A key risk for an intellectual property owner is an infringement action and a challenge to the validity of its intellectual property rights. For the alleged infringer, a validity attack is often the first line of defence. There are important choices to be made about when and where such attacks should be fought.
A key question concerns the extent to which a party who has made one challenge is precluded from making a second and, if so, where should the first shot be fired?
An attack on validity of intellectual property rights can potentially be fought in a number of forums, particularly where the right (patent, design, trademark or copyright) is a pan-European one. There are a number of matters to be considered:
- Speed. Proceedings before the relevant registry are generally simpler than court proceedings but, particularly in the centralised European registries for European patents and Community trade marks (CTMs), can be very slow.
- Cost. Generally speaking, registry proceedings are relatively cheaper, in part because parties choose to run them with less investment as a single early attack. However, if later proceedings are likely, registry proceedings will add an additional layer of cost.
- Finality. To what extent can the issues be re-opened in other forums?
- Enforceability. A Europe-wide challenge may invalidate the whole European portfolio. However, an early national decision can have a persuasive impact on other jurisdictions or lead to settlement.
The options for attack depend on the intellectual property right challenged. For example:
- Trademarks. Generally speaking, a two tier system applies to trademarks: an application to register a mark can be attacked before grant and a subsequent challenge can be brought against the registered mark (either in response to an infringement action or independently). A UK trademark can be opposed before grant in the UK Intellectual Property Office (UKIPO) and challenged after grant in either the UKIPO or the courts. For CTMs, an attack can be brought in a national court (either in relation to validity only or as a counterclaim to an infringement allegation) or before the European registry, the Office for Harmonisation in the Internal Market (OHIM), and the result may invalidate the mark across Europe.
- Patents. Patents can generally only be challenged after grant but may be challenged before the European registry (the European Patent Office (EPO)), the national registry (the UKIPO) or before a national court. However, only the EPO can invalidate Europe-wide patent rights. In contrast with trademarks, once past the EPO post-grant opposition phase, the European patent effectively becomes a bundle of national patent rights in the countries designated by the patent applicant: in the UK, the patent will be identified as an EP(UK). Its validity can then only be challenged at national level (in the UKIPO or the courts) and, unlike a CTM, it is no longer vulnerable to central attack. Where a European patent is challenged before the EPO in unsuccessful opposition proceedings (which, in contrast to trade mark opposition proceedings, are post-grant opposition proceedings), the patent can subsequently be challenged before the national courts. In this case, however, the attack in the national court only affects the national patent and no further central attack on the European patent is available.
The above are just two examples of things that must be considered. Eventually a lot will depend on the type of issues and the specific case so early discussion of your options with your legal adviser is crucial.