Tech Transfer eNews Blog

Foreign courts may offer cheaper, faster alternative in patent infringement litigation


By Jesse Schwartz
Published: February 19th, 2020

As anyone who has experienced it knows, engaging in a patent infringement fight in the U.S. is a serious undertaking. It’s expensive, time consuming, and can distract an organization from its core business. But when a valuable invention is being challenged, there are only a few routes a university can take. Litigation is one of the roughest, but there are ways to reduce the pain and even gain leverage over more well-heeled adversaries — and it may involve foreign jurisdictions.

According to the American Intellectual Property Law Association’s 2019 economic survey, infringement litigation seeking between $10 million and $25 million in damages can cost nearly $1.4 million and an additional $2.7 million if the case goes to trial and is appealed. For cases where more than $25 million in damages are at issue, litigation costs start at $2.6 million with trial and appeal costs at $4 million. For most universities, that’s a bitter pill to swallow with no guarantee of success.

However, thanks to our global economy and patent infringement remedies available in other countries, as well as some creative lawyering, you may have an alternative and/or complementary path to expensive, slow-paced U.S. litigation.

Intellectual property attorney M. Andrew “Drew” Woodmansee, with Hooper, Lundy & Bookman, P.C. in San Diego, says that taking your case to a foreign court can offer some significant advantages, but the tactic is not entirely without risk. He has used the approach with success, but Woodmansee says you want to be sure you’re on firm ground before you start drafting complaints for foreign courts. Here are four questions to ask first, he said:

  1. Do you know what you’re trying to achieve and will this get you there? First, you want to understand your university’s objectives in bringing litigation. For example, are you trying to weaken a competitor? Has a company challenged your patent in the U.S. and you want to subject them to a multi-front battle? Or, as is the case for most TTOs, are you looking for a less expensive and more patent-friendly venue that can serve to bring your adversary to the negotiating table?
  2. How strong is your patent portfolio? You want to be confident in the strength of your portfolio because a weak collection will “serve you poorly in other jurisdictions,” he noted.
  3. What can you learn from U.S. discovery that will guide you overseas? You may want to use the discovery process in the U.S. to give you information that will direct you to the most appropriate foreign jurisdiction, Woodmansee said. As examples, you can learn where products are produced, where materials come from, and where most of their products are sold. “This helps you determine where your opponent is most vulnerable,” he said, “and where you can get the biggest bang for the buck.”
  4. Consult the right attorney. Woodmansee underscored the importance of having qualified counsel who is experienced and intimately familiar with the IP law of foreign jurisdictions.

A detailed article on the pros and cons of filing an infringement action in a foreign jurisdiction appears in the February issue of Technology Transfer Tactics. For subscription information, click here.

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