IP Expert Talk: The interplay between patent prosecution and patent litigation

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Hello everyone. Today, my colleague Johannes Heselberger and I want to discuss the interplay between patent prosecution and patent litigation. While patent prosecution is often a “bulk business” which should generate large numbers of patents at comparably low cost per patent, patent litigation, in contrast, is necessarily only led with few selected patents and is much more expensive per patent. For an overall satisfying patent strategy, it is important to consider the interplay between prosecution and litigation.

I agree. It is important to remind oneself that patent protection is not only the classical aspect of deterring competitors from using the patented inventions, finally building on their law-abiding attitude, or on their fear from consequences, or, taken to the next level, excluding them from the market by obtaining injunctive relief in litigation. It is also about strategic aspects. They can, namely, serve as a counterweight in licensing negotiations. Licensing negotiations which may be concluded on normal, regular patents, or standard-essential patents, or a mix of both. If a strong patent portfolio is in a potential licensee’s hands, this can, in real life, lead to more favorable, more fair conditions of licensing compared to what licensees get who have no strong patent portfolio in their hands.

Exactly, and then, when it comes to litigation, one consideration can be, when you ask yourself which potential infringer to attack first, what are the assets the respective parties have? So, a strong patent portfolio may be a reason to be sued later.

Right, or – if sued already – to strike back. And the more pain one can create for the attacking party, the better the chances to settle – maybe after a first round of litigation.

Yes, so, to summarize those thoughts: A patent portfolio can be a means to protect yourself from being sued for patent infringement, and it can improve your position both in negotiations and in litigation, hereby meaning both active and defensive litigation. This requires, however, that the patent portfolio contains a strong proud list. When patents are prosecuted, it is therefore important to evaluate which patents have the potential of becoming “key” for the own portfolio. And such patents should be treated with much more care in prosecution than standard patents.

Right. And by “treating more carefully” we mean, for example, that patent attorneys with experience in patent litigation draft, or at least proofread, the patent application, in particular the claims. Litigation experience may avoid features and formulations which, later on in litigation, may cause considerable problems.

Exactly, and hereby we do not only mean the classics like unambiguous claim language, or the full support of the claims by the description, but we also think about contributing litigation experience by anticipating and hereby avoiding difficulties and discussions which typically arise. So, one question is, for example, “How can a claim feature be measured or proven in later litigation?” For example, if several measurement methods are possible, it is important to determine and disclose which one to apply. Another example is: If your draft product claim foresees, for example, a heating feature – heating with X hundred degrees and more – this is something which might not be possible to prove later on in litigation. Therefore, it should be considered to replace this feature by a feature comprising the characteristics which are derived from that heating process. Another question often discussed in litigation is when a claim language does not sufficiently clarify which out of several circuitry elements fulfils a claim limitation, or if one element fulfils it or even the combination of several may fulfil it. You have more examples, right?

Yes, think about biotech. “Which protocol to use to show the affinity of a molecule?” But there are also legal issues. There are many cases, also in the telecom field where indirect – contributory – patent infringement has to be argued, must be argued although slight changes in the claim formulation would have allowed for arguing direct infringement, thereby excluding the whole discussions about a patent-free use of the accused products. A simplified example is claiming, separately, a mobile phone and a base station – instead of an integrated system requiring both. That can be tricky. But it’s worth trying. So, in summary one could say: When building a patent portfolio, first, it is essential to differentiate which patents have the potential of playing a key role in your own patent portfolio. And second, treating such patents with much more care, with much more diligence, than others, for example by including litigation experience.