrine” for generic companies launching a
product at risk A balance of convenience approach is increasingly made by the court Preliminary injunction unlikely to be granted for standard essential
patent22
Global patent litigation: how and where to win January 2015
Global patent litigation: how and where to win January 2015
Véron & Associés 13
The saisie‐contrefaçon in short
Very powerful tool Upon authorization granted ex‐parte, a bailiff (a public
officer) assisted by experts chosen by the claimant (patent attorneys) may enter any premises where evidence of infringement might be found: to perform the investigations authorized in the court order; to draft a report handed over to the claimant and later exhibited to the Court
No prima facie evidence is necessary
Even against third parties (e.g. regulatory authorities)
Evidence gathered in France can be used in parallel litigation
25
The saisie‐contrefaçon: search order to preserve evidence
The most efficient way to gather evidence of infringement:
used in 80% of infringement actions
more than 600 saisies are authorized each year by the Court of Paris (in all IP matters)
inexpensive: between €20,000 and €50,000 i.e. $24.000 and $60.000
26
Global patent litigation: how and where to win January 2015
Véron & Associés 14
Damages
Damage enquiry very frequently ordered by the court of first instance after a finding of infringement
Lost Profits:
– Calculated on the total infringing sales (including the entire market value and the springboard effect)
– Based on turnover that the patentee (or licensee) would have made on the additional products (incremental profit margin)
– Price erosions and other losses
Lost royalties:
– Calculated on the total infringing sales (including the entire market value and the springboard effect)
– Based on the infringer’s turnover
– Increased royalty rate (50% to 100% mark‐up)
Profit of the infringer
NB: Statutes of limitation for damages is now 5 years
27
TGI Paris (2000 ‐ June 2014)Average amount of damages: €260,000 i.e. $310.000
28
Global patent litigation: how and where to win January 2015
Véron & Associés 15
TGI Paris (2000 ‐ June 2014)The greatest damages awarded
(costs under Art. 700 CPC not taken into account – advance payments excluded – settlement agreement excluded)