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2 December 2022FeaturesPatentsRichard Kempner

Patent litigation: how to win against the odds

Patent litigation is almost always uncertain, because the validity of the patent will need to be determined usually with expert evidence on whether or not it was obvious at its priority date.

And that is a matter of opinion—with experts on both sides usually disagreeing—and with the judge needing to decide between them.

More certainty can be achieved by the parties agreeing upon some kind of deal, whether that is by way of licensing, or a one-off payment. Often that can be done quickly, cost effectively and in a way that constitutes a win for both sides.

50/50 claims reach trial

I fundamentally disagree with those who believe that in the English court system, a patent at trial is likely to be revoked for invalidity and ultimately lost. Yes, of course, some patents go that way. Many do not. It’s difficult to ascertain actual numbers but my feeling is that at least as many UK litigated patents are upheld as invalidated.

I do agree that a patentee would be foolhardy to prosecute a weak claim or a weak patent to trial: there’s no point setting yourself up to fail.

But, while a patentee need have no qualms about litigating a strong patent and a strong claim to trial, its primary goal should be to try and persuade the defendant to give up early and avoid the cost consequences—especially in a ‘loser pays winner’s costs’ jurisdiction such as the UK.

So ‘strong’ claims don’t often go to trial either. It’s usually the claims where each party believes that it is going to win. So realistically, it’s the 50-50 claims that land in court for judicial determination.

Costs of litigation

In the UK, the loser pays the winner’s costs. That fact often stops either party prosecuting or defending a bad case: after all, why would you want to pay not only your own legal fees but your opponent’s as well?

London-based litigation teams often quote very high sums of money to litigate UK patents: £1,000,000, for example, per patent per defendant. But it doesn’t need to be that way and in the UK we benefit from the Intellectual Property and Enterprise Court (IPEC), where we have had success both in prosecuting and defending UK patent litigation for under £250,000.

And in that court, the cost consequences of losing are mitigated by capping the loser’s liability to pay the winner’s costs at £60,000.

Strategic moves

Choosing the right law firm is critical. The questions for patent owners are: do you want to pick a firm whose philosophy is to throw the largest team and the most resources at the case in the belief that doing that will maximise the chance of winning?

Or do you believe that finding the right firm to pick only the winning arguments for you, and so reduce the costs you will incur, is more important?

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