ANNUAL REVIEW

Intellectual Property Litigation 2016

September 2016  |  INTELLECTUAL PROPERTY

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Intellectual property (IP) – whether inventions, literary and artistic works, designs and symbols or names and images used in commerce – is among the most important assets an organisation has at its disposal. Indeed, IP is now a major conduit for success in today’s modern business world and it is not uncommon for a company’s IP portfolio to account for up to 70 percent of its total worth as a business. Indeed, US companies invest approximately $1.1 trillion a year into IP.

 

UNITED STATES

Michael R. Dzwonczyk

Sughrue Mion PLLC

“Data shows that in the US in 2015, 5830 patent cases were filed, a 15 percent increase over 2014 filings. Trademark infringement actions remained relatively constant and copyright infringement suits dropped off sharply. Patent actions spiked in November 2015, in likely anticipation of the new Federal Rules’ stricter pleading standard. As a result, Q1 2016 patent infringement lawsuits dropped off to 955 in number, perhaps because cases otherwise planned for filing in early 2016 were filed before the Federal Rules changed on 1 December 2015. Still, the most common causes of these conflicts in numbers are disputes based on actions filed by NPEs.”

 

CANADA

Peter E.J. Wells

McMillan LLP

“There seems to be some increase in intellectual property litigation in Canada, although it is hard to be precise, as intellectual property (IP) cases may be brought in any one of the Federal Court or the 10 Provincial Superior Courts and data on numbers and types of cases are not readily available. The majority of new cases appear to fall into one of two categories: one relates to trademark disputes and the other is the specialised litigation under the Patented Medicines (Notice of Compliance) Regulations (PMNOC) relating to the process of obtaining approval to market generic versions of pharmaceuticals.

 

UNITED KINGDOM

David Wilkinson

Clyde & Co LLP

“Unlike in the US, there has been no reduction in patent litigation volumes, and there has been a noticeable increase in trade secrets litigation. Although trade secrets and confidential information disputes tend to settle more readily than large patent disputes, companies are becoming increasingly willing to resort to the courts, and recent decisions on the non-patentability of some classes of life sciences and software inventions has seen confidential information becoming more important for IP-rich companies. Online trade mark disputes have also increased.”

 

NORWAY

Martin Berggreen Rove

Advokatfirmaet Selmer DA

“We have noted a marked increase in the amount of IP litigation seen in Norway and the Nordics in recent years, and particularly over the last 12 months. We believe that the increase can be mainly explained by a heightened awareness and importance of IP players in the Norwegian and Nordic markets. When a brand or a product is threatened by a competitor or a copy, businesses seem more inclined to take legal action in order to safeguard their investments, their market position and the value of their business.”

 

SWEDEN

Maria Zell

Vinge

“Over the last couple of years we have experienced an increase in disputes regarding trade secrets and copyright protection in Sweden. The typical case involves an employee who is moving to a competitor or starting his own business in competition with his former employer and who takes protected information owned by the former employer with him to the new workplace or their new business. Such actions are often initiated at the courts with a request for an infringement investigation according to the Swedish Copyright Act or a request for interim injunction.”

 

PORTUGAL

Ricardo Costa Macedo

Caiado Guerreiro & Associados

“One can sense that there has been an increase in intellectual property litigation in Portugal in recent times. This litigation often revolves around patent disputes, trademark disputes and copyright remuneration related disputes. The fact that there is now a fully functional court specialising in IP in Portugal has been an advantage and a reason why more parties choose to enforce their IP rights and bring those conflicts to court whenever necessary. In the past, the lack of a specialised and swift court sometimes deterred plaintiffs from litigating. There is also a very relevant role being played by institutionalised arbitration centres and ad hoc arbitration tribunals in administering justice in IP disputes in Portugal.”

 

ITALY

Gian Paolo Di Santo

Pavia e Ansaldo – Studio Legale

“Global crisis and the stagnation of the European economy have certainly had consistent effects on the budgets companies allocate for legal services in general. Accordingly, there is a more conservative use of litigation as a tool, with a slight decrease in the number of cases. Nevertheless, Italy remains among the most relevant IP litigation venues in Europe and the perception is that its importance may be further increased following Brexit. Italy remains an important national market with 60 million people with a consistent spending attitude and boasts one of the 10 most important global economies. The most common causes of conflict are alleged infringements of patents, trademarks and copyright.”

 

POLAND

Professor Krystyna Szczepanowska-Kozłowska

Allen & Overy, A. Pedzich SP.K.

“The increase in intellectual property (IP) litigation in the region is related to global changes in the economy. IP is becoming more and more important due to its direct impact on business processes and their effectiveness. The increase in IP litigation is not just a trend of the last year; the increase has been stable since 2004, when Poland became a member of the EU. The attractiveness of a new market in this region, mainly due to the size of its population, opened up the market to companies that were not previously present. The fast-growing economy was also an incentive for investment in the region.”

 

INDIA

Rajesh Ramanathan

TMT Law Practice

“IP litigation in India has been on the rise. Litigation is predominantly looked upon as a successful tool to restrain infringers, counterfeiters and at times even competitors from stepping into your field of business or market. Added to this is the fact that judiciary now is more receptive to litigation and better placed than ever before to appreciate and evaluate the importance of IP rights, which has given confidence to both practitioners and litigants to approach Courts for remedy. The past 12 months has also seen an increase in IP litigation not only in New Delhi but also in other High Courts like Bombay, Calcutta and Madras which exercises original jurisdictions in the territory of the respective cities.”

 

MALAYSIA

Michael C. M. Soo

Shook Lin & Bok

“The main causes of conflict leading to IP litigation in Malaysia are infringement and disputes as to the validity or ownership of IP rights. However, there has been no increase in IP litigation in the past 12 months. In fact, it would appear that many companies are in favour of resolving disputes amicably even after the commencement of an action before the court. The preference for amicable settlement appears to be primarily driven by costs considerations of late as IP litigation may be a costly affair, particularly when the services of technical or specialised experts are required. Further, an amicable settlement may prove beneficial if parties are able to negotiate a ‘win-win’ solution or outcome.”

 

SINGAPORE

Max Ng

Gateway Law Corporation

“In the last 12 months there seems to have been an increase in IP litigation in Singapore. Several recent cases have reached the Court of Appeal, the apex court in Singapore, such as The Audience Motivation Company Asia Pte Ltd vs. AMC Live Group China. We also note that there has been an increase in appeals against the decisions of the Registry. The most common causes of IP litigation in Singapore include trademark infringement claims, and parties asserting their other IP rights.”

 

TAIWAN

Yu-Li Tsai

Deep & Far

“According to data from the Intellectual Property Court (IP Court) for 2015, there were 1012 new cases filed last year, including 445 civil cases, 254 criminal cases and 313 administrative cases. In 2014, the respective numbers of cases filed were 514, 286 and 294. The causes or claims of these cases are IP infringement, injunctive relief, royalty disputes, declaratory judgment for rights ownership, criminal offence for violating the IP laws, opposition proceedings, invalidation proceedings, cancellation proceedings, among others.”


CONTRIBUTORS

Advokatfirmaet Selmer DA

Allen & Overy, A. Pedzich SP.K.

Caiado Guerreiro & Associados

Clyde & Co LLP

Deep & Far

Gateway Law Corporation

McMillan LLP

Pavia e Ansaldo – Studio Legale

Shook Lin & Bok

Sughrue Mion PLLC

TMT Law Practice

Vinge


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