SAN FRANCISCO — Kobre & Kim is moving forward with what could be a groundbreaking international lawsuit alleging systemic overcharging of patent renewal fees by a company called CPA Global, after securing a financing deal with Bentham IMF to defray the risks of a loss.
Michael Ng, an attorney at Kobre & Kim in San Francisco, will be the U.S. lead for the planned lawsuit. Ng said Friday the firm is completing its investigation and plans to file “in relatively short order” a collective action in Jersey, the British Channel island where CPA Global is based.
The company, meanwhile, is rejecting accusations of overcharging its customers. “CPA Global categorically and emphatically denies any wrongdoing in our business,” Claire Barker, the company’s senior vice president of global affairs, said in a statement. “The fees for our service are defined in our agreements with our customers, and we adhere to those agreements fully.”
“We consider any speculation about future litigation that might or might not take place to be a deliberate attempt to tarnish our good business reputation and, as we always have, will continue to vigorously defend ourselves against any such vexatious speculation,” Barker added.
Jurisdictions around the world, including the U.S., charge regular administrative fees for keeping patents registered. CPA Global manages foreign patent renewals for IP holders, and charges three categories of fees, Ng said in an interview. Those include actual charges by the country’s patent office, a “country charge” for using a local agent, and CPA’s administrative fee.
For the first two categories, the fees are “pretty standardized now and so we’re able to calculate what that should be,” Ng said. He added that an investigation by his firm had revealed that invoices for renewals outside the U.S. were “fairly consistently in excess” of what they should be. He said the firm had not found evidence of overcharging in the U.S., however.
Ng said his firm was announcing its deal with Bentham in part to get attention from prospective clients; the lawsuit will have to be brought on an opt-in basis because Jersey does not have a U.S.-style class action mechanism. (CPA’s customer agreements have a Jersey forum selection clause, Ng explained. Kobre & Kim London-based barrister James Corbett is also leading the case, and working with Jersey law firm Baker & Partners on the suit.)
But Ng also noted that Jersey is a fee-shifting jurisdiction, meaning that if the suit were to fail, CPA Global would be able to demand its own legal fees be paid by the plaintiffs. The Bentham deal is designed to cover that additional layer of financial risk, he said.
Bentham investment manager Matthew Harrison said in a statement the funding package “will enable Kobre & Kim and Baker & Partners to rectify CPA Global’s treatment of its customers while sparing the patent holders from incurring any fees and costs to participate in the litigation.”
CPA Global in March settled a proposed class action for $5.6 million. That suit was brought in U.S. federal court by a company called Run Them Sweet LLC, which alleged CPA Global overcharged for foreign patent renewals. CPA Global was represented by Morrison & Foerster in that lawsuit.
Ben Hancock is a San Francisco-based reporter covering litigation, technology, finance, and the future of law. He can be reached via email at firstname.lastname@example.org or on Twitter: @benghancock.