European Patent Litigation Timothy J. Powell Member of the International Liaison Committee IN ASSOCIATION WITH

Overview Country summaries: UP & UPC Germany France Netherlands UK Will they go ahead? What are important impacts on European patent lirtigation?

Overview: Germany Key feature is bifurcation of infringement and validity actions Infringement in any State court If infringement occurring in the state Validity only in Nullity Court in Munich Timetable often quicker in infringement court than nullity court So can be good for patentees Can enforce infringement judgement before validity judgement handed down

Overview: Germany Bifurcation example: Patent infringement Defendant sued in Düsseldorf September 2015 Infringement hearing & opinion 27 September 2016 Infringement judgement by end-October 2016 Parallel nullity hearing not until January 2018 No cross-examination, disclosure/discovery So cases on average cheaper than in e.g. UK But appeals more common Costs recovery partly related to “value” of patent Calculation transparent unless appealed

Overview: France Distinctive feature is Sasie Contrefaçon: court order permitting (controlled) acquisition of evidence from infringer Very useful as evidence can be used in other jurisdictions No bifurcation so infringement & validity heard together

Overview: France No cross-examination, discovery Incurred costs between German & UK levels in recent cases? Costs recovery: losing party pays But court can curtail costs recovery; relatively complicated formula Recovered costs rarely approach level of incurred costs Recent judgements in region of €50000 - €100000

Overview: Netherlands Infringement & validity heard together Dutch courts invented cross-border injunction Courts continue to grant such injunctions sometimes Judgements available in 16 – 20 months unless Kort Geding or other shortened procedure invoked Procedure “front loaded” – limited scope for amending case as it proceeds

Overview: Netherlands Costs recovery “full” But costs generally determined in early stages of case Detailed costs schedules required Costs recovery in Netherlands now at much higher levels than previously Used to be essentially nominal costs Significant development? Does high costs recovery rate discourage lawyer expenditure?

Overview: UK Infringement & validity heard together Centuries of common law practice Disclosure, experiments, cross-examination extensive So justice thorough Privilege a long-established feature of litigation Compare with limited exposure in Continental Europe

Overview: UK Recent development: costs budgeting Applies to “multi-track” cases with value less than £10 million Detailed costs schedule required at outset of proceedings Parties must agree costs, or court will impose order Costs recovery claims compared to agreed budgets At this stage, High Court only, not IPEC

Overview: UK Shortened & Flexible Trial Schemes Shortened trial: same judge throughout, listing for hearing 10 months after claim served Judgement within 6 weeks after trial Maximum trial length 4 days Intended for simple cases

Overview: UK Flexible trial: parties agree to adapt trial procedure to case Trial procedure includes pre-trial disclosure, expert evidence, submissions at trial Intention is to limit disclosure & evidence at trial Shortened & flexible trial schemes non-mandatory Both parties must agree Pilot schemes at present

Effect of UP & UPC Much already written about UPC Agreement In my view, two very significant aspects Optional bifurcation Privilege Bifurcation allows German Local Divisions to proceed according to familiar principles Privilege a new concept for some European lawyers

Effect of UP & UPC Privilege very different from confidentiality obligation Privilege perpetual, cannot be waived by one party alone In English law defined in decided cases, starting in 1570 CDPA 1988 defined patent attorney privilege as the same as (case law derived) solicitor privilege UPC Agreement & Rules attempt to define statutory privilege for representatives from scratch Not the best starting point?

Will the UPC Agreement Survive? UK Referendum vote in June 2016 has cast future of UPC Agreement into doubt As drafted, UK ratification essential for implementation of UPC UK Government probably now sees ratification as a Brexit bargaining chip

Will the UPC Agreement Survive Question over whether UK can participate post-Brexit Some (e.g. Prof Tilmann, Hogan Lovells) say yes Minor amendment of UPC Agreement required to allow UK to participate as an EEA member Others (Prof Dr Thomas Jaeger, Universität Wien) say no Article 50, Lisbon Treaty does not permit amendment of EU regulations, so Brexit negotiations cannot have the above result

Will the UPC Agreement Survive? Format of UPC therefore up in the air at present Maybe it won’t happen at all If UK not a participant, value of UPC arguably significantly diminished UK a major European economy Largest English-speaking country in Europe Vast legal profession & expertise UK courts would actively compete with UPC if UK not included

Questions, discussion? Many aspects are imponderable at present Things may become clearer as UK negotiating position established

For more information please contact: Chartered Institute of Patent Attorneys 95 Chancery Lane, London WC2A 1DT Telephone: +44 (0) 207 405 9450 Email: info@cipa.org.uk www.cipa.org.uk IN ASSOCIATION WITH