Litigation / Foreign Patent Litigation / Civil and Common Law Systems

Civil and Common Law Systems

Introduction

Much has been written about the differences in philosophy between common and civil law traditions. While in some areas of the law (most notably those relating to equitable concepts such as trusts and differences between beneficial and legal ownership), the differences in philosophy can lead to significant differences in approach to substantive law, such differences in philosophy have little significance in the patent field.

In recent years, the other major traditional distinction between the common and civil law systems, namely the role of precedent has tended to become less significant. First because common law courts have developed skills in distinguishing earlier judgments of which they disapprove. Second, even in the civil law system, precedents do have a value. In such leading civil law countries as France and Germany courts try to ensure that there is some certainty in the law and that the same issue will be decided in the same way and in Germany, although not in France, it is common for earlier decisions to be referred to in a judgement. Nevertheless, the civil law tradition precludes its judges from establishing broad principles of law in the absence of legislation, a possibility that is still at least theoretically open in the common law system.

Applying a broad brush, the world can roughly be divided into those countries that follow common and civil law traditions. For the purpose of a consideration of intellectual property matters, the common law traditions are found in most present and former members of the British Commonwealth; subject to caveats that in South Africa and Quebec the basic legal tradition is civil law (Roman-Dutch and French respectively) although intellectual property laws and their application follow the common law pattern. In the rest of the world civil law traditions apply. Outside their home in Western Europe civil law traditions have been adopted as a result of a colonial legacy as in Latin America and francophone Africa, as a result of a deliberate act of copying as in Turkey, Japan, Egypt and Eastern Europe or as a result of a combination of both, as in Taiwan and Korea, where the Japanese imposed their own legal system (copied from the Germans) during their period of colonial domination (Taiwan 1895-1945, Korea 1910-1945). It should, however, be noted that within the civil law family there are difference between whether the predominate influence was that of France (most "latin" countries) or of Germany (most East Asian countries that have adopted a civil law tradition).

Patent Law Specifics

This is not the place for a detailed discussion of the philosophy underlying the patent system, but it is worth remembering that the basic approach to patent law still differs between the member states. Thus, in France and England the theory that a patent represents a contract between society and the inventor is paramount, and any one charged with patent infringement can claim for himself the role of protector to society's right to do what it likes unhindered by patents which should never have been granted. The German view is more paternalistic. Patents are granted because the state has decided, in its wisdom, and as part of the exercise of its power as parens patriae, that good will flow from their grant. This role is not lightly to be usurped by a member of the public, especially if he is actually infringing the right granted by the state. This, is why in Germany a patent's being invalid is not in itself a defense to a claim of patent infringement.

In the patent field the differences between the two traditions make themselves felt more clearly in matters of procedure than substance.[1] It is traditional in the common law world for judges to be appointed from among the ranks of practicing advocates. In general, in the civil law world (apart from Quebec and South Africa where common law traditions have penetrated to some extent), judges normally have little or no practical experience in advocacy. Entry to the judicial branch of the civil service normally occurs shortly after a candidate has obtained his or her law degree and starts with appointment to a lower court with progression to higher courts as the judge becomes more experienced. A concomitant of this "civil service" approach to the role of judiciary is the widespread use of written materials and the absence of traditional common law tools, such as discovery or questioning of witnesses before the court in litigation procedures, in many civil law countries. In most countries in continental Europe, for example, although the procedure may allow the taking of evidence from a witness such evidence will be given little weight, and if given by someone related to a party to the proceedings will probably be discounted entirely.

Examples of the Practical Differences arising in Different Systems

Some of the results of these differences in basic approach to the law will show through as we consider questions of patent litigation.

Some Countries provide for separate trials for infringement and validity

Preliminary Injunctions

In some countries, for example, preliminary injunctions are relatively easy to obtain, in others they are unavailable, at least in practice, in patent matters.[3] The GATT TRIPS Agreement should increase the availability of provisional remedies. The agreement specifically provides that judicial authorities must have the authority to act promptly to prevent infringement from occurring and/or for preservation of evidence and in appropriate circumstances to act even without giving the alleged infringer the right to be heard. In such cases it is, however, necessary that the unheard party be given an early opportunity to challenge any remedy that has been ordered. Such remedies may be subject to the right holder having to indemnify any party who has been wrongfully enjoined or restrained. These factors may well affect the strategy adopted.

Discovery

American style discovery is unknown outside the United States. However, discovery on a more limited basis is normal in other common law jurisdictions, although outside Canada where limited deposition practice exists, depositions are unusual and each party may probably have the burden of producing all relevant documents without having to be asked by its opponent. It should also be noted that in general it is typical in patent infringement actions for questions of liabilities and the amount of any damages to be awarded to be dealt with separately the trial on questions of liability commonly resulting in an order for an inquiry into damages. A result of this is that the discoveries phase of the main patent action rarely involves any investigation of financial issues. A useful tool that may assist in obtaining evidence in many common law countries is the Anton Piller order whereby a court can order a search of a potential defendant's premises if the patentee can show a reasonable fear that evidence may be destroyed. Additionally the saisie procedure in France and Belgium and the description procedure in Italy provide effective means of obtaining court-ordered inspections (without warning) of a prospective defendants premises. In Germany and countries whose legal system is modelled on that of Germany, such as Austria and Japan, however, means for obtaining evidence from one's opponents files or premises are so limited as to be of little or no practical help. The GATT TRIPS Agreement may help in this respect since it requires member states to provide means whereby under appropriate circumstances a judicial tribunal can order production of evidence.

Form of Trials

Outside the United States, there appears to be no countries in which a jury trial is likely for a patent action, although in some it remains a theoretical possibility. In some countries, such as Italy or Belgium, it is common for the court to appoint an expert to advise on the issues. In others, such as England, the judges themselves may be patent specialists. In some countries, for example, Japan, there is no formal "trial" at all in the sense we understand it, the judge reaches his conclusion after a series of hearings dealing with various aspects of the case. In general it should be noted that in civil law jurisdictions it is much more likely than in those following the common law tradition for the court itself to adopt an active fact-finding role asking for specific factual information from the parties.

Scope of Protection given by Process Patents

On the other hand, the law may sometimes help the foreigner, for example, by providing that a process patent is infringed by sale of the product of the patent. For countries that are members of the Paris Convention, Article 5 quarter provides that there should be no discrimination in the application of such provisions between products manufactured in the country and those manufactured abroad. The GATT TRIPS Agreement provides that in patent infringement trials involving patents granted for processes there must be a presumption that a product that could have been made by the process was made by the patented process if either a) the product itself is new or b) there is a substantial likelihood that the product was made by the patented process and after reasonable attempts the patentee has been unable to ascertain exactly what process was used. Since few countries outside the U.S. have discovery proceedings similar to those available to parties in U.S. litigation and obtaining proof of infringement of a process patent is often very difficult in foreign countries, this provision should help to increase the value of process patents in such countries.

Early Publication and Interim Protection

In some countries, patent applications are published automatically without examination having been completed, for example 18 months after the priority date. In most of these, it is possible to obtain compensation from others for use of the invention between the publication date and the actual grant of the patent. Although in some cases, it will not be possible to bring proceedings until after the grant of the patent. In some cases, it may also have been necessary to give a warning to the infringer of the existence of the published application.

In particular, compensation of this type is possible in:

It is worth noting that Article 29 of the Patent Cooperation Treaty specifically provides that the publication of the PCT Application shall have the same effect as a national publication, although translation of the international publication into the local language may be required.

Personnel Involved in Patent Litigation

One further preliminary point should, however, be noted. This is that in general there is no foreign equivalent of an American patent attorney who deals both in prosecution before the Patent Office and in patent litigation. In most foreign countries a separate profession of patent agents or their equivalent exists, whose role is prosecution of matters before Patent Offices. They do not normally have a right of audience before the courts. Similarly, general lawyers do not normally become involved in proceedings before the Patent Office. In countries such as the United Kingdom, some states in Australia and Ireland a further complication exists in that general lawyers are split into two professions namely barristers and solicitors. The former are essentially trial lawyers, but may be turned to for advice on special matters. The latter deal with non-contentious matters and also provide a support staff for the barrister in litigation. Barristers can only be retained through solicitors. In most industrialized countries, there are a number of general lawyers who specialize in intellectual property matters. They can, however, be fewer in number than one might expect and therefore when contemplating litigation abroad it is desirable to pick a team as early as possible to ensure having the best people available.

Whatever the availability of attorneys may be, it will not be possible to retain them on a contingency fee basis. In many countries such a means of payment would in fact be illegal. Lawyers abroad are generally paid either on the basis of time spent, the value of the case or a combination of these.