Intellectual Property Expertise
The French have a saying "Les experts ont tort!" (The Experts are wrong!)
Unfortunately, this French saying is often true in Intellectual Property matters.
Practicing IP-Counsels must advise clients continuously, either to execute or to stop a planned action. Clients often require expertise when an infringement of an IP-right is assumed. The effect of such expertise may be of significant economic influence on the future of a company or industry. Most experts try to minimize their own risks when giving written advice. Thus the decision-maker cannot rely on such advice. Worse still, in order to reduce risks, market opportunities may remain unexploited.
When courts appoint an expert, it is often a person with an excellent technical background, but with very little experience in IP matters. To increase objectivity, the court asks the expert standard questions that have been used in similar cases. The parties may propose minor modifications to such questions or can propose supplementary questions either before the expertise or following completion.
The results of a court's expertise are, by definition, frustrating for one or both parties. When the expert introduces unexpected arguments, it is frustrating for their attorneys as well. We recall a discussion with an acknowledged expert in patent matters. He was very proud when he said: "For more than 15 years I have not drafted any patent applications, I only provide expertise and give advice to junior attorneys." When the court forwarded his expertise to us, it came as no small surprise that it was contradictory to the examination practice of the European Patent Office and to the current decisions of the Board of Appeal!
Courts seldom apoint a second expert, even when the results of the first expertise are in doubt. This may lead to unpredictable decisions on all levels.
Our firm is not willing to provide expertise for courts, since these are limited to specific questions and territories. They do not allow global advice to be given to the parties to solve their real problems.
We prefer to give advice, after evaluating all technical, economic, and legal risks, directed not only to a specific situation or problem, but to the future of the product or the company.
|Copyright 2003 by PPS
Polyvalent Patent Services Ltd., Geroldswil/Switzerland