Patent litigation: a global perspective
Patent protection is a global affair, so if you find yourself embroiled in litigation, it helps to know what benefits and challenges different jurisdictions can offer.
Whether you are bringing the case or defending, different courts across the globe can offer different options to you—especially in the field of life sciences. Patent laws vary and so must your strategy.
LSPN Connect invited three international law firm partners from Germany, the UK and Spain to talk about some of the key differences in cross-border patent enforcement, as well as some tips and tricks for lawyers embroiled in these international cases.
Innovator tactics
One of the most common international patent disputes seen in life sciences is between innovators and generics producers. So it is important to consider the options and what jurisdictions could be beneficial.
“If you have a patent you think is infringed, you need to start by looking at your portfolio and what is available for enforcement,” said Benjamin Grzimek, partner at Fieldfisher, giving a German perspective.
“You also need to ask a couple of key questions: do you want to prohibit your competitor from entering the market? Are you after injunctive relief, damages, or both? On the basis of these answers, you can create a checklist of countries to litigate in.”
“If you see someone entering the market with the infringing product, you might want to wait until the product is in the market. If the manufacturer already has a foothold, it is more likely to settle or work out a license agreement.”
This point was reinforced by Miquel Montana, partner at Clifford Chance, who said: “If your objective is to obtain a permanent injunction, Germany is an attractive jurisdiction.”
UK defences
If a company entering the UK market is facing a lawsuit, there is a legal option that should be top of the agenda, suggested Tim Powell, partner at Powell Gilbert.
“You have a high likelihood of a preliminary junction being levied against you in this situation,” said Powell.
“Fortunately you can make use of the UK’s declaration of non-infringement. Another incredibly useful strategy if you are developing biosimilars and there may be a patent thicket in your way that can be impossible to clear is to seek an 'Arrow declaration' that says that your product is old or obvious over the prior art. If that is established, then the innovator will need to prove their patent validity if they want to litigate."
Managing challenges
While different jurisdictions offer different benefits, managing a multinational case can present a litany of logistical challenges.
Speaking on a previous case, Montana said: “I heard clients say: ‘I feel more like an ego manager’ in some international cases. You need to make sure you are working with team players in these situations.”
“In my experience, many cases can be limited by US litigation. If you want to make an argument in one jurisdiction, US colleagues might say that this could jeopardise the US case, it is a big bottleneck.”
Watch Protecting Patents on a Global Scale—Multi-Jurisdiction Patent Litigation here.
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