IP Week @ SG 2015 preview: Birss talks multinational litigation
A party’s ability to patent an idea or litigate successfully against an alleged infringer is often subject to the prejudices of a nation state’s legal system. Even if one jurisdiction finds in your favour, it is not a foregone conclusion that another state will rule the same way.
“Although patent law is very similar all over the world, there are national differences,” says Mr Justice Colin Birss ahead of his talk at the IP Week @ SG initiative, which is being held by the Intellectual Property Office of Singapore this month.
Birss is no stranger to the intricacies of the UK’s patent legal framework, having presided over numerous cases at the Patents County Court, the Intellectual Property Enterprise Court’s predecessor. In 2013, Birss was appointed as a judge to the English High Court.
He warns that although an infringement lawsuit may seem similar across multiple jurisdictions prima facie, litigating parties must watch out for the different traps when asserting claims across different countries.
“Multinational cases are not always identical to one another,” he says. “To a significant extent the existence of these parallel suits is caused simply by the territorial nature of patents.
“Sometimes the parties are able to settle their dispute on a global basis after a trial in one or two important jurisdictions. However, the territorial nature of IP means that as a last resort the only way a right owner can enforce its rights in a given state is to litigate in the courts of that state,” he adds.
The Unified Patent Court (UPC) is an attempt to streamline this process for litigants across Europe. There will be three central divisions in Paris, Munich and London, as well as regional and local divisions, and an appeals court in Luxembourg for parties challenging decisions issued by the UPC.
“The patents court in London aims to bring cases to trial promptly and tries to ensure that trials come in a period of just over a year.”
Birss says: “The problem of parallel patent cases in Europe is one of the things which the UPC is designed to address. In the UPC, a European patent dispute should only have to come to court once.”
Since the idea of the UPC was first floated, its implementation has suffered a series of delays. Spain challenged the legality of Regulation 1260/2012, which covers the translation of unitary patents into German, French and English, saying it was discriminatory. The Court of Justice of the European Union (CJEU) saw differently and threw out Spain’s claim in May, clearing the last legal hurdle for the UPC to be implemented.
Shortly after the CJEU’s decision, the Conservative Party won a surprise majority in the UK general election and has kept its promise of a referendum on EU membership. Due to take place by 2017, the referendum has led lawyers to speak about the inevitable delay to the UPC’s ratification given the uncertainty hovering around the UK’s continued membership of the union.
For those who cannot wait for the UPC to take effect, Birss says UK courts aim to address businesses’ needs by dealing with patent claims promptly. Such speed makes the UK “one of the first courts in Europe to address validity in multinational litigation”, he says.
“The patents court in London aims to bring cases to trial promptly and tries to ensure that trials come in a period of just over a year after issue,” he concludes.
The IP Week @ SG 2015 initiative runs from August 24 to 28 at the Marina Bay Sands Expo and Convention Centre in Singapore
