What You Need to Know About Patent Filing and Litigation in Europe

What You Need to Know About

Patent Filing and Litigation in Europe

Andrew H. Simpson

IP Impact – Silicon Valley

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2 © 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved.

Overview of Global Patent Systems

• PCT

– Worldwide

– Single application

– Search and opinion on patentability

– Examination dialog and amendment optional

– No patent

– Out of PCT into countries 30 months after US application

– Delay individual countries


Overview of European Patent Systems • EPO

– One patent designating up to 40 countries

– Register after issue in selected ones

– Opposition within 9 months after issue

• Only opportunity for “central” attack

• National Patents in Europe

– Harmonized law, practice is not

• The “Community Patent”

– Will there ever be one?

– Spain and Italy have opted out


Typical Approach to Foreign Patents

• US centered and passive as to foreign

• Wait until foreign filing due

• File copy of the US application as a PCT application

• Enter national phase in due course

• Wait for office actions

• = less sophisticated than US patent strategy


Foreign Practice is Not Like the US

• Publication

– US grace period – none in most countries

• Patentable subject matter

– Methods of treating the body by surgery, therapy or diagnosis are not patentable in most foreign countries

• Drafting style

– Set up in the US application the disclosure for foreign protection

– Need extensive general disclosure as basis for amendments

– Don’t make compartments with “embodiments”

• Continuation practice

– US and nowhere else

– Can’t rely on to get earlier dates outside US

– Throw away disclosures


Positioning Patents for Foreign Markets

• Foreign strategy must developed with US strategy and from beginning

• Not later when thinking about foreign filing

• Don’t float through the system using PCT

– Using up patent term and delaying enforceability

• File in basic individual countries and maybe the rest in PCT

• File additional forms of protection

• Don’t foreign file a photocopy of the US application or US claims

– Tailor claims to local practice

• Accelerate examination

• File divisional applications


Foreign Filing

• When

– US filing before making available to public

– NOT a skimpy provisional with no claims

– Within 12 months of first US application

• How

– Direct into individual countries

– Not all into PCT or EPO (maybe individual + PCT)

• Where

– At least key markets

• What

– Core technology – everywhere affordable

– Everything else – case by case basis


Why not the EPO?

• Amendment practice is high risk

– Allowable amendments extremely limited [Art. 123(2)]

– Amendments allowed by the Examining Division are commonly rejected in opposition

– Language added to a claim in prosecution cannot be removed during an opposition if to do so would broaden the claim [Art. 123(3)]

– Sudden death - the patent is dead if both Art. 123(2) and (3) are violated

• All eggs in one basket

• Opposition

• Appeal procedure has changed – to detriment of patentees

• Need so many countries?


EPO Amendments With Risk

• Words not in the application as filed

• Reliance on drawings

• Intermediate generalizations

• Cherry Picking

– Part of a sentence

– Part of a narrower or different embodiment than the claim

• New Combinations

– Selecting features from different embodiments

– Changing claim dependencies

• Negative limitations

• Lack of clarity


Why do I have to Photocopy that?

• The standard for allowable amendments in the EPO

– Supposed to be clearly and unambiguously derivable

– In practice a photocopy test

• Clarity

– Even if you photocopy, are you worse off?

– A and B are connected by screws or the like….

– Having a value of about 0.5 ….


Procedural Risks in EPO Oppositions

• Formalistic and unpredictable

• Surprise!

– Objections from the EPO for the first time at the OD hearing

• Added matter

• New prior art

• Risk of revocation at the OD on added matter only

– The prior art has not been considered

• And what happens on appeal?


What’s Happening on Appeal?

• No longer de novo review

• Discretion of the Boards of Appeal is infinite

• Watch out if the patent is revoked in first instance for added matter

• Now, far less opportunity to add new claims after first instance


Rules of Procedure of the Boards of Appeal

• The grounds of appeal shall contain a party’s complete case RPBA(12(2))

– Any new claims later filed run the risk of being inadmissible

• Any amendment after the grounds of appeal may be admitted at the Board’s discretion RPBA (13(1))

• Requests that could have been presented at first instance may be held inadmissible RPBA(12(4))

• Balance between the patent owner’s need to appeal a decision without giving up and procedural efficiency?

– “late filed” submissions may be rejected

– But the opponent can say anything at any time


How an EPO Appeal can Unravel

• Opposition Division

– Main request + Auxiliary 1-7 (claim 11- 123(2))

• Grounds of Appeal

– Main request + Auxiliary 1-7 + Aux 8-15 with no claim 11

• Preliminary Opinion

– Claim 11 is added matter and will remit to OD a request that complies with Art 123(2)

• Amendment

– delete Main request + Auxiliary 1-7

• Appeal Hearing

– Aux 8-15 inadmissible under Art 12(4) RPBA


Patent Litigation in Europe

• Country by country for:

– All infringement cases.

– All invalidity cases (after EPO opposition period)

• Civil law – eg. Germany, France, Netherlands, Italy

• Common law – UK, Ireland

• No juries

• No depositions

• Loser typically pays. Amount varies.

• Specialized courts and judges in leading jurisdictions

• Damages

– Not enhanced for willful infringement

– Damage trials not common


Germany - Courts

• About half the patent cases in Europe

• Bifurcated infringement and invalidity

• Infringement

– 12 District Courts – specialized senates

– Appeals to Upper District Courts then Federal Supreme Court

– 9-12 months first instance decision on merits

• Validity

– Federal Patent Court in Munich

– Appeal to the Federal Supreme Court

– 18-24 months first instance decision


Germany – Infringement Procedure

• Complaint – all the facts and evidence relied upon + arguments for validity

• Reply brief – then maybe no briefs until near hearing

• No discovery (but now inspection orders)

• Foreign plaintiff v. German defendant – may need to post bond

• Experts rare and court appointed

• Relatively inexpensive

• Court fees and costs determined by “value of the matter”

• Determines cost risk = court fee + attorney fee

• Hearing on the merits typically takes a few hours


Germany – Infringement - Injunctions

• Preliminary injunctions

– Inter partes

• urgency; threat of irreparable harm and strong arguments for validity

– Ex parte –

• urgency and clear case

– Remains in effect unless challenged by the defendant

• Merits

– Stay – rare

• needs clear showing of invalidity = lack of novelty

– Permanent injunction is provisionally enforceable with security

– No discretion not to grant if infringement found


England - Courts

• High Court London – most cases

• IP County Court – limited recovery and costs ($750,000/$75,000) and evidence

• Appeals to the Court of Appeal and then the Supreme Court (rare)

• Infringement/validity – about 12 months or less


England - Litigation

• Limited discovery – all documents relied on and all that could adversely affect its case – defendant’s product description

• Experts – to advise the court – preparation is different – often determinative

• Fundamentally different procedure than Germany – limited number of references – common general knowledge – decisions can be different for the same case

• May not stay if pending proceedings at the EPO (delay)

• Damage trials rare

• Expensive


England – Preliminary Injunctions

• Preliminary injunctions

– balancing test – serious issue to be tried and on balance taking into account the respective damage to the parties if the PI is incorrectly granted or incorrectly refused it is appropriate to grant the PI

– usually stayed

– clearing the way


First Strike as Patentee - Germany • Why?

– Typically largest market

– Courts patent friendly

– No counterclaim for invalidity

• <10% chance of stay for invalidity

– Infringement action faster than invalidity action

• Infringement order immediately enforceable

• Preliminary injunction

– <4 weeks knowledge (<6 Hamburg)

• Which courts?

– Düsseldorf, Mannheim or Munich?


First Strike as Potential Defendant

• England

– More patent unfriendly than Germany

– More in depth review than Germany

– Cost may squeeze a small defendant

• Germany

– Nullity actions

– Bifurcation and time to decision dictates early action

Andrew H. Simpson [email protected]

949.721.2879

Education

What You Need to Know About Patent Filing and Litigation in Europe