a predictable blow to those wanting to decrease the costs of international
intellectual property litigation, the US Court of Appeals for the Federal
Circuit delivered its long-awaited judgment in Voda v Cordis on 1 February 2007. By a 2:1 majority, the Court refused to
allow a US Court
to determine patent infringement in relation to corresponding Canadian,
French, German and United
it would substantially reduce global litigation costs, the creation of
appropriate international agreements to allow multi-jurisdictional
determination seem unlikely for the foreseeable future. This is underscored by recent developments
in Europe under the Brussels Regime and in
relation to the well intentioned but ill-fated European Patent Litigation
Property litigation, especially when related to patents, is notoriously
expensive and time consuming – see for example â€œValue for money in global patent litigation: relative cost
& time to 1st judgment in 8 key jurisdictionsâ€.
One potential way to minimize cost
would be to allow the courts of one jurisdiction to determine infringement of
a group of related patents from a number of jurisdictions, in the same
Voda v Cordis
is a case in which an inventor, Mr Jan Voda, a medical practitioner sought to
do just that. His patents concerned
his cardiology catheter invention and he attempted to enforce corresponding
patents granted in the USA,
Canada, France, German and the United Kingdom in a single US law
suit. Click here for
a copy of the CAFC judgment.
for those wishing to reduce international patent litigation expense, Mr Voda
lost at the Court of Appeals for the Federal Circuit. However, based on the Newman dissenting
judgment, there seem be to be reasonable prospects of an appeal.
It seems correct to me that since
an intellectual property right is a jurisdiction-based monopoly, then
infringement should be determined by the State which granted it. Having said that, proponents
in favour of Mr Voda’s case are quick to point out that the European
system allows for a degree of cross-border determination of IP issues under
the Brussels Regime (see for example my article â€œEuropean intellectual property cat-and-mouse: ECJ clarifies
jurisdiction in patent disputesâ€). However,
as the article points out, even in Europe,
the facts have to be so closely related that such collective actions seem to
have little future under the current regime.
Of course, the reason that this has
been possible in the past in Europe is
because the relevant European countries are signatories to the Brussels
Although the suggestion is
controversial one could imagine that by amending the Brussels regime, and indeed creating a new
international convention, one could in the future see collective intellectual
property actions being litigated once for multiple countries.
All of those who have been
following the ill-fated tale of the European Patent Litigation Agreement will know that the
chances of such international agreements being agreed, much less coming in to
effect at any time in the foreseeable future must be extremely low.
commentary, click here.
Crouch’s Patently’O blog and discussion, click here.