There is a key risk for any intellectual property owner and that is an infringement action. This is a challenge to the validation of intellectual property rights. For an alleged infringer, the validity attack is mostly the first line defence. Some choices are also available to decide when and where these attacks should be avoided and fought with.
A key question also concerned with the extent to which a group who has made a first challenge is not allowed to make the second one, if so, where should the shot be fired?
Such attacks on the validity of the property rights can be fought via a number of forums, especially where the right (design, patent, copyright or trademark) is a European one. There are many aspects that are needed to be considered. These are as follows:
- Speed: Proceedings in case of relevant registry are usually simple as compared with court proceedings, but, especially in centralized European registry for patents and European community trade marks, can be too slow.
- Cost: Frankly speaking, these registry proceedings are comparatively cheaper, because some parties decide to run them with low investments as a single attack. Though, if later proceedings are usually, registry proceeding will add to the cost too much.
- Finality: This deal with the question that to what extent the issues can be re-opened in different forums.
- Enforceability: A wide challenge might invalidate the complete European portfolio. An early decision may have a notable impact on the jurisdictions or may lead to settlement.
The attack option depends on the challenge of intellectual property right. For example:
- Patents: Patents can normally be challenged after grants, but may also be challenged before European registry (EPO, European Patent Office), the national registry (UKIPO), or in front of a national court. Though, only EPO has the right to invalidate Europe patent rights. As compared with trademarks, one past that EPO grant position phase, the patent becomes a bundle of patent rights in the countries which are designated by the applicant: in the UK, they will be known for an EP (UK). Thus, the validity can only be challenged at a national level (in the courts or UKIPO) and not like CTM, it’s not vulnerable to the attacks. The attack in a national court can only affect its national patent and no more attacks on the patent is available.
- Trademarks: Normally, a two tier system is available to trademarks: an application for registration of a mark may be attacked before the grant and also a successive challenge can occur against that registered mark (in response to an infringing action or may independently). In case of CTMs, an attack can be brought to a national court (in relation to its validity or just as a counterclaim against infringement allegation), or sometimes before European registry, the OHIM (Office for Harmonisation in Internal Market), and the mark can be invalidated across the Europe.
The examples mentioned above are only two regarding things that should be considered. Usually, most of the part depends on the type of risks and some specific cases so that early discussions with a legal adviser is crucial.