FORUM SHOPPING IN PATENT
CASES AND RECENT CHANGES
(BASED ON THE UPC)
SOFIA LOPATINA
TABLE OF CONTENTS
1.
2.
3.
4.
5.
Introduction
Overview of Patent Law in Different Jurisdictions
Opportunities and Motivation
Conclusion
References
1. INTRODUCTION
• “The current European system and the U.S. system have
seen a rise in forum shopping over the past couple
decades, leading to increased appeals, raised litigation
costs, reduced certainty for litigants, and the overconcentration of patent cases in just a few forums. This
rise of forum shopping in the U.S. and Europe provides
valuable lessons for the Unified Patent Court’s (UPC)
proponents as the UPC moves toward implementation.
A comparison of the UPC with the U.S. and European
systems reveals that the UPC, in its present form, will likely
face similar problems with forum shopping.”
Brian Jacobsmeyer
2. OVERVIEW OF PATENT LAW IN
DIFFERENT JURISDICTIONS
• Although the U.S., the current European system, and
the proposed UPC have similar rules governing
patentability of inventions, there are several basic
differences.
1. Types of patents
2. Forums for litigation
3. Appeals
2.1. TYPES OF PATENTS
USA
EU (currently)
1) Issued by the USPTO; 1) European Patents
issued by the EPO,
2) National Patents
issued by the
individual country’s
patent office;
UPC
1) European Patents
(mainly unchanged),
2) National Patents
(not changed),
3) Unitary Patent (a
new type of patent
with
unitary
effect
across all member
states of the UPC.
2.2. FORUMS FOR LITIGATION
USA
EU (currently)
UPC
1) U.S. district courts
(patent infringement
suits),
2) The International
Trade
Commission
(infringement suits for
imported goods),
3. USPTO (under the
America Invents Act,
several
invalidation
proceedings that may
be concurrent with
pending district court
litigation);
*forum shopping also
already exists (David
Kline)
1)
National
courts
(over
European
Patents and National
Patents),
2.
The
EPO
(invalidation hearings
for a short time after
European Patents are
issued);
1)
National
courts
(over National Patents,
and over European
Patents
temporarily
during
a
transition
period),
2.
The
EPO
(invalidation hearings
during the transition
period),
3.
The
new
UPC
(exclusive jurisdiction
over the new Unitary
Patent, over European
Patents
after
a
transition period).
2.3. APPEALS
USA
EU (currently)
UPC
1)
The
Court
of 1) Generally within 1) A single court of
Appeals
for
the each national system; appeal that is part of
Federal Circuit,
the UPC.
2) rarely, the U.S.
Supreme Court;
3.1. OPPORTUNITIES AND MOTIVATION
• Overall, opportunities for forum shopping are:
USA
EU (currently)
UPC
High but decreasing,
sue
to
strongly
permissive jurisdictional
rules but moderately
permissive venue rules
after TC Heartland;
Moderate,
due
to
moderately permissive
jurisdiction
rules
tempered
by
territoriality of invalidity
and
the
Shevill
doctrine;
Very high, due to very
strongly
permissive
jurisdictional
rules
(elimination of Shevill
and territorial limits
over
remedies,
expansive
joinder
rules).
3.2.1. OPPORTUNITIES AND
MOTIVATION
• Motivation, due to application
substantive patent law:
of
different
USA
EU (currently)
UPC
Moderate
incentive,
esp. for USPTO, due to
slight
difference
among district courts
and
moderate
difference
between
district
court
and
USPTO proceedings;
Slight, due to slight or Slight or minimal, due
moderate difference to
likely
slight
between
national difference
across
laws;
different divisions.
3.2.2. OPPORTUNITIES AND
MOTIVATION
• Motivation, due
procedural law:
to
application
of
different
USA
EU (currently)
UPC
Moderate
or
significant,
due
to
moderate difference
among district courts
and
moderate
or
significant difference
between district court
and USPTO;
Significant, due to
significant differences,
particular for available
remedies;
Minimal (and greatly
diminished), due to
slight
or
minimal
differences
in
procedural rules and
single appeals court.
3.2.3. OPPORTUNITIES AND
MOTIVATION
• Motivation, due to varying expertise of judges and
predictability of proceedings:
USA
EU (currently)
UPC
Significant, due to
significant differences
among district courts,
and between district
court and USPTO;
Significant, or very
significant
due to
significant differences
(German
courts
dominate primarily for
this reason),
Minimal (and greatly
diminished), due to
minimal variance in
judicial competence
or local rules.
4. CONCLUSION
• Thus, the UPC’s effects on forum shopping will be
mixed:
• reduced motivation
• Increased opportunities;
• The UPC in order to reduce forum shopping should:
• tighten its jurisdictional rules,
• impose stricter rules concerning bifurcation of invalidity and
infringement,
• further unify substantive patent law.
5. REFERENCES
1. Brian Jacobsmeyer, Forum Shopping in Patent
Cases: Lessons for the Unified Patent Court, 25
Mich. Telecomm. & Tech. L. Rev. 131 (2018).
2. David Kline, Forum Shopping in Patent Cases: The
Michelson 20MM Foundation & Intellectual
Property Owners Education Foundation.
3. Marta Requelo, Is the Shevill Doctrine Still Up to
Date? Some Further Thoughts on CJEU’s Judgment
in Hejduk (C-441/13).
4. TC Heartland v. Kraft and the Resurrection of the
Place of Incorporation or “Regular and Established
Place of Business” Test for Patent Venue.
THANK YOU FOR YOUR
ATTENTION!