The team is joined by Guest Kats Rosie Burbidge, Stephen Jones, Mathilde Parvis, and Eibhlin Vardy, and by InternKats Verónica Rodríguez Arguijo, Hayleigh Bosher, Tian Lu and Cecilia Sbrolli.

Friday, 26 February 2016

Book Review: Patent Enforcement Worldwide

With the cover dedication, "in Honour of Dieter Stauder," Patent Enforcement Worldwide is the third edition of Hart Publishing's country reports on patent enforcement practices and litigation strategies. This edition offers coverage of the implementation of the European Enforcement Directive and preparations for the Unified Patent Court.

In addition to key jurisdictions in Europe, the text covers major economies in Asia and the Americas.  The US section, written by Timothy Maloney, unsurprisingly addresses the expense of litigation. He cites the American Intellectual Property Law Associations's 2013 statistic that the, "median cost of a medium-size patent lawsuit is approximately USD $3.5 million." Maloney argues that the high expense of lawsuits provides an incentive to design around asserted patents to limit potential liability.  'Designing-around' requires investment in R&D and innovation. This is an interesting argument - the higher the cost of litigation, the more incentive there is to innovate. Food for thought.

The first edition of the book was written in 2000 in honour of Dieter Stauder's 60th birthday. According to the preface, Stauder is credited with being one of the first scholars to note the role of enforcement for 'effective protection' of patent rights.  In Katanomist-approved fashion, his 1988 study on patent infringement in Germany, the UK, France and Italy used court data to provide empirical insights into litigation in practice.  His findings suggested a need for harmonisation. Stauder is the former head of the International Section of University of Strasbourg's Centre d'Études Internationales de la Propriété Intellectuelle (CEIPI) and now a practicing lawyer.

Edited by Christopher Heath, a Member of the Boards of Appeal of the EPO, this book addresses a hot topic and is a useful source of reference. Given the pace of change in patent enforcement in the last 15 years, this new edition required significant re-writes of earlier versions.  An impressive feat. If this Kat were to make any complaint, it is that the index is structured in a way that makes it difficult to research by topic (e.g. 'patent trolls'), as opposed to jurisdiction.

Hart Publishing has generously offered a 20% discount to IPKat readers. To receive the discount, please click on the ‘pay now’ button on the right hand side of this link. Once through to the ordering screen type ref: CV7 in the voucher code field and click ‘apply’.

Bibliographic information: Heath, C. (2015). Patent enforcement worldwide : writings in honour of Dieter Stauder. Hart Publishing. IBSN:1849467099.  Prices before IPKat discount: hardback: £95, e-book £67.


IPKat Fan said...

"'Designing-around' requires investment in R&D and innovation. This is an interesting argument - the higher the cost of litigation, the more incentive there is to innovate."

I guess an economist's response to this argument would be that competition forces innovation anyway, R&D budgets are limited and "designing around" a patent (particularly one of questionable validity) is probably not the best use of those funds. Wouldn't that money be better spent on a specific (new) improvement or making the product cheaper?

The Pigs said...

"I guess an economist's response to this argument would be that competition forces innovation anyway"

I suppose only to the extent that one can find an economist to take any side of any issue.

However, one should not (and cannot) simply ignore the fact that innovation is simply better off with patent systems - if for no other reason than there are simply competition forces from large and well established firms that more favor such firms than any innovation forces.

In other words, the larger a firm is, the more established a firm is, the more that firm benefits from a lack of innovation precisely because innovation can often be a factor that resets the competition field, and those larger, more established firms have more to lose. To ignore this force is simply unwise.

Anonymous said...

Its Dieter Stauder (hopefully!)

Nicola said...

Thank you anonymous - I've corrected it.

Nicola said...

The more I work in IP, the more I'm convinced that it's never that straightforward.

Designing-around a patent may be a waste - simply finding a slightly different, but not necessarily better way of doing things. But - most R&D follows already productive research lines (standing on the shoulders of giants etc.) So de facto designing-around will happen even in the absence of a litigation risk management strategy. We would have to know what percentage of designing-around leads to innovation, and what percentage is re-inventing the wheel to really answer the IPKat Fan's query. Which we don't.

And The Pigs - you're quite right. There are a lot of non-IP factors which dominate competition forces. Innovation can disrupt an existing market balance, but that innovation itself may or may not require IP protection.

Anonymous said...

The vast majority of generic medicine involves no designing around to produce even minor improvements in technology. No generic medicine leads to new treatments.

Most R&D does not follow already productive research lines. Sorry to burst the assumption bubble.

The Pigs said...

Sorry Nicola, but the conclusory nature of your comment concerning an unbalanced force against innovation that "may not need" IP protection is the opposite takeaway as to why we do need IP protection.

One simply does no - and cannot - know a priori which innovations will benefit from the presence of IP protection - there is no litmus test early on to separate and thus a system of protection is required to nurture all of the innovations, even ones that eventually can be determined not to have needed such protection (for a variety of reasons including not finding acceptance in the market).

Can there exist exceptions - the presence of those that eventually can be shown not to have needed protection? Sure. But those would only prove the rule, as the saying goes.

Further, I do not think that your characterization of "designing around" is accurate at all. As you would define the term, you eliminate the value of obtaining a different path to a same end. But that is just not the same as your conclusion of "waste."

We award patents for such "different paths" and this is in part because we recognize the value of different paths - quite outside of any end product that those different paths reach.

This is just not the same as saying that the known path (more linear path) of "standing on the shoulders" is not valid, but the logic involved is NOT an "either-or" type of logic.

If one looks at the history of innovation one quickly realizes that many (and especially many of the revolutionary) innovations do NOT follow such a linear path.

I also reject the logic of your statement of " So de facto designing-around will happen even in the absence of a litigation risk management strategy" as that thought does not support the larger theme here, and simply sounds in the strawman of "innovation will happen without IP systems." I say strawman because the focus is not one of such "will or will not happen," but instead is one of having systems that facilitate any such eventualities and bring them into being faster.

The Pigs said...

One more though about "re-inventing the wheel"....

This happens when patent systems are held in disdain, or that the function of those systems (to promote - with the often neglected understanding of that term to include the advertising notion of promotion [which happens when people focus TOO MUCH on the linear "get better" meaning of promote]) are not executed properly.

This is a problem with execution - NOT a problem with the idea of having patents.

I know that in the U.S. one such problem with execution is the treble damages rule for awareness of patents. I have had large corporations tell me that they dissuade their employees from knowing about existing patents and patent applications expressly because of this treble damage rule. We have a market force in direct opposition to the stated goal of the system - and we insidiously lean to blaming the system, instead of the choice of the market to be purposefully blind.

I would affirm a suggestion that I have heard of making the treble damage the default - thereby prompting a much more vigorous desire to be aware of what is patented (which is in line with the function of the patent office to promote in that oft-neglected understanding of the term).

Nicola said...

Thanks for your comments - all very interesting points.

I don't disagree with any of them, I am just pointing out that a lot of arguments around IP are based on theories, anecdotes and one-off cases. These all provoke really interesting questions, but that doesn't change the fact that fundamentally our understanding of the IP system as a whole lacks empirical basis. These are the questions we should be asking!

Anonymous said...

"A lot of arguments" from those that don't understand R&D&IP, perhaps. I see this a lot at my place of employment where management with no research background (generally arts and business graduates) make decisions on investment in development projects. They believe (one of many beliefs) that a new pharmaceutical product can be 'knocked up' in a few months with all of their desired product characteristics being met first time. The clinical testing is viewed as a time-consuming hurdle that will ultimately be successful 85% of the time. (85% being a real figure often used.

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