FAQ
Litigation
Clients frequently ask us the following questions on the subject of litigation:
1.
A competitor is infringing our patent. Do we absolutely have to bring an action against it in court, or what else can we do?
An infringement action gives rise to not inconsiderable costs and may poison the atmosphere between the parties at an early stage. In most cases it is advisable to send the infringer, at least initially, a so-called request to show authorization, or else to serve a warning letter including a draft cease-and desist undertaking.
If none of this works and the commercial implications of the patent infringement exceed the expected costs of court proceedings, the next step is generally an infringement action.
Which approach provides the best prospect of success depends on the individual case. We are happy to provide you with advice on an individual basis.
2.
A patent is being infringed in a number of countries at the same time. In which country or countries should court proceedings be initiated?
Third parties can be prohibited from making any commercial use of the invention by means of the patent. This includes its manufacture, but also its use, advertising, marketing etc.: thus, when choosing in which country to bring the action, both the place of manufacture and the markets should be taken into account.
Making an intelligent choice of the jurisdictions in which to bring actions which have the greatest chances of success is also known as forum shopping. By this means it is often possible to achieve decisive advantages and to increase the pressure on the opponent, without actions having to be brought in a large number of countries.
For example, in certain relevant jurisdictions judgments of nullity can be obtained within a very short period of time, and these can also have a highly prejudicial effect on proceedings relating to prohibitory injunctions in other countries.
Jurisdictions which have helpful requirements as far as the gathering of evidence (which can then in turn be used in other jurisdictions) is concerned may also be of interest.
An assessment on an individual basis is essential. We are happy to advise you.
3.
Are there time periods within which an infringement action must be brought?
No. But you should not wait too long before bringing an infringement action because otherwise there is a danger of what is known as forfeiture: if a patent proprietor has been aware of an infringement but has done nothing about it, it may be that it is no longer able to bring any actions. No time limit is laid down in statute for this; it depends on the circumstances of the individual case.
We are happy to advise you on this issue. Please get in touch with us.
4.
We suspect that a competitor is carrying out a process which is protected by our patent. However, we are not completely sure, as we of course do not have access to its production site. Are we still able to enforce our patent?
Process patents such as these are not paper tigers, but rather can indeed be successfully enforced. However, preparatory steps are often required:
InSwitzerland, what is known as a precise description of the allegedly infringing process can be obtained. An interim measure for the preservation of evidence is also possible.
The situation is similar in Germany. There too, the patent proprietor may under certain circumstances have a right to see documents (for example design drawings) or to inspect things (for example production sites) if he can provide prima facie evidence that there is a sufficient probability that the competitor is infringing the patent. In addition, an entitlement to see bank, tax and commercial documents may arise, and this can provide important information about the scope of possible claims for damages. These entitlements can also be asserted by way of an interim injunction.
Which approach has the best prospects of success depends on the individual case. Please get in touch with us.
5.
Approximately what costs should be expected in infringement proceedings?
InSwitzerland, costs of approximately CHF 50,000 to CHF 100,000 should be expected for infringement proceedings at first instance. On top of this there are not inconsiderable court fees which depend on the value in dispute (where the value in dispute is CHF 1,000,000, the court fee is approximately CHF 60,000).
Similar costs also arise inGermany. If a separate nullity action is additionally brought inGermany, costs of approximately CHF 50,000 to CHF 100,000 can again arise.
In bothSwitzerlandandGermany, the costs arising from the proceedings referred to can be recovered, but only in accordance with the tariff. Experience shows that the actual costs are hardly ever fully recovered. In the event of losing the case, the opposing side’s costs must be paid, likewise in accordance with the tariff.
InGreat Britain, the costs are usually considerably higher, and are an estimated CHF 500,000 and more. There too, the costs are recoverable.
The sums are even higher in the USA: there, costs of approximately CHF 1,000,000 can be incurred. It should also be noted that in the USA the costs that have been incurred are not recoverable: even if the infringer can prove that that an allegation of infringement was unfounded, it must pay the costs of the litigation.
Do you have any more questions?
Please get in touch with us:
|
Telephone: |
+41 (0)71 913 95 55 |
|
|
Fax: |
+41 (0)71 913 95 56 |
|
|
E-mail: |