Insights on Patent Litigation Strategies

Our Intellectual Property Working Group (IPWG) discussed best practices in “IP Management and Patent Litigation Strategies” in the online workshop held on Mach 23rd.

The experts shared insights from the IP management strategy of a multinational company like Pirelli and provided practical suggestions on how to prepare for building a litigation case in China. What to expect from the process? The workshop opened a dialogue on different IP management systems in Europe and China providing a platform for an exchange of local expertise between our companies.

Mr Sergio Lasca, Head of IP, Patents and Know-How at Pirelli, explained how Pirelli deals with its IP in the Chinese market and globally. He highlighted how the Joint Venture can help in monitoring the IP market in China.

“IP in China is always an interesting topic: many figures are impressive and all the various procedures (including those in litigation) need to be carefully understood and digested with open mind, trying not to automatically apply the usual mindset used for other Countries. With particular reference to IP protection in litigation, Italian Companies have to be prepared to plural litigations sometimes, which is something we are not so habit. Interesting to learn that also administrative litigation can be triggered, for simpler cases (such as design infringement)”. – Sergio Lasca, Pirelli

Mr Fabio Giacopello Partner and Foreign Lawyer at HFG Law & Intellectual Co. Ltd, outlined statistics and trends in patent litigation. Before moving into the litigation process, he indicated the importance of checking if the company is infringing IPRs owned by others.

“When comparing the European judicial systems to the Chinese systems in relation to patent litigation, the first -and probably biggest difference that I shall highlight- is the difficulty in the evidence collection phase. Also, winning rates for patent owner are high in China, but attention to “discount” from those rates the invalidated patents.” – Fabio Giacopello, HFG Law

Mr Shenjun (Eric) Chen, Head of SPTL’s Litigator, showed how companies can deal with the patent litigation processes, from how to collect evidence to where to institute the case, and explained the damages compensation a company can obtain in different scenarios.

“The China IP courts are the proper jurisdictional venue for IP enforcement action for international right holders.  The winning rate for patent infringement litigation is impressive, which however shall bestow more efforts and expertise in the proceedings.” – Eric Chen, SPTL.