Intellectual property jurisdiction strategies

Abstract

‘On the surface of the earth all places are not equivalent; there are some that you must flee, and others that must be the object of your research; all must be perfectly known to you’.1 Before engaging in any litigation each practitioner should ask himself where and how to initiate a dispute. The choice of jurisdiction will have an impact on the applicable law, which itself can be an essential element to win a case. It will determine the litigation venue, the language of procedure as well as logistics such as translation of documents which are also essential for comfort and time and cost management. All in all, the choice of jurisdiction might be decisive for the plaintiff and the defendant if they know how to use it to their advantage. The book Intellectual Property Jurisdiction Strategies explores the different procedural strategies when rightholders and practitioners are litigating on the basis of a national or a unitary title. With the development of complex intellectual property portfolio strategies involving several titles in different countries, jurisdiction tactics have become highly topical and timely for intellectual property litigation in Europe and elsewhere. With the creation of the European Union Trade Mark and Community Design systems, practitioners in the European Union have been used for more than a decade to set up strategies depending on the unitary or the national nature of the rights at issue. The creation of the unitary patent and the Unitary Patent Court will also expand the playing field of patent practitioners and will offer them new parameters to explore innovative litigation strategies. Already today, one of the most striking example of jurisdiction strategies has occurred in the field of patents, notably in the dispute between Apple and Samsung, with Samsung successfully choosing to bring an action for a declaration of non-infringement against Apple in the UK, where it had domiciliation and where courts have unrestricted jurisdiction.