PATENT PROTECTION
infringement injunction being granted and finally determining validity is a factor heavily in patentees’
favour.” He adds: “Other than
England, Germany and the Netherlands, however, the picture can be different, as the existence of specialist courts does not necessarily confer access to specialist judges.”
But while the bulk of “high stakes” patent
litigation takes place in England and Germany, France and Italy are equally important if drug companies face a “systemic attack” across Europe. Companies such as Pfizer, which are fighting to save their prized market share in multiple markets, have been known to litigate in as many as 15 to 18 jurisdictions at once.
In practice, the different nuances of national procedures present opportunities for drug companies to exploit. One of the most important considerations is speed, which can vary widely across Europe but is generally fastest in England. According to
data compiled by Radcliffe,
England, Germany and the Netherlands usually have the quickest court proceedings. Te median time to trial in England is usually nine to 12 months, in Germany 10 to 15 months, and in the Netherlands it is about a year.
“But it is not just the time to trial that’s
important,” he says. “In some countries the appeal process takes far longer than the trial process and should not be overlooked, especially when in many countries appeals are almost automatically permitted.” An appeal in France can take 18 to 24 months, and one to two years in Italy; German validity appeals can take two to four years. Radcliffe adds: “England has a ‘rocket docket’ procedure that can be invoked for urgent cases. I have personally taken a fully fledged life sciences case through trial and appeal in eight months—thought to be a record by the Court of Appeal.”
Radcliffe says patent owners place a premium on taking active steps to disrupt competitors’ markets and supply chains. Tis means injunctions. “A first strike interim injunction can be
very effective, although temporary
pan-European injunctions of the kind recently issued by the Dutch and German courts will be discharged as soon as the patent’s validity is challenged, handing a public relations and psychological victory to the defendant.” He adds that patent owners can operate outside the court to “considerable effect” by using the pan- European customs procedures to detain and destroy imported products from outside the EU.
It should not be forgotten, however, that national boundaries can impose unwanted choices on
patent owners. Usually they can dictate the choice of battlefield by controlling where to sue and the timing of litigation, but this is not always the case. Radcliffe says generics will oſten trigger pan-European disputes by launching litigation aiming to revoke patents and obtain a court declaration that their products do not infringe.
Drug companies must be prepared for this, and they will have specialist in-house counsel to deal with whatever is thrown at them. Radcliffe says that because modern, multinational litigation can move at a very fast pace, companies cannot afford to allow their competitors to keep them off balance. “Even the best in-house
teams
rarely have the resources or the time to handle all the work involved in global or pan-European litigation themselves, and so must engage external counsel,” he says.
Day-to-day management of pan-European patent litigation is a full-time occupation, he says, so it is common to appoint an external law firm to act as primary external counsel—reporting directly to the in-house counsel and managing the law firms in various countries involved. It is not essential for there to be litigation in that firm’s country, although that is oſten the case, he adds.
Radcliffe says acting as lead counsel does, however, require a proper understanding of the
32 World Intellectual Property Review July/August 2012
European landscape, and the chosen firm must have the resources available to bring in more staff during the “inevitable peaks” of work, manage a potentially large electronic document management system, operate a secure intranet, and be able to support the local national litigation teams. “Although it is desirable for lead counsel to have offices in multiple countries, it is not strictly necessary, but such large international firms will usually have the resources necessary to manage pan-European patent
litigation—
particularly if there is US discovery to digest and disseminate,” he says.
Looking ahead, Europe may soon be welcoming a new patent court: the Unitary Patent Court (UPC). Te court is part of the ‘unitary patent package’, which is currently on hold aſter the European parliament postponed a vote on it following a dispute over Articles 6 to 8 in the draſt regulation. A unitary patent is intended to make it easier and cheaper for IP owners to obtain protection across the EU. But while the wrangling over specific details of the package continues, it looks certain that Paris will host the court’s central division. In a vote by the European Council in June 2012, government ministers awarded Paris the gold medal, adding that London and Munich will act as ‘thematic clusters’, specialising in chemistry and pharmaceuticals, and mechanical engineering, respectively.
While these developments are likely to affect litigation strategies, it may be some time before we can witness change. “I think that there is still sufficient uncertainty about the precise shape and form of the UPC’s rules and process—in particular Articles 6 to 8—that patent owners will be waiting to see how this plays out before making firm decisions,” says Radcliffe. “Much will also depend on how this process affects the rules that divide up jurisdictions between the so-called thematic clusters and the regional divisions in Europe. As Paris, London and Munich will now specialise, I can see patentees actively considering taking structural steps to ensure that they will have cases involving them (especially as defendant) heard in specialist venues,” he adds.
He notes that patent owners in sectors where there are “regular competitor challenges” will be deciding whether it is better to be sued in a regional venue with less expertise, or to “position themselves” so they enter a specialist, thematic cluster. “Inevitably, this is a granular and multi- factorial exercise.”
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