Evidence is one of the most vital elements when intellectual property (IP) infringement disputes come into play. In this installment of our "Lifecycle of a Smart Idea" series, which is dedicated to helping you maximize opportunities and minimize risk when taking your innovative ideas to the global market, members of Gowling WLG's global IP team examine the main issues that can arise in a patent dispute, such as:
- Who has the onus on each main issue?
- What are the evidentiary burdens?
- What level of proof is needed?
- What expert evidence is needed?
This webinar allows attendees to hear from members of our IP team in Canada, the UK, Europe and China, as well as from a US patent arbitrator.
Speakers
- Ron Dimock - Partner, Gowling WLG
- Selena Kim - Partner, Gowling WLG
- Céline Bey - Partner, Gowling WLG
- Laurent Massam - Partner, Gowling WLG
- William Needle - Mediator & Arbitrator, JAMS
- Elliot Papageorgiou - Head of IP Strategy in China, Gowling WLG
- Jamie Rowlands - Partner, Gowling WLG
*This program is eligible for up to 1 hour of substantive CPD credits with the LSO, the LSBC and the Barreau du Québec, and may be eligible for up to 1 hour of CPD/CLE credits in other jurisdictions. If you require a certificate please contact Shannon Wadsworth.
Watch previous episodes
This is the 16th installment in our Lifecycle of a Smart Idea series, dedicated to helping you maximise opportunity and minimise risk when taking innovative ideas to the global market. Watch more from the series »
Helpful tips about evidence in patent cases
Selena Kim & Laurent Massam - Partners, Gowling WLG, Canada
Under Canadian patent law and procedure, a patent's claims are to be interpreted in the same way for the purposes of an infringement and validity analysis. This can be a tricky balancing act that requires early consultation with your client and experts. As such, it's important to hire your expert and have these discussions as soon as possible. This tip also applies in the US, as the claims construction process is crucial but comes early in the procedure.
William Needle - Mediator & Arbitrator, JAMS, U.S.
In the US, formal litigation can be expensive and time-consuming. If you are a defendant, consider beginning the inter partes review process early, as it may prevent the need for extensive investment in litigation. If you're involved with patent litigation in the US, it is also crucial to be familiar with the "Markman" patent claim construction procedure.
Jamie Rowlands - Partner, Gowling WLG, UK
In the UK, the performance of your expert at trial is particularly important. Be sure to secure top-notch experts early, ideally, before the opposing side retains the best available experts in the field.
Céline Bey - Partner, Gowling WLG, France
Carefully prepare your infringement seizure in France. It remains the basis of the patent infringement action, and can also be very useful for proceedings in other jurisdictions. The choice of a bailiff and someone with experience in seizure is crucial, as the procedure is rigorous with many potential pitfalls. The order authorizing the seizure must also be drafted with the utmost care. Many seizures are annulled by the courts due to non-compliance with the procedure, in which case the plaintiff's evidence is lost (via infringement and damages) and the action itself may be called into question.
Elliot Papageorgiou - Head of IP Strategy in China, Gowling WLG, China
File an infringement complaint with an administrative authority, such as a local IP Office. Although they may be reluctant to find infringement, they will nevertheless undertake an inspection process. Then, ask the court in subsequent infringement proceedings to requisition the IP Office file and any related evidence.
Have a question about patents?
The global Gowling WLG patents team enjoys an unrivalled international reputation for industry insight and effective representation on all aspects of patent work. Should you have any questions or would like to discuss this further, you can contact any member of our experienced legal team.
Read the original article on GowlingWLG.com
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
