Enforcement Of Foreign Patent Rights

In addition to major differences among the various countries in prosecution of patent applications, there are also enormous differences in enforcement. Indeed it is the difficulty in enforcement that usually tips the balance in my recommending against foreign filing. The truth is that an ordinary patentee cannot realistically enforce a patent in Europe, Japan or Korea, let alone Russia, China, India, or Indonesia.

In Europe, for example, a patentee needs to bring separate patent actions in each country for each infringer, even if the patents at issue are essentially equivalent. Determination of invalidity must be made in the courts of each separate country, patent infringement suits against related companies cannot be combined in a single court even if the defendant companies are acting in accordance with a common policy . It just isn't realistic to bring actions in each of Great Britain, Germany, France, Italy, and Spain, and it is even less realistic to bring actions in the economically smaller countries such as Netherlands, Belgium, Luxemburg, Greece, Switzerland, Portugal, and so forth.

Much has been made about the adoption of tougher enforcement in China, India, Korea, and some other countries. But don't be misled; the enforcement problems are still legion. It was a huge news item in Korea a few years back when a non-Korean company was the first ever to prevail on patent infringement against a Korean company in a Korean court. Even after that watershed, the chances of prevailing against one of the chaeobol in a Korean court is probably close to zero because of their incredible political strength. Political considerations are also paramount in China. In 2004 the State Intellectual Property Office of China ("SIPO") revoked Pfizer's patent on the anti-impotence drug, sildenafil citrate (marketed as Viagra™) Pfizer under pressure of Chinese pharmaceuticals. Although the Chinese companies had argued insufficient detailed description and lack of novelty, SIPO issued the revocation without even giving any basis for the revocation. Chinese pharmaceutical companies also challenged GlaxoSmithKline's patent on rosiglitazone, one of three patented ingredients in its antidiabetic drug, Avandia™. Probably knowing that they had no chance of prevailing, Glaxo voluntarily abandoned the patent at the beginning of the oral hearings.

The tactical error in these latter cases may have been failure of the patent holders to run the technology through local companies. In many foreign countries the only realistic strategy for enforcing patents is to license the patent to a home grown company, and have that company enforce the patent.

The picture differs somewhat where the competitors are multinational corporations. Such companies have the sophistication to appreciate that they must honor competitors' patents if they want their own patents to be honored. Thus, even though a patent may be realistically unenforceable in the courts of a foreign country, multinationals usually negotiate licenses.