International Enforcement Practices and Procedures
In today’s global economy, you will likely find yourself in the position of having to consider whether to enforce your IP rights outside of your own country. Given that the legal systems in other countries can be very different from your own, you would need to think strategically about the varied aspects of international IP practices and procedures.
If you decide to go to court you must be aware of the vagaries of international enforcement practices and procedures, anticipate any strategic differences and be prepared to deal with them.
Example 1: US Court System
For example, in the US court system, IP cases are often heard before a judge and a jury. In Canada, IP cases are heard before
a judge alone. Jury trials have implications for costs and outcomes that differ from trials before a judge
alone. You should make yourself aware of differences in practices and procedures in every country in which
you want to enforce your rights. This knowledge will be especially useful if you find yourself being sued
and having to defend a lawsuit in a foreign country but it will obviously also serve to define your own enforcement
strategy if you do have to sue an infringer.
If, for example, a particular jurisdiction has a record of bias against a foreign company that initiates an IP lawsuit, you need to be aware of this and determine your enforcement strategy based on that knowledge. Or, as is the case in some US State courts, which have so-called “rocket dockets”, a trial date may be set within a very short period of time. If you are being sued in one of those jurisdictions, you might be at a strategic disadvantage because the speed at which you have to act in order to defend yourself can be very disruptive to your business.
Example 2: Germany
In Germany, it is not uncommon for parties in patent lawsuits to use what is known as a bifurcated system to their strategic advantage. In such a bifurcated system, patent infringement proceedings and invalidity (nullity) proceedings are split and are determined in different courts on different schedules. Frequently, infringement cases are decided before the invalidity proceedings are even started. This system is particularly attractive for plaintiffs in patent cases where their patents are of questionable validity because they can potentially stop a defendant by way of an injunction on the infringement claim. Even though the defendant may ultimately be successful in the invalidation proceedings and therefore be found non-infringing, the defendant may be motivated to settle the case since it will not want to face the threat of its business being shut down, even temporarily, in a sizeable market.