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This edition is led by

Mark Beariault
General Counsel

Law Firm Panel Chair 

Thierry Calame
Partner and Head of IP


Patent Litigation – the big threat to company profits?

Patent litigation and damages awards are hitting the headlines on a regular basis and Mark Beariault, General Counsel, Head of Legal Affairs for Kudelski Group in Switzerland, asks leading legal experts to ascertain the risks. Chairing the panel of law firms for this edition is Thierry Calame, Partner and Head of IP at Lenz & Staehelin in Switzerland.

Much has been said about the competitive implications of the various patent wars currently being waged among some of the world's largest technology companies.  Given the stakes involved – with damages and costs often running into millions – it is no surprise that these battles have quickly spread worldwide. In addition, non-practising entities, which have historically operated in the United States, are increasingly looking abroad for new sources of patent licensing revenue.
As patent enforcement activity increases, what are the key considerations for General Counsel to assess, both from a plaintive and defendant standpoint?

Mark’s questions for each jurisdiction are:
Question 1) Patent infringement will often not be confined to just one country, which means that patent holders face the important decision of where to bring an action for patent infringement.  What are the key advantages and disadvantages of conducting patent litigation in your jurisdiction?

Question 2) What is the state of the law in your jurisdiction concerning the enforcement of patents that are essential to a technology standard and/or subject to a commitment to license under fair, reasonable and non-discriminatory (FRAND) terms?  Are there national competition law issues that may impact patent enforcement activities?

Question 3) What are the key procedural considerations that may impact how an infringement action is initiated and pursued in your jurisdiction, such as use of pre-action notice letters, availability of interim relief, effect of pending EPO proceedings, expert witnesses, applicable statute of limitations and ability for evidentiary discovery?

Question 4) How do the courts in your jurisdiction approach the three primary types of relief sought in a patent case (injunction, damages and costs)?

The legal experts joining Thierry on his panel are:

Australia: Matthew Swinn, Partner and Kadri Elcoat, Senior Associate, Corrs Chambers Westgarth

Brazil: Elisabeth Kasznar Fekete, Partner, Kasznar Leonardos

Canada: Alan Aucoin, Partner and Antonio Turco, Partner, Blakes

England & Wales: Andrew Moir, Partner, and David Wilson, Partner, Herbert Smith Freehills

Finland: ROSCHIER (Coming soon...)

France: Allen & Overy (Coming soon...)

India: Anand & Anand (Coming soon...)

Ireland: John Whelan, Partner and Angeline O’Connell, Solicitor, A&L Goodbody

Israel: Tal Band, Co-Managing Partner and Head of IP, S. Horowitz & Co.

Italy: Massimo Sterpi, Partner, Studio Legale Jacobacci & Associati

South Africa: Dario Tanziani, Partner, Adams & Adams

Spain: Jorge Llevat, Partner, Cuatrecasas, Goncalves Pereira

Switzerland: Thierry Calame, Partner and Head of IP, Lenz & Staehelin (Panel Chair)

The Netherlands: NautaDutilh (Coming soon...)

DISCLAIMER: Any opinions, statements or other information expressed in TalklawGlobal by the respective author(s) do not necessarily state or reflect those of TalklawMedia, the chairperson or his employer, the firm to which the author belongs or other panellists. The information submitted by the legal experts is for educational purposes only and does not create an attorney-client relationship between the reader, their firm, or any lawyer in their firm, and does not prevent any lawyer in any firm on this panel, from representing a party in any matter or manner (including taking a different position to that which he/she might have expressed or endorsed in TalklawGlobal) or serving as arbitrator, mediator, dispute board member or in any similar position based on the expression of his/her opinions on the various subjects published on TalklawGlobal. No information published on TalklawGlobal may be quoted or reproduced elsewhere without the prior written consent of the author and TalklawMedia.

Matthew Swinn
Corrs Chambers Westgarth
Melbourne, Australia

Tel: +61 3  9672 3155

Kadri Elcoat
Senior Associate
Corrs Chambers Westgarth


Matthew Swinn, Partner and Kadri Elcoat, Senior Associate,
Corrs Chambers Westgarth

Answer 1) Advantages - Australia is an established common law jurisdiction, with its patent law based on pre-EU English law, therefore shares similarities with other commonwealth jurisdictions as well as the USA. Despite having a lower population base than the UK, USA, and some European nations, Australia has a well developed jurisprudence in patent law with an experienced judiciary, some of whom have particular patent expertise. Evidence given in patent trials is generally rigourously tested by oral cross-examination.

The Australian judiciary is very interested in active case management. The courts use strategies such as limiting the discovery process in order to streamline the pre-trial phase of litigation with a view to bringing disputes to trial in a timely manner.

Significantly, Australian patent law is patentee-friendly, which is good news for plaintiffs. While commonly an action for infringement will be met with a cross-claim for invalidity, the state of the Australian law is such that it is extremely difficult to invalidate an Australian patent for lack of inventive step. In relation to all patents applied for before 15 April 2013, inventive step is tested in relation to the prior art and common general knowledge in Australia, rather than internationally.

In addition to the system for standard patents, Australia boasts a very robust innovation patent system, which is also very patentee-friendly. For example, the test for innovative step for innovation patents is more akin to an expanded novelty assessment than it is to the test for inventive step for standard patents.

Australia is therefore a viable jurisdiction in which plaintiffs can run test cases, and the patentee-friendly state of the law may make the cost of litigation more palatable even if the market is smaller.

Because of Australia’s lower population base, innovator companies may find that the overall benefit of conducting litigation in Australia is not economical when compared to its cost. It is usual for Australian patent litigation to be part of a global litigation strategy.

In addition, Australian patent law contains certain quirks which have the potential to render an Australian “test case” decision less relevant to other jurisdictions. The use of a local common general knowledge limb for

Elisabeth Kasznar Fekete
Kasznar Leonardos
Sao Paulo, Brazil

Tel: +55 (11) 2122 6600



Elisabeth Kasznar Fekete, Partner, Kasznar Leonardos

Answer 1) A relevant advantage of conducting patent litigation in Brazil is the weight that patents have been given by the Brazilian Courts in recent decisions. Although the Brazilian Patent and Trademark Office imposes many obstacles to patent holders, the Brazilian judicial system has been establishing a pro-patent orientation, at least in the past few years. In fact, according to recent decisions, Brazilian Courts have been enforcing patents as issued. Moreover, defenses based on invalidity are not seen favorably, the Superior Court of Justice stressing that the validity of claim can only be discussed in lawsuits aimed solely at invalidating the corresponding patents.

A second advantage is that the Brazilian Code of Civil Procedure considers generally the residence of the defendant as the place with jurisdiction to handle an infringement case.  In addition, the place of the infringement could also be considered under article 100, V, a.   However, if the infringement lawsuit against a Brazilian defendant is conducted outside the Brazilian territory, it is likely that a foreign sentence in which a patent infringement was recognized and damages were awarded will face some procedural pitfalls before being enforced in Brazil.  Therefore, if the main jurisdiction where damages will be collected is Brazil, it is advisable to conduct the patent infringement litigation in Brazil.

A third advantage is the proportional low cost of patent litigation, at least when compared to similar processes conducted in the United States.

Answer 2) There are few patent infringement lawsuits related to patents that are incorporated in a technology standard and, until now, at least in the more important cases, no defense based on competition law has been raised or discussed by Courts.  It is important to stress that commitments to license under fair, reasonable and non-discriminatory (FRAND) terms are not regulated by the government and, at least until this moment, has limited or no impact on patent enforcement.

Under a different approach, both the Brazilian Antitrust and

Alan Aucoin

Toronto, Canada
Tel: +1-416-863-2635

Antonio Turco
Toronto, Canada
Tel: +1-416-863-5261



Alan Aucoin, Partner and Antonio Turco, Partner, Blakes


Answer 1) Patent litigation in Canada is generally similar to other common law jurisdictions and, for that reason, will not result in too many surprises for a patentee or someone claiming under the patent.  That being said, there are a number of differences between, for example, U.S. patent litigation and Canadian patent litigation.  Some of these differences are substantive and others are procedural. Commercial reasons will generally dictate where the suit is brought.  None the less, there may be strategic reasons for choosing one or more jurisdictions to proceed against an infringer.  For cost and certainty reasons, Canada is a favorable jurisdiction to bring such proceedings.

The key advantages and disadvantages of patent litigation in Canada are, in many respects, two sides of the same coin.  Like them or not, these differences will, for the most part, mean lower costs of enforcement for the patent holder.  As will be described further below, some of the advantages and disadvantages are: (1) patent cases in Canada are tried by a Judge alone - there is no jury; (2) there are no Markman-type hearings to determine construction before trial; (3) pre-trial Injunctions are generally not available in the absence of clear proof of irreparable harm. (4) pre-trial oral discovery is generally limited to one representative for each party plus the named inventors of the patent in issue; and, (5) file wrapper estoppel is not recognized in Canadian patent litigation.

Canada is a federal system, comprised of 10 provinces and three territories. The Federal Court Trial Division has jurisdiction to deal with matters such as patents that have been constitutionally allocated to the federal government.  Each of the provinces and territories has a Superior Court of plenary jurisdiction where the judges are also federally appointed.  While both Courts have concurrent jurisdiction to deal with patent infringement actions, only the Federal Court can declare a patent to be invalid.  As invalidity will almost always be raised as a counterclaim forming part of an infringement defence and because the Federal Court judges will generally be more familiar with patent issues, it is rare that a patent infringement case will be commenced in a provincial or territorial Superior Court.

Unlike the Superior Courts where 6 person civil juries are available in limited cases, the Federal Court Act states that all matters shall be heard before the Federal Courts without a jury. The absence of a jury can significantly reduce the cost of trying or appealing a case.  It also bears noting that the Federal Court will, with limited exception, require that a patent infringement case be scheduled for trial within two years of commencement of the proceedings.  It is also typical that the case will be case managed by the Court with schedules being set for each step in the proceedings thereby limiting the possibility of costly delay tactics. 

Each step in a patent infringement action will add to the cost of enforcement. There is no pre-trial patent construction process such as can be seen in a U.S. Markman hearing.  While some might argue that a pre-trial construction of the patent can induce early settlement or limit the time spent at trial, there is no assurance that this will happen.  The practice in Canada is for the Trial Judge to construe the patent at trial on a purposive basis. Purposive construction involves not only reading the claims but also the patent specification to glean whether the inventor intended that the claims be strictly construed.  Another significant advantage for the patentee is that file wrapper estoppel plays no role in Canadian patent litigation.

Pre-trial injunctions are rarely granted in the Federal Court because of the need to clearly establish irreparable harm as one of the requisite granting tests. Although pre-trial injunctions were never dispositive of the merits of a case, in some cases they could practically have that effect.  However, as the awarding damages play a significant role in patent cases, it is unlikely that an interim or temporary restraining order will end the case. As such, the cost savings achieved by not going for a pre-trial injunction may outweigh the benefit.

Oral discovery in Canadian patent litigation is limited to one person representing the party and, on a more limited basis, the named inventors of the patent in issue. The costs associated with oral discovery can be significant and limiting its use can amount to significant savings. The ability to contain oral discovery can also

Andrew Moir
Herbert Smith Freehills
London, UK
Tel: +44 20 7466 2773

David Wilson
Herbert Smith Freehills
London, UK
Tel: +44 20 7466 2179
England & Wales:
Andrew Moir, Partner, and David Wilson, Partner, Herbert Smith Freehills

Answer 1) One of the most important points to bear in mind when deciding in which jurisdictions to litigate is that in England & Wales the issues of infringement and validity are generally heard and decided together. Either (1) the patentee commences proceedings for infringement and the potential infringer then counterclaims for revocation; or (2) the potential infringer commences proceedings for revocation or a declaration of non-infringement and then the patentee counterclaims for infringement. This contrasts with the "bifurcation" of infringement and validity between different courts that takes place in Germany. This makes England & Wales an advantageous jurisdiction for an alleged, or potentially alleged, infringer because in a typical case the patentee has to succeed on all of the issues in play for the patent to be both valid and infringed (which can be a significant task, given the number of grounds of invalidity potentially open to the other side). It also makes it possible for the infringer to run "squeeze" arguments, e.g. by arguing that if a claim of the patent is construed sufficiently broadly to catch the alleged infringement, then that claim is also anticipated by the prior art or is unsupported by the description when compared to the contribution the patentee has made to the field.

Patent cases are heard by a specialist Patents Court, which is part of the High Court. Unlike the judges in some other European jurisdictions, who may be generalists who hear other types of cases, the Patents Court judges have hands on experience of patent law, many of them having practised as patent lawyers before going to the bench. A number of the judges also have a scientific background. The English procedure is thorough and rigorous, with disclosure of documents, expert evidence and trials featuring cross examination of witnesses of fact and experts.  It is therefore an ideal forum to establish or test facts. This contrasts with some other European jurisdictions where the case is argued predominantly by way of detailed written briefs with a relatively short oral hearing towards the end of the case. For these reasons, English judgments can have a significant persuasive effect on courts in other jurisdictions.  The trade-off is that this can be an expensive jurisdiction in which to litigate. However, measures are available to keep costs under control and the judges take an active role in case management with a view to avoiding unnecessary costs being incurred.

There is also a specialist Patents County Court, with simplified procedures and a cap on the recoverability of costs. This is aimed at small and medium sized enterprises, who may be deterred by the costs of litigating in the High Court. However, while the Patents Court is the natural forum for high value or very complex patents disputes, the Patents County Court is becoming increasingly popular for all sizes of case. 

English litigation is fast. Trial can take place within 12 months of a claim being filed, depending on the length of the trial and how busy the court is. Parties do have the option of agreeing to a streamlined procedure, which can mean that trial takes place within 6 months. Appeals are particularly quick compared with

John Whelan
A&L Goodbody
Dublin, Ireland
Tel: +1 415 767 5260

Angeline O’Connell
A&L Goodbody

John Whelan, Partner and Angeline O’Connell, Solicitor, A&L Goodbody

Answer 1) The relative speed of the Irish Commercial Court, which has been conferred with specific jurisdiction over intellectual property disputes, together with a quasi-expert judiciary presiding over intellectual property cases, can operate to considerably reduce the amount of time it takes to resolve a patent dispute. The Commercial Court has been widely acclaimed as a major success with regard to the speed at which it brings matters to trial. The system of rigorous case management which it has employed and its ability to offer early hearing dates has ensured the speedy resolution of disputes.

Case Management
In the Commercial Court, the judge can make a number of directions at the pre-trial stage which set time limits for the exchange of pleadings, which outline and clarify the issues in the proceedings, which require discovery or which require the expert witnesses of both parties to consult with each other. The judge has significant powers to set time limits on the various stages of the proceedings in order to minimise costs and the time limit on the exchange of pleadings is often set at two weeks. Time frames are tight at all stages of proceedings in the Commercial Court and costs may be awarded against a party that fails to meet a deadline.

As the minimisation of cost and delay are core objectives of the Commercial Court, emphasis is put on opportunities for alternative dispute resolution, and the judge can adjourn proceedings for up to 28 days in order to allow the parties to enter into mediation.

The ability of the judge to get closely involved in case management is an innovative feature of the Commercial Court. A case management conference may be held with the parties to prepare for the case and for the judge to review whether pleadings have been sufficiently dealt with to date and whether his or her orders and directions have been satisfactorily complied with. The judge can set a time frame for the conduct of the outstanding pre-trial procedures. A pre-trial conference is subsequently held which establishes time frames for the trial itself and, if the proceedings are ready to proceed to trial, a hearing date may be set.

Although the judges who preside in the Commercial Court are well acquainted with a range of specialist areas particular to commercial disputes, including intellectual property matters, Ireland does not have a specialist patent court.

Answer 2) The Irish Courts have not considered the issue of Standard Essential Patents ("SEPs") or patents subject to a commitment to licence under Fair, Reasonable and Non-Discriminatory (FRAND) terms. We are however aware of the debate on the international stage, in relation to these matters. Whereas Irish law is very clear that an injunction is available in the event of infringement of a patent, we take the view that the Irish courts often look for very practical solutions to disputes. This is particularly the case with the Commercial Court, and whereas the strict legal position may be that onerous permanent injunction remedies are available to patent owners, we would hold the view that a court may seek to encourage the parties to seek an alternative dispute resolution.

The above being said, the position is currently unclear in the Irish courts as to how they will deal with

Tal Band
Co-Managing Partner and
Head of Intellectual Property
S. Horowitz & Co.
Tel Aviv, Israel
Tel: +972 - 3 - 5670700

Tal Band, Co-Managing Partner and Head of IP, S. Horowitz & Co

Answer 1) Patent law in Israel is governed by the Patents Law, 1967 ("the Patents Law"), which shares some common ground with the pre-1977 Patents Law in the UK (although differences exist). Israeli patent law is also shaped by case law and, in particular, by precedents set by the Supreme Court.

Patent infringement actions fall under the jurisdiction of the District Courts, and appeals on the District Courts' judgments are heard by the Supreme Court. The Israeli court system does not have special intellectual property courts or divisions. This impacts on two important issues. First, judges who try patent infringement actions may not necessarily have any particular expertise in patent law. Second, since most District Courts in Israel are quite congested, this limits the speed in which patent infringement actions can be tried.

Under the Patents Law, any ground upon which the grant of a patent may be opposed shall be a good defence in an action for infringement. The alleged infringer need not initiate separate proceedings regarding invalidity, and may raise both his non-infringement and invalidity arguments within the framework of his defence against the action. 
However, to the detriment of alleged infringers, the Supreme Court has held that invalidity arguments will hardly ever be entertained within the framework of a motion for preliminary injunction ("PI") (with the rare exception being a case in which there is clear prima facie evidence that the patent is invalid). (1)  Therefore, in most cases, the alleged infringer's only viable line of defence in a motion for PI is non-infringement; any invalidity arguments he might have will only be heard and decided further down the road, in the framework of the main proceedings. This might have dire consequences for the alleged infringer, since more than often, as a matter of reality, motions for PI decide the entire case. While a motion for PI is usually decided within a timeframe that ranges from several weeks to a few months, the main proceedings might take up to 4 or 5 years until a judgment is rendered (in the first instance - not including an appeal). Thus, by winning a motion for PI, the patentee gains several years of monopoly; such patentee would then normally seek to protract



Massimo Sterpi
Studio Legale
Jacobacci & Associati
Rome, Italy
Tel: +39 06 42013332



Massimo Sterpi, Partner, Studio Legale Jacobacci & Associati

Answer 1) While Italy was once known for the long duration of its  patent proceedings, and was used as a jurisdiction to start an action to block  actions in other countries based on the same European Patent (the notorious “Italian torpedo”), the situation has now dramatically changed with the institution of the Specialized IP Courts ( renamed “Tribunali delle Imprese” / “Commercial Court”). These now deal with patent cases within the usual European time frames (24 to 36 months, on average, typically involving both infringement and validity issues) and are particularly efficient in granting interlocutory relief (also in a matter of days, e.g. in case of trade fairs).

While Judges do not have a technical background, they almost always appoint technical experts who are skilled in the relevant fields, and in most cases the final conclusions of the technical experts are followed by the Court.

Also, the same court will hear both nullity, and the infringement claims, avoiding the duplication of proceedings occurring in Germany.
Finally, as there is nothing like a formal discovery in Italy, the costs of patent litigation tend to be much lower than the ones in jurisdictions such as the US or UK.

Answer 2) Italian legislation is in line with EU antitrust principles, under which (see Rambus Inc.) refusal to license Standard Essential Patents (“SEP”) under FRAND terms may well constitute an abuse of a dominant position.

As to the possibility of obtaining an injunction against a third party exploiting a SEP without a license, whereas

Dario Tanziani
Adams & Adams
Pretoria, South Africa
Tel: +27 (0) 12 432 6000

South Africa:

Dario Tanziani, Partner, Adams & Adams

Answer 1) Advantages - The South African Patents Act is based on the EPC and on English statute law, with some significant differences, but greater similarities. In addition, South Africa is still a common law country. So where there may not be a precedent for a particular matter in our law, English and European jurisprudence becomes of persuasive value to our courts where the statutory provision involved is the same. Although this doesn’t mean that there is complete uniformity between South African patent law and English or European law, it does lend a degree of consistency and predictability of outcome as well as comfort area to foreign litigants in that there are few, if any, major peculiarities.

In addition, South Africa was a founder signatory to TRIPS and the Patents Act has regularly been amended to conform to TRIPS.

The court of first instance for all patent matters in South Africa is the Court of the Commissioner of Patents (CCP) which has its seat in Pretoria. It is a special court of the High Court of South Africa. The Commissioner is a High Court Judge appointed by the Judge President of the North Gauteng Division of the High Court on a case by case basis, and has nationwide jurisdiction. The judges are not specialists in patents but there are several judges who have heard patent matters and generally are assigned.

Appeals from the CCP are practically always heard directly by the Supreme Court of Appeal, a five judge bench which has its seat in Bloemfontein. This is generally the end of the matter. Although our Constitution was recently amended to extend the jurisdiction of the Constitutional Court to include patent matters, this court has not taken on patent matters. In one recent case involving a preliminary injunction on a pharmaceutical patent, the respondent, a generic manufacturer, appealed the grant of the injunction by the Supreme Court of Appeal to the Constitutional Court on alleged constitutional grounds but the latter refused to hear the appeal.

Judgment in the CCP can generally be obtained in 12-18 months in trial actions and appeals from that will be

Jorge Llevat
Cuatrecasas, Goncalves Pereira
Barcelona, Spain
Tel: +34.93.2905585



Jorge Llevat, Partner, Cuatrecasas Concalves Pereira

Answer 1) In Spain patent litigation is a matter reserved to the competence of some Commercial Courts, in particular those located in major cities (cities where the Superior Court for each Spanish autonomous region sits). The Commercial Courts were created in 2003 and they have exclusive competence to deal with certain areas of law, among them patent litigation. Furthermore in one venue in Spain (i.e. Barcelona) the existing Commercial Courts have conducted a further specialization in the areas of their competence so that patent litigation is now attributed to three of the existing Commercial Courts. Specialization in intellectual property matters exists also in some Appeals Courts which have special Sections dealing with those matters (e.g. in Madrid and Barcelona). As a result, the level of knowledge of the judges dealing with patent matters has significantly increased, in particular in litigation. Thus, litigants can expect judges to be very knowledgeable on patent matters.

The duration of the proceedings may vary significantly depending on the workload of the court concerned. It is ordinarily however possible to obtain a decision on the merits in the first instance in a period of around thirteen months. Interim remedies are also available and ordinarily they may be obtained in around three months (a period that may be shorter depending on the urgency, especially if the remedies are granted ex parte, without hearing the defendant).

The decisions of the court, both in interim remedies and on merits may be appealed and there are no particular restrictions in this respect (subsequent access to the Supreme Court is however very restricted). Notwithstanding the appeal, the decision at first instance can be enforced at the risks of the requesting party. While proceedings at first instance include a hearing with oral arguments and

Thierry Calame
Partner and Head of IP
Lenz & Staehelin
Zurich, Switzerland
Tel: +41 58 450 80 00



Thierry Calame, Partner and Head of IP, Lenz & Staehelin (Panel C

Answer 1) Patent litigation in Switzerland is generally similar to other civil law jurisdictions. As will be described below, there are, however, some points which should be considered in deciding whether to bring a patent action in Switzerland. The key advantages and disadvantages of patent litigation in Switzerland are:

(1) The court: Switzerland has a specialist court (the Federal Patent Court, established 1 January 2012) which deals exclusively with patent cases. The Federal Patent Court has legally trained judges as well as technical judges who do not only have a technical background, but are also trained in European patent law. The judges at the Federal Patent Court are, thus, not only familiar with the legal issues that often arise in patent litigation, but are equally familiar with highly technical and complex cases. In addition, there is no jury. A patent owner can, therefore, expect a significant level of expertise from the Federal Patent Court. This makes Switzerland a favorable jurisdiction to bring a patent action in.

(2) Language of the proceedings: While German, French and Italian are the official languages in Switzerland and the language of proceedings before the Federal Patent Court is usually determined by the choice of one of these languages by the claimant in the statement of claim, the parties may equally agree on English as the language of the proceedings. Even though the judgment and procedural orders will still be handed down in one of the official languages, the parties are free to make all written and oral submissions in English. In addition, exhibits in English do not need to be accompanied by a translation, but can be filed in the original English language. The fact that English may also be used as language of the proceedings is another advantage of patent litigation in Switzerland.

(3) Settlement hearing: After the first exchange of briefs the Federal Patent Court holds a preliminary hearing where the parties are provided helpful guidance in relation to the wording of their prayers for relief and