Friday Miscellany: Torpedo Actions; Patent Assertion Entities in Europe

1.   I discuss so-called "torpedo actions"--declaratory judgment actions filed by a potential patent infringement defendant in a European state which has a slow-moving docket, in order preemptively stay proceedings in a faster forum in which the patentee is likely to file an infringement action--at pages 253-55 of my book.  I've also discussed the topic on this blog, briefly, here and here.  Just recently, the IPKat Blog published an interesting post titled Italian Courts and Torpedo Actions in a Recent Genoa Decision, in which the author discusses a recent case in which an Italian court held that it could not exercise jurisdiction to consider the validity of a German patent, a German utility model, and the non-Italian designations of a European patent.  The author notes, however,  "What remains uncertain, however, is whether the questions of validity are required to be taken into consideration when determining the scope of the claims in order to assess the infringement …”

2.  Christian Helmers, Luke McDonagh, and Brian Love have just published Is There a Patent Troll Problem in the UK?, 24 Fordham Intell. Prop. Media & Ent. L.J. 509 (2014).  I previously mentioned a draft of this paper here.   Here is the abstract of the published paper:

This Article reports the findings of an empirical study of patent suits involving non-practicing entities (NPEs) in the U.K. between 2000 and 2010. Overall, we find that NPEs are responsible for 11% of all patent suits filed in the U.K. during this period. Though this is a small percentage by U.S. standards, our study suggests that patent trolling might not be as uniquely American as conventional wisdom suggests. We also find little support for many common explanations for Europe's relative scarcity of NPE activity. For example, we find that NPEs litigating in the U.K. overwhelmingly assert high-tech patents--even more so, in fact, than their U.S. counterparts--despite higher barriers to software patentability in Europe. Our study does, however, tend to support fee-shifting as a key reason for the U.K.'s immunity to NPEs. We see evidence that the U.K.'s loser-pays legal regime deters NPEs from filing suit, while at the same time encouraging accused infringers to defend claims filed against them. U.K. NPE suits are initiated by potential infringers more often than by NPEs; rarely end in settlement; very rarely end in victory for NPEs; and, thus, result in an attorney's fee award to the potential infringer more often than a damages award or settlement payment to the patentee. Together, these findings tend to support patent reform bills pending in the U.S. that would implement a fee-shifting regime for patent suits, and may also serve to lessen concerns that Europe's forthcoming Unified Patent Court will draw NPEs to Europe.

3.  Also recently out is a paper by Malte Köllner and Paul Weber titled Trolls and their consequences--an evolving IP ecosystem, Mitteilungen der deutchsen Patentanwälte 106 (March 2014).  The journal is published in Germany, but this particular article is in English.  Here is the abstract:

There are only few German publications on the topic of (alleged) patent trolling and related new structures in the intellectual property domain, especially compared to the passion of the ongoing discussion in the US.  This paper will introduce the matter, the structures that evolved in the US and look at comparable developments in Germany.

The discussion of which variations of patent assertion entities are currently found in Germany is particularly interesting.