Intellectual property jurisdiction strategies

Intellectual property jurisdiction strategies ‘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. The book concentrates on European procedural law in relation to intellectual property rights for which a European unitary title has been created (trade marks, designs, plant variety protection, patents). Therefore, it does not cover litigation strategies in the field of copyright or trade secrets, for instance. The book primarily focuses on procedural laws governing unitary titles since the author could not reasonably enter into the specificities of each national law. It does not address either in-depth jurisdiction issues arising in case the claimant or the defendant originates from a third country, as this would involve undertaking a comparative analysis of different jurisdiction rules. The author gives a practical overview of all the jurisdiction rules for the different intellectual property rights. His analysis is wide-ranging and considers all the procedural aspects of unitary laws. Three litigation actions are particularly considered: infringement actions, non-infringement actions (where the infringer acts as the claimant and the rightholder as the defendant) and invalidity actions. Actions at administrative level (on oppositions or validity) as well as actions at court level not involving an element of infringement or preliminary injunctions are however not been analysed. The author performs a comprehensive comparative analysis of the different legislations available to the plaintiffs and the defendants, including through a perceptive analysis of the interplay between the specific rules in the field of intellectual property and the European legislations on private international law. This is especially valuable for readers who want to keep abreast of the latest changes introduced by new legislations such as the European Trade Mark Regulation (EU) 2015/2424 or the Brussels I Regulation recast (REGULATION (EU) No 1215/2012). The author first examines the different jurisdiction instruments as well as the number of jurisdiction rules available to the plaintiff. He then explores the nature of the different jurisdiction rules. Then, the conditions of the defendant's domicile rule are addressed for the different intellectual property rights. The author conducts a similar analysis for the establishment rule and the claimant's domicile rule. He continues by exploring the multiple defendants’ rule and the forum delicti rule before studying more specific procedures such as central division rules or the exclusive jurisdiction rule. The book lends itself to practical use for its readers. A comprehensive table summarizing the different options available to claimants and defendants, either acting as rightholders or alleged infringers, is presented at the end of every chapter. For each jurisdiction rule, it will allow the reader to quickly grasp the key elements to build an efficient jurisdiction strategy. In addition, the author provides for concrete examples throughout the book to illustrate the practicalities of each rule. This book gives an expert overview of jurisdiction rules in the field of intellectual property and stands as a must-have for any practitioner, student and scholar interested in international intellectual property litigation. This guide will definitely be a strategic asset in everyone's library. Footnotes 1 Sun Tzu, The Art of War, Translation Father (Père) Amiot, 1772. © The Author(s) 2018. Published by Oxford University Press. All rights reserved. This article is published and distributed under the terms of the Oxford University Press, Standard Journals Publication Model (https://academic.oup.com/journals/pages/about_us/legal/notices) http://www.deepdyve.com/assets/images/DeepDyve-Logo-lg.png Journal of Intellectual Property Law & Practice Oxford University Press

Intellectual property jurisdiction strategies

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Publisher
Oxford University Press
Copyright
© The Author(s) 2018. Published by Oxford University Press. All rights reserved.
ISSN
1747-1532
eISSN
1747-1540
D.O.I.
10.1093/jiplp/jpy040
Publisher site
See Article on Publisher Site

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. The book concentrates on European procedural law in relation to intellectual property rights for which a European unitary title has been created (trade marks, designs, plant variety protection, patents). Therefore, it does not cover litigation strategies in the field of copyright or trade secrets, for instance. The book primarily focuses on procedural laws governing unitary titles since the author could not reasonably enter into the specificities of each national law. It does not address either in-depth jurisdiction issues arising in case the claimant or the defendant originates from a third country, as this would involve undertaking a comparative analysis of different jurisdiction rules. The author gives a practical overview of all the jurisdiction rules for the different intellectual property rights. His analysis is wide-ranging and considers all the procedural aspects of unitary laws. Three litigation actions are particularly considered: infringement actions, non-infringement actions (where the infringer acts as the claimant and the rightholder as the defendant) and invalidity actions. Actions at administrative level (on oppositions or validity) as well as actions at court level not involving an element of infringement or preliminary injunctions are however not been analysed. The author performs a comprehensive comparative analysis of the different legislations available to the plaintiffs and the defendants, including through a perceptive analysis of the interplay between the specific rules in the field of intellectual property and the European legislations on private international law. This is especially valuable for readers who want to keep abreast of the latest changes introduced by new legislations such as the European Trade Mark Regulation (EU) 2015/2424 or the Brussels I Regulation recast (REGULATION (EU) No 1215/2012). The author first examines the different jurisdiction instruments as well as the number of jurisdiction rules available to the plaintiff. He then explores the nature of the different jurisdiction rules. Then, the conditions of the defendant's domicile rule are addressed for the different intellectual property rights. The author conducts a similar analysis for the establishment rule and the claimant's domicile rule. He continues by exploring the multiple defendants’ rule and the forum delicti rule before studying more specific procedures such as central division rules or the exclusive jurisdiction rule. The book lends itself to practical use for its readers. A comprehensive table summarizing the different options available to claimants and defendants, either acting as rightholders or alleged infringers, is presented at the end of every chapter. For each jurisdiction rule, it will allow the reader to quickly grasp the key elements to build an efficient jurisdiction strategy. In addition, the author provides for concrete examples throughout the book to illustrate the practicalities of each rule. This book gives an expert overview of jurisdiction rules in the field of intellectual property and stands as a must-have for any practitioner, student and scholar interested in international intellectual property litigation. This guide will definitely be a strategic asset in everyone's library. Footnotes 1 Sun Tzu, The Art of War, Translation Father (Père) Amiot, 1772. © The Author(s) 2018. Published by Oxford University Press. All rights reserved. This article is published and distributed under the terms of the Oxford University Press, Standard Journals Publication Model (https://academic.oup.com/journals/pages/about_us/legal/notices)

Journal

Journal of Intellectual Property Law & PracticeOxford University Press

Published: May 9, 2018

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