Lawyer Monthly Magazine - May 2019 Edition

MAY 2019 42 Expert Insight www. lawyer-monthly .com While evidence in chief is generally given by way of affidavit, witnesses are required to be available for cross- examination and oral evidence is an important aspect of the case. Almost all patent cases, and many other IP cases, involve expert evidence. A peculiar Australian innovation is the expert ‘hot tub’, in which experts representing both parties give concurrent evidence in Court, having prepared a joint report prior to the trial without the input of the lawyers. IP cases are generally heard before a single judge of the Federal Court. While there is no separate IP Court, certain judges within the Federal Court are designated to hear IP cases, and these judges are well experienced in IP cases. Discovery is available and can be significant in many cases. How does your firm advise clients to prepare for IP litigation? Through our association with Shelston IP, we are often consulted before any particular dispute is in contemplation - as far back as the prosecution of a patent or trademark -, to advise on how the client’s position can best be strengthened at that stage for any future litigation. Having input at that early stage from a purely litigation perspective the Australian arm of an international dispute. We have a wide network of overseas law firms who we work with regularly and we are well accustomed to working in a multi-jurisdictional team. We appreciate that close coordination is key in such cases and have built up a sound appreciation of IP law in other jurisdictions, many of our lawyers having practised overseas during their careers. In some circumstances, international patent disputes may play out in Australia before other countries. This is because Australia has a pre-grant opposition process, which usually involves the filing of independent expert evidence and an oral hearing, with potential appeal to the Federal Court. As a result of this early substantive opposition process, Australia may be the first jurisdiction where expert evidence is prepared and filed. Our firm has a strong track record in handling pre-grant oppositions and in a number of cases has gone on to deal with subsequent post-grant Court proceedings in the same matter. How does the resolution of IP disputes differ in Australia from other parts of the world? The Court process in Australia is broadly based on the English system of litigation, meaning that it is an adversarial model. Expanding on the aforementioned on how an IP dispute has the potential to shut down a business, this is because where infringement is found to have taken place, an injunction will usually be granted, which may prohibit the sale of a particular product. In a number of situations, an IP rightsholder may also be able to obtain an interlocutory injunction, preventing the sale of a product until the dispute is heard by the Court (which in Australia could take at least 12 months). The grant of an interlocutory injunction, while not permanent, may have the effect in practice of preventing further sale of a product, because once it has been withdrawn from the market, it may not be practical or commercially worthwhile to re- market it, even it is ultimately found not to be infringing. For this reason, our experience is that prompt attention to an IP issue can be crucial. This is true for both the rightsholder and an accused infringer. If left without attention, contentious situations tend only to get worse and usually require greater effort and financial investment to resolve. How can a wider IP strategy impact on the course of an IP dispute? A single piece of IP which may be in dispute at a particular time rarely stands alone. Either the applicant or respondent may hold other IP which can be marshalled to leverage a particular result. There may also be strategies for obtaining additional IP which can assist in protecting the client’s commercial interests and legal position. At Shelston Lawyers, we are fortunate to work closely with our associated patent and trademark attorney firm. In many cases, they will already have a thorough understanding of a client’s IP portfolio or can ascertain this, which allows us to quickly assess any other IP which can be brought to bear on the dispute at hand and to consider strategies for strengthening the client’s IP position. For example, where the client has a suitable pending patent application it may be possible, at least for the time being, to make an application for a divisional innovation patent tailored to the infringing conduct. We also often find that an IP dispute or litigation is the catalyst for further review by a client of their IP portfoliomore generally. We are ideally placed to assist clients with this process with our specialist attorneys. How do international IP disputes play out in Australia? There is no doubt that we operate in an international field. Many of our cases form IP DISPUTES How Do IP Disputes Impact a Business? What effect can an IP dispute have on business? “At worst, an IP dispute has the potential to shut down a business entirely, or at least prevent it from continuing to sell an important product line”, explains Katrina Crooks, Principal of Shelston Lawyers. Below, she expands on this and how IP disputes play out in Australia.