When approached by Massimo Sterpi and Thierry Calame to write the preface for this reference book, I was intrigued that such a manual was actually coming into being. My career in patent law has spanned more than 20 years and I have been involved in much multinational litigation. I have served as counsel to clients on both sides of the fence, as in-house counsel and as law firm counsel. Yet through that time the field has been remarkably devoid of basic treatises that outline the state of the law over multiple jurisdictions. In fact I am unaware of any approach to address even the simplest questions that practitioners in the field of international patent litigation may have concerning issues raised outside their own particular jurisdictions. Over the years we have been forced to research fields we do not know, or just to pick up the phone and rely on anecdotal evidence. In some jurisdictions we had to consult with counsel we barely knew. In others we were forced to access unfamiliar law libraries and read languages not our own to find answers to even the most basic questions.
It is clear that all these deficiencies are addressed through the completion of this text. Messrs Calame and Sterpi use a jurisdiction-by-jurisdiction method to approach each set of legal questions. Their format is laid out in a practical and easy-to-read fashion. Most importantly the authors address the essential questions surrounding international patent litigation. For instance, as each chapter opens the aspects of that particular jurisdiction’s patent laws start at the beginning: What are the principle sources of law and regulation relating to patents and patent litigation in the jurisdiction? How are conflict of law questions resolved? Which courts can you use? Are there alternative forums? These questions continue for each aspect of patent litigation. Each time the writers attempt to explain to us, the practitioners, exactly how the law is resolved in their countries, they do so in language easy to follow. They also take a coherent approach so that practitioners can use the text as a resource – primarily for strategy, but also to help explain to clients what to expect in a contemplated litigation.
One important aspect of the text is that Calame and Sterpi use their legal contacts for our benefit. They have assembled a stable of writers who are independently respected in their fields. Some of the individual chapter writers are local practitioners; others are professors and other academics. All are prominently known in their own countries and all know how to elicit answers to questions based on their own years of experience.
Neither are these authors afraid to tackle complex issues. For instance, one section in each chapter deals with the simultaneous hearing of infringement and invalidity questions, an aspect of litigation fraught with procedural inconsistencies from country to country. Another section tackles cross-border and extraterritorial injunctions and it is clear that this particular speciality in patent litigation can change, almost by the minute. Yet the authors cite appropriate case law, highlight its pitfalls and strengths, and alert us to continuing trends in the law. And, as the accompanying introduction indicates, the editors intend to update the text and, like a user manual, we can follow changes in both statutory and case law and adapt accordingly.
This book also allows consideration of real strategic approaches. If such an action is contemplated, the editors include a section on so-called ‘torpedo’ actions and their blocking effects. However, if one seeks a more rudimentary approach, there is also a section on grounds for invalidation of a patent. Even esoteric questions, such as partial invalidity, are addressed. The editors contemplate the ability to amend patent claims during the pendency of a law suit, and also consider whether or not the same set of facts can support both patent infringement questions and those surrounding unfair competition.
The writers consider whether one can sue in a particular jurisdiction, and who is an indispensable party. With respect to large multi-national organisations this can be an invaluable tool. Large companies not infrequently have to deal with local rules and laws in different jurisdictions concerning the propriety of plaintiffs and defendants. This book offers instructions here. Readers can peruse a particular chapter and determine the possibilities of personal liability or if parties can be added or subtracted during litigation. The rights to injunction are addressed. Preventing imports or exports at the border are outlined.
I was especially impressed by inclusion of sections concerning alternative dispute resolution. We increasingly turn to alternate forms in many jurisdictions around the world, yet to my knowledge no current manuals show how to seek out alternate dispute resolution in a particular jurisdiction. Finally, the text addresses rights to jury trial. Because of differing backgrounds in civil and common law this has frequently proved to be a question with no ready answer. Calame and Sterpi rectify that with this reference guide.
This book will be on my desk and frequently opened. I will use it as a tool, a reference guide, an instructional text, and as a one-volume ‘refresher course.’ I am impressed by the collation of such a vast amount of such easily read data in one place. I applaud the editors’ efforts and only hope that they update this manual for years to come.
Paul A Coletti New Brunswick, NJ
7 August 2006
