Claim preclusion, issue preclusion and the Kessler doctrine: game, set and match!

The famous Kessler Twins

Just a few days ago, while drafting a post on the 'actual controversy' requirement in declaratory judgment actions, I came across an interesting article by Michael G. Munsell. The article briefly mentioned an obscure theory I had never heard of. 'The Kessler doctrine', the author explained, 'bars an infringement suit against a customer or seller who has previously prevailed against the patent owner because of invalidity or noninfringement'. I made a mental note to dig deeper, as I was curious to understand how the Kessler doctrine correlated with res judicata (after all, I thought, which additional arguments could the patent owner raise against the alleged infringer's customer, after losing suit against the former?). Luckily, the Federal Circuit was kind enough to look into the matter in Brain Life LLC v Elekta Inc., an interesting opinion published on Monday. The panel discussed how a final judgment of non-infringement prevents relitigation under three different doctrines (claim preclusion, issue preclusion, and Kessler doctrine), reviewing the characteristics and limitations of each of them.

To understand the Federal Circuit's decision, it is necessary to go back to 1997, when MIDCO sued Elekta, alleging that three products sold by the defendant (GammaKnife, GammaPlan, and SurgiPlan) infringed US Patent No. 5,398,684. The patent at issue contained only two independent claims, respectively disclosing an apparatus and a method for generating a video image from a variety of scanner imaging sources, including a computerized axial tomography image, a nuclear magnetic resonance image, and an X-ray. During discovery, MIDCO focused on the apparatus claims and did not oppose Elekta's motion for dismissal of the method claims prior to trial. Accordingly, the district court dismissed the method claims without prejudice. The jury rendered a verdict in favor of the plaintiff, finding that Elekta's products infringed claim 1 of the '684 patent. On appeal, the infringement finding was reversed, and the case remanded to the district court to enter judgment of non-infringement as a matter of law in favor of Elekta.

A few years after these events, MIDCO licensed its patent to a third party, which, in turn, licensed it to Brain Life. The licensee filed suit against Elekta (and several other defendants), maintaining that four of its products (GammaKnife, GammaPlan, SurgiPlan, and ERGO++) infringed the method claims of the '684 patent. At first instance, the district court granted summary judgment in favor of the defendant. Finding that there was no material difference between the accused products and those adjudicated in the previous proceeding between MIDCO and Elekta, the court held that allowing the plaintiff to assert the method claims would amount to impermissible claim splitting. Thus, it concluded that 'Brain Life cannot revisit the decision MIDCO made many years ago to forego including in its infringement action [the method claim], when it could have been asserted in the first litigation, and revive that allegation now against products that are essentially the same as the accused products that were found not to infringe'.

The Federal Circuit reviewed the district court's decision under the three doctrines mentioned above. First, it discussed the applicability of claim preclusion. Under the law of the Ninth Circuit, claim preclusion applies where the prior suit (i) involved the same claim or cause of action as the later suit, (ii) reached a final judgment on the merits, and (iii) involved the same parties or privies. The presence of a final judgment, which ended a cause of action, bars the parties from relitigating both the claims that were brought and those that could have been brought in the prior suit. In this perspective, the doctrine of claim preclusion effectively prevents claim splitting (as expressly acknowledged, for example, in Shaver v F.W. Woolworth Co. - the Tenth Circuit, in Hartel Springs Ranch of Colorado Inc. v Bluegreen Co., reviewed several decisions that recognized a similar correlation). The court highlighted that, according to the teaching of Nystrom v Trex Co. Inc. and Foster v Hallco Mfg. Co., the party that demands the application of the doctrine of claim preclusion in a patent case must demonstrate that the accused product is 'essentially the same' as that accused in the prior suit.

Brain Life acknowledged the similarity between the products litigated in the MIDCO trial and those accused in the later suit. However, it contended that the final judgment rendered in the prior suit could not bar the assertion of the method claims, which were dismissed without prejudice. The Federal Circuit disagreed, clarifying that '[w]hile the dismissal without prejudice allowed for the possibility that acts of infringement of the method claims could be subject to a future cause of action, that possibility was cut-off for all such acts predating the final MIDCO judgment once that judgment was entered'. The court observed that the doctrine of claim preclusion does not prevent Brain Life from asserting either the apparatus or method claims against Elekta, for acts of infringement occurred after the judgment rendered in the prior suit. The panel recited the recent decision of Aspex Eyewear Inc. v Marchon Eyewear Inc., which clearly explained that 'if the party could not have asserted particular claims - because the tortious conduct in question had not occurred at that time - those claims could not have been asserted and therefore are not barred by res judicata'.

The opinion then looked at the doctrine of issue preclusion, or collateral estoppel, under which 'once an issue is actually and necessarily determined by a court of competent jurisdiction, that determination is conclusive in subsequent suits based on a different cause of action involving a party to the prior litigation' (Montana v United States). Actual litigation and determination of an issue of fact or law in a final judgment is the element that distinguishes issue preclusion from claim preclusion. The court found that the method claims originally asserted by MIDCO against Elekta 'were not fully, fairly, and actually litigated to finality'. Therefore, it held that issue preclusion does not bar a second suit on those claims. Similarly, as the ERGO++ product was not included among the accused products in the prior suit, issue preclusion cannot bar the assertion of any claim of the '684 patent in relation to said product.

Finally, the panel turned to the Kessler doctrine, suggesting that it 'fills the gap between [claim preclusion and issue preclusion], allowing an adjudged non-infringer to avoid repeated harassment for continuing its business as usual post-final judgment in a patent action where circumstances justify that result'. In particular, this doctrine applies to new acts of (alleged) infringement, which are excluded from the applicability of claim preclusion. The Kessler doctrine was created, in 1907, by the Supreme Court in Kessler v Eldred: Eldred, after losing an infringement suit brought against Kessler's electric lighters, had sued a customer of Kessler that was selling the same products accused in the first suit. According to the Federal Circuit, the Kessler decision went beyond the perimeter of the doctrine of claim preclusion, as the Supreme Court 'granted Kessler a limited trade right to continue producing, using, and selling the electric lighters that were the subject of the first suit and to do so without fear of allegations of infringement by Eldred - even when the acts of infringement occurred post-final judgment and even when it was third-parties who allegedly engaged in those acts of infringement'.

The court acknowledged that its past reliance on the Kessler doctrine has been sparse, but recalled the cases of Rubber Tire Wheel Co. v Goodyear Tire and Rubber Co. and MGA Inc. v General Motors Corp. The latter described Kessler as a doctrine that 'bars a patent infringement action against a customer of a seller who has previously prevailed against the patentee because of invalidity or noninfringement of the patent; otherwise, the effect of the prior judgment would be virtually destroyed'. The Federal Circuit suggested that the Kessler doctrine may be less valuable today than at the time of its creation, as the strict doctrine of mutuality that was applied at that time has been replaced by the development of defensively applied issue preclusion. Applying Kessler, the court found that, after the final judgment of non-infringement, Elekta was free to continue engaging in the accused commercial activity as a non-infringer, in relation to all the products adjudicated in the MIDCO litigation. 'Simply', explained the court, 'by virtue of gaining a final judgment of noninfringement in the first suit - where all of the claims were or could have been asserted against Elekta - the accused devices acquired a status as noninfringing devices, and Brain Life is barred from asserting that they infringe the same patent claims a second time'. The panel reiterated, however, that this conclusion does not apply to Elekta's ERGO++ product, which was never included in the prior suit. Thus, it reversed the district court's judgment regarding this product, remanding for further proceedings.

Disclosure of documents and a patent attorney's duties: a question of proportionality

Bromhead & Co and others v Baillie and others is an extempore 25 February decision of Mr Justice Arnold, sitting in the Chancery Division, England and Wales, on one of those most delicate of issues: the extent to which a patent attorney, seeking to defend himself against accusations of professional negligence, can obtain information in the possession of his former client in order to do so.

In this case the patent attorney had been retained to advise on patents covering his client's glow-in-the-dark material. The client claimed that it had, in seeking to secure patents and to develop commercial products using its material, spent large sums of money that it would not have spent, had it been properly advised that there was no real prospect of obtaining the patents in the first place. The client's case was principally based on the proposition that, since the patent attorney had been retained to provide advice on suggested strategies in order to exploit the material, including a patent portfolio, the retainer was wide enough to allow for the provision of advice on the recovery of losses. The patent attorney however maintained that his client's alleged losses had been caused by other factors. The patent attorney applied for specific disclosure, under the Civil Procedure Rules, CPR r.31.12(2)(a), of any documents, including memorandums and notes, that were related to the downfall of his client's commercial endeavour, the losses suffered, any problems with the material, sales, marketing and market conditions. This application was however refused, the master holding that the disclosure sought was not necessary for determining the scope of the patent attorney's duty towards his client and that only the factual matrix of the events was relevant, rather than an in-depth analysis.

On appeal to Arnold J the court had to consider two issues: (i) were the documents for which the patent attorney sought disclosure actually relevant and (ii) if so, whether this request for disclosure was proportionate. The patent attorney argued that the client's disclosure of management accounts, minutes of board meetings, cash flow documents and business plans to date had been inadequate and that it failed to provide an overview of the causes of the losses, which was relevant to the pleaded case.

Arnold J dismissed the patent attorney's appeal on the basis that it would be possible to conduct an adequate investigation of what caused the client's loss by reference to such material as was already available. In his view

* The documents which the patent attorney wanted disclosed were arguably relevant, if the patent attorney was correct in to say that his duty was merely to provide information (in which case the client's case would probably fail) rather than to furnish advice. It could also be argued that it might be difficult to determine whether the matter was an information case or an advice case, and that determining the scope of the patent attorney's duty required an investigation of the actual causes of the client's losses.

* However, even if the documents were relevant, the request for their disclosure was disproportionate. The disclosure sought was extremely-wide ranging, covering a period of over four years and a wide range of documents concerning a wide range of subjects. The provision of disclosure of any documents pertaining to any problems experienced in the specified areas would clearly be a massive exercise. While it wasn't the patent attorney's fault that the request was made so close to the trial, and there had been no specific evidence that the disclosure could not have been completed before trial, the review and disclosure of such a large volume of documents would have inevitably descended into the minutiae of causation, rather than merely a broad theme.

To the relief of many actual and potential litigants in similar circumstances, Arnold J took a cautiously realistic view of the cost-benefit  ratio of disclosed evidence of the electronic variety when he observed that the disclosure of thousands of emails was not going to remedy the patent attorney's concerns -- but that it would burden both parties with large costs.  This set this blogger thinking: how does one actually charge for the time spent in priming oneself for the task of reading vast quantities of email correspondence and then in reading and evaluating it, given that part of the task involves a degree of professional expertise while another part of it involves ploughing through the detritus of out-of-office messages, copied-in duplications of emails already read, and other evidentially unproductive text.

This item is based on a Lawtel note on the court's ruling.

Pre-issuance conduct and declaratory judgment actions in the US

In the recent case of Danisco v Novozymes, the Court of Appeals for the Federal Circuit held that the patentee’s conduct prior to issuance of a patent may be sufficient to satisfy the ‘actual controversy’ requirement to establish declaratory judgment jurisdiction (see 28 USC s. 2201(a)). The court reversed the judgment rendered by the District Court for the Northern District of California, relying on the teaching of the Supreme Court in MedImmune v Genentech and adopting a standard based on the ‘totality of the circumstances’. The panel also rejected the district court’s categorical distinction between pre and post issuance conduct.

Danisco and Novozymes are competitors in the market for industrial enzymes used to convert corn and other plant-based material into ethanol. In the past decade, Novozymes repeatedly sued Danisco for patent infringement. Danisco filed a patent application, later issued as US Patent 8,084,240, claiming a BSG alpha-amilase variant polypeptide with an E188P substitution, the active ingredient of the company’s rapid starch liquefaction products. Shortly after issuance of a Notice of Allowance of Danisco’s application, Novozymes amended one of its pending patent applications to claim the same polypeptide, requesting an interference contesting entitlement to priority of invention. The examiner rejected both the interference request and a subsequent request for continued examination. Novozymes noted that it refused to ‘acquiesce’ to or otherwise be ‘estopped’ by the examiner’s erroneous decision. On the day of issuance of Novozymes’ amended application as US Patent 8,252,573, Danisco filed the declaratory judgment action that gave rise to the present dispute.

At first instance, the district court recognized that many of the circumstances adduced by Danisco, including the parties’ status in the industry, past litigation, and the prosecution history and timing, suggested that Novozymes had pursued the E118P substitution claim in the ’573 patent with the objective of asserting it against Danisco’s products. It noted, however, that the declaratory judgment plaintiff had not provided proof of any affirmative act by Novozymes to enforce its patent rights, and that the temporal coincidence between the issuance of the patent and the filing of the declaratory judgment action suggested that Novozymes had not even had the time to take any enforcement action. The court, dismissing the action for lack of subject matter jurisdiction, concluded that ‘[w]hile matters such as a prior litigation history and statements made during prosecutions sometimes support a conclusion that an actual controversy exists, there is no precedent for finding jurisdiction based on such pre-patent issuance events alone, without any affirmative act of attempted enforcement’.

The Federal Circuit disagreed. Right from the outset, the panel clarified that the lack of specific accusations of infringement against the declaratory judgment plaintiff is not a decisive element to establish whether an actual controversy exists (citing Arkema Inc. v Honeywell International Inc.). Instead, the court recited the teaching of MedImmune, where the Supreme Court held that ‘[b]asically, the question in each case is whether the facts alleged, under all the circumstances, show that there is a substantial controversy, between parties having adverse legal interests, of sufficient immediacy and reality to warrant the issuance of a declaratory judgment’. The Federal Circuit found that the prior litigation history between the companies (see 3M Co. v Avery Dennison Corp.), and the adverse positions taken during prosecution of the ‘240 and the ‘573 patents, satisfied the ‘actual controversy’ requirement as outlined by the Supreme Court. Further, the judges added that Novozymes’ response to the rejection of its interference action suggested that the company believed that Danisco’s alpha-amylase variant infringed its patent.

The court observed that ‘[t]he district court’s categorical distinction between pre- and post-issuance conduct is … irreconcilable with the Supreme Court’s insistence on applying a flexible totality of the circumstances test, its rejection of technical bright line rules in the context of justiciability, and our own precedent’. Novozymes’ conduct, in this perspective, ‘shows a preparedness and a willingness to enforce its patent rights’, which put Danisco in the position of either abandoning the production of its rapid starch liquefaction products, or running the risk of an infringement suit. This situations resembles the same dilemma that, according to MedImmune, the Declaratory Judgment Act aimed to ameliorate.

The evolution of the Federal Circuit’s approach to the ‘actual controversy’ requirement is particularly interesting. After MedImmune, the Federal Circuit definitively abandoned the formalism embedded in its ‘reasonable apprehension of suit’ standard, although it struggled to part with the idea that ‘some affirmative act by the patentee’ is indeed required (SanDisk Co. v STMicroelectronics Inc.). The present case highlights how a multiplicity of factors, including prior litigation history and pre-issuance conduct, can effectively signal the presence of a justiciable controversy between the parties. A couple of articles, here and here, provide a good overview of the matter for all interested readers.

DPMA Challenges SIPO in terms of Growth Rate

Readers who thought that growth rates beyond 20% are only possible in china beware: The German Patent- and Trademark Office DPMA has published a press release on its annual statistics here. The number of granted patents has increased by not less than 22.1% in 2013 (as compared to 26.3% in China). The number of filings has increased by 2.9%, wherein the most important contribution to the latter increase comes from Japan (+ 20.7%) and the US (+9.5%).

According to this blogger's experience, the high official fees of the EPO and the formalistic attitude of the EPO examiners latter drives more and more applicants towards national filings. The modernization in the filed of online services, the extension of the possibilities to use English language and the uncertainty in connection with the quality and the costs of the UPC will eventually further accentuate this trend.

UPC has its first premises - and new rules of procedure

Mr. Rubik, Hungarias model-inventor

The training centre for the future Judges of the UPC has been opened yesterday in Budapest.  According to the press release of the EPO:

Speaking about the Hungarian patent system, Miklós Bendzsel, President of the Hungarian Intellectual Property Office, said: "The system will be 120 years old in 2015. In the European innovation processes Hungary does not merely provide a creative workshop for products like Rubik's Cube, glass concrete or the intelligent surgical knife (iKnife); but our country is among the best as regards the contribution of IP intensive industries to the GDP and to employment." Mr Bendzsel added: "All this provides an excellent background for the operation of a Training Centre for judges working within the system established for the European patent with unitary effect. Budapest ensures a high quality framework for the nurturing of this new legal practice combining technical, legal and economic knowledge."

This blogger likes Budapest a lot and thinks this venue is well chosen.

Besides of this, the 16th draft of the rules of procedure is open for consultation.

Adjournment in the UK for amendment in the EPO

PatLit is pleased to welcome this guest post from Paul England (Senior Associate, Taylor Wessing, and an occasional guest blogger on the IPKat). Here Paul picks on an important procedural matter: the adjournment of national proceedings so that one of the parties can make an application for amendment before the European Paten Office.  Paul explains:

Adjourned ...

The electronics cases passing through the courts of England and Wales have resulted in a number of important decisions recently: only last year, IPCom GmbH & Co KG v HTC Europe Co Limited & Others (noted by the IPKat here) refreshed the statement of the relationship between the British patents courts and the European Patent Office; now, a different aspect of that relationship is at issue in Samsung Electronics Co Ltd v Apple Retail UK Ltd and Another [2014] EWCA Civ 250. In Samsung v Apple, the Court of Appeal has taken the step of adjourning appeal proceedings, pending an application for amendment of the patents in suit in the European Patent Office (EPO).

The substantive proceedings concern the validity and infringement of two Samsung patents, which Apple is alleged to infringe with products including the iPhone 4, the iPhone 4S and the iPad 2 3G. At first instance, the patents had been held invalid on the basis that neither was entitled to its claimed priority date and by reason of intervening prior art. They were also, in the judgment of Floyd J (as he was when presiding in the case) obvious. Samsung had also made conditional applications to amend each of the patents before trial, each of which the judge held would not render them valid. The judge declared them invalid by final order on 8 May 2013. However, he granted permission to appeal and the hearing of the appeal was listed for 4 or 5 March with a time estimate of three days.

Subsequently, on 5 November 2013, Samsung filed amendment applications for both the patents in the European Patent Office further to the Article 105 procedure introduced by the European Patent Convention 2000. The timing of these applications, Samsung explained, was due to the need to coordinate these amendments (which would have pan-European affect) with the various parallel actions concerning equivalent parts of the patents being fought in the national courts of Europe. Acceleration of these proceedings was however sought and granted.

In marked contrast to opposition proceedings, as the Court of Appeal noted, the EPO amendment procedure is intended to be simple and quick. In this case, the court accepted that the amendments were likely to be determined by June 2014, before the proceedings in England and Wales were likely to be fully disposed of. The court also stated that the Patent Act 1977 specifically contemplates the possibility of concurrent proceedings between the UK and the EPO and there is no prohibition on central amendment while proceedings are pending in a national court. Accordingly, the Court of Appeal thought there was no abuse of process in the circumstances before it.

Indeed, given the legitimacy of central amendment and the relatively short time periods involved, the Court of Appeal held that it makes obvious sense to accede to Samsung’s request for adjournment pending central amendment. The court’s judgment was reinforced by the risk that it might otherwise come to a decision on patent claims that are deemed, post-amendment, never to have existed.

International Patent Forum 2014: who's speaking on litigation?

Last month, PatLit posted this note about the International Patent Forum 2014, organised by Managing Intellectual Property magazine for 18 and 19 March. When that note was posted, it linked to a provisional list of speakers that did not specify who was participating in which session.  The programme has now crystallised and you can get the full details here.

The IPKat's post yesterday suggested that, given recent world events, the session entitled "Russia Focus" on the first day may be memorable.  For investors and portfolio planners this will certainly be the case, but the attention of patent litigators will however be focused elsewhere, and various seasoned campaigners, including Nicola Dagg and David Por (Allen & Overy), Ian Hiscock (Novartis), Gregory Gramenopoulos and Timothy May (Finnegans) and Tony Piotrowski (MPEG LA) will be among those sharing their experience.

A reminder: if any PatLit reader who is attending would like to take some notes and share them with readers of this blog, that would be greatly appreciated!

Mediation of IP disputes: a forthcoming event

Here's a link to OHIM's IP Mediation Conference website, which has just been published and which contains a link to the conference programme. The conference itself is described like this:

OHIM will hold its first ever conference on IP Mediation between 29 and 30 May 2014 

The conference will take place in OHIM´s home city of Alicante, Spain, and will bring together a wide spectrum of stakeholders and will be led by top names in the mediation world. A full conference programme is available here .

This is how OHIM visualises IP mediation. The reality may
be a little less sweet and pleasant if not handled properly

The conference brings together world-class mediators, practitioners and experts in the mediation field in what promises to be one of the most dynamic and interesting events of its kind.

Mediation is a fast-growing discipline within IP, and for some years now, has been developing into a significant instrument of dispute settlement. The EU Mediation Directive (2008/52/EC), which aims to promote mediation, especially in the context of civil and commercial disputes, has already been transposed into national law in many member states.

This conference focuses on mediation as a practical tool in day to day IP work. We look at how mediation is practiced at international, EU and at national level, with experts from WIPO, the EPO, OHIM, the UK IP Office and the Portuguese IP office, amongst others. We bring in input from key user associations such as ECTA and INTA, as well as experts from private practice, and offer real-world examples of mediation in action.

We also look at issues like the comparisons and synergies between mediation, negotiation and arbitration; how to maximise the mediation experience; psychology and mediation techniques and how to create value through mediation.

The conference features breakout sessions, which concentrate on issues ranging from mediation and new technology and role playing techniques, allowing participants to fully engage with hands on mediation practices, and to learn about new ways of working.

This blogger, who is participating in this event, is a keen supporter of the principle of mediating IP disputes. Patent disputes appear to be a field of conflict in which mediation is substantially underused, and this blogger wonders whether this event might be a good way of raising the profile of this sometimes labour-intensive but generally agreeable means of resolving disputes.

Does India Follow “First to File” or “First to Invent” Rule in Patent Filing?

PatLit is pleased to welcome the following guest post from fellow blogger Sai Deepak (of The Demanding Mistress, here). Here Sai addresses a fundamental issue, that of entitlement to a patent. This is what he has to say:

Does India Follow “First to File” or “First to Invent” Rule in Patent Filing?

It is a common perception that, under the Indian patent regime, whoever files a patent application over an invention first, is the one entitled to a patent on it. But does this perception have a basis in the Patents Act, 1970? Importantly, is this perception correct?

One of the things that a litigator’s training teaches you is that, no matter how pedantic it may seem, interpretation of the law must not be based on what people think or assume, but must be solidly rooted in what the statute says, which is further backed by logic and common sense. In short, the letter of the law must be given its due, and the enquiry must begin with the wording of the provision, as opposed to a pre-conceived notion of what we think the law is, or ought to be.

If one applied this proposition to the issue at hand, the provision to look into is Section 6 of the Patents Act:

6. Persons entitled to apply for patents 

(1) Subject to the provisions contained in section 134, an application for a patent for an invention may be made by any of the following persons, that is to say,—(a) by any person claiming to be the true and first inventor of the invention;(b) by any person being the assignee of the person claiming to be the true and first inventor in respect of the right to make such an application;(c) by the legal representative of any deceased person who immediately before his death was entitled to make such an application. 

(2) An application under sub-section (1) may be made by any of the persons referred to therein either alone or jointly with any other person.

From the above, it is clear that Section 6 governs the entitlement of a person to file an application for a patent. The provision says that “any person claiming to be the true and first inventor of the invention” may file an application for a patent. The provision uses both “true” and “first”, in that order. This means the person must have invented the invention by himself (or by themselves in case there are several inventors) without free-riding on the efforts of another person. The second condition is that the person must also be the “first one to truly invent” the invention. Nowhere does the provision seem to convey a “first to file” rule where entitlement is based on prior filing.

Given this, where do we get the conclusion from that India follows a “first to file rule” when the emphasis is clearly on the first person to truly invent the invention?

Merely because a person files an application for a patent “claiming to be the true and first inventor”, does it follow that his claim is irrebuttable? Since the requirements under Section 6 are conjunctive and hence two-fold i.e. “true and first”, even if the person’s claim of being the true inventor is in fact true, it is possible that he may not be the first inventor. It is only his belief/claim that he is the first inventor because to the best of his knowledge no one seems to have published the invention in public domain or has filed for a patent.

Be that as it may, his belief could be misplaced, and it might be possible for another person to prove that he (the other person) is not only the true inventor, but was also the first one to invent the invention. If so, does the Act provide for a remedy which could be invoked to prove “true and first inventorship”?

To the best my knowledge and understanding, there is no such remedy under the pre and post-grant opposition mechanisms in Section 25(1)(a) or (2)(a) since both refer to an invention which has been “wrongfully obtained”, which is also dealt with under Section 64(1)(c) which deals with revocation of patents. Reproduced below are the relevant provisions:

25. Opposition to the patent

(1) Where an application for a patent has been published but a patent has not been granted, any person may, in writing, represent by way of opposition to the Controller against the grant of patent on the ground—
(a) that the applicant for the patent or the person under or through whom he claims, wrongfully obtained the invention or any part thereof from him or from a person under or through whom he claims; 

(2) At any time after the grant of patent but before the expiry of a period of one year from the date of publication of grant of a patent, any person interested may give notice of opposition to the Controller in the prescribed manner on any of the following grounds, namely:—
(a) that the patentee or the person under or through whom he claims, wrongfully obtained the invention or any part thereof from him or from a person under or through whom he claims;64. Revocation of patents.— 

(1) Subject to the provisions contained in this Act, a patent, whether granted before or after the commencement of this Act, may, be revoked on a petition of any person interested or of the Central Government by the Appellate Board or on a counter-claim in a suit for infringement of the patent by the High Court on any of the following grounds, that is to say—
(c) that the patent was obtained wrongfully in contravention of the rights of the petitioner or any person under or through whom he claims;

“Wrongfully obtained”, as understood from these provisions, refers to a situation where the true inventor has been defrauded by another person who has applied for a patent or who has been granted one. In other words, the patent applicant/patentee is not the “true inventor” since he has obtained the invention “wrongfully”. If the true inventor’s challenge under these provisions is successful, the patent application/patent shall be transferred to his name pursuant to Sections 26 and 52 respectively.

However, an allegation of an invention being “wrongfully obtained” is distinct from the issue under discussion. The distinction is that while Sections Section 25(1)(a) or (2)(a) and 64(1)(c) address a situation where fraud is committed on the true inventor, the issue under discussion refers to a situation where the patent applicant has not committed fraud, but is merely under the factually misplaced belief that he is the “true and first inventor”.

Based on my reading of the Act, the remedy for the second situation lies in Section 64(1)(b) which provides for a ground of revocation based on to “entitlement to apply for a patent”. This, in my opinion, is a reference to Section 6 which says who says who is entitled to apply for a patent. Reproduced below is Section 64(1)(b):

64. Revocation of patents. 

(1) Subject to the provisions contained in this Act, a patent, whether granted before or after the commencement of this Act, may, be revoked on a petition of any person interested or of the Central Government by the Appellate Board or on a counter-claim in a suit for infringement of the patent by the High Court on any of the following grounds, that is to say—

(b) that the patent was granted on the application of a person not entitled under the provisions of this Act to apply therefor:

To cut a long story short, while Section 64(1)(c) addresses an allegation of the invention being “wrongfully obtained”, Section 64(1)(b) addresses a situation where the “true and first inventor” challenges the grant of a patent by virtue of him being the “true and first inventor”. Therefore, if a person X believes that another person Y ought not to have been granted a patent since X conceived of the invention before Y, and Y is merely the first filer of the patent application, X has a remedy under Section 64(1)(b) after the patent has been granted. Surprisingly, such a remedy has not been provided for under the pre and post-grant oppositions in Section 25(1) or (2). Consequently, X has to wait until a patent is granted in order for him to challenge its grant.

However, what is certainly clear from the above is that the statute adopts a “first to invent” rule, and not “first to file”. Despite the absence of any ambiguity in the statutory framework, it is indeed intriguing that most people assume that India follows the “first to file” rule.

The policy argument that could be used to support the “first to invent” rule is that if the true and first inventor does not wish to file for a patent, and instead wishes to protect his invention as a trade secret, why should another person be granted a patent merely because he is the “first to file”?

Is proof of damages required in Spain if patentee opts for equivalent royalty?

Colm Ahern

PatLit is delighted to host the following item from Spain, written by Colm Ahern (of Elzaburu, Madrid). Writes Colm:

Article 13 of the Enforcement Directive 2004/48 rather confusingly seems to equate equivalent royalty with damages, whereas in many continental legal systems it might fit more easily into the category of unjust enrichment i.e. the infringer has obtained something to which he has no legitimate right. The reference to damages, which has been transposed in Article 66 of the Patents Act has caused particular problems in Spain where case law has traditionally held that damages must be “real and effective” and strictly limited to those that are proven. Should the patentee then have to prove damages if he opts for equivalent royalty which, after all, has nothing to do with any actual damage he has suffered? This has led to some rather confusing and contradictory case law and the development of the doctrine of “ex re ipsa” which seeks to somehow fit equivalent royalty into the traditional picture by saying that there is no need to prove the existence of damage if by the nature of the thing under analysis (res), the existence of damage is clear (from the thing itself). However it would have been much better to acknowledge that as equivalent royalty cannot really be equated with the continental law concept of damages, as then the question of proving damages does not even arise.

This is exactly what the Madrid Appeal Court has done in Judgment no. 25/2014 of 24 January 2014 in appeal no. 578/2012. The ruling sets out that the purpose of equivalent royalty is not to compensate a loss suffered by the patentee, but rather the illegitimate invasion of his exclusive right. The Court does not say that it is necessary to show that the existence of a loss is self-evident (ex re ipsa) but rather that there is no need to prove or even consider any such loss. This comes as good news to patentees who up to now ran the risk that a court might find that the loss was not as self evident as they claimed e.g. when the patentee himself is not exploiting the patent in Spain and has made no preparations to do so either directly or through the granting of licenses. Even better, the Court gives clear guidance on what type of equivalent license terms can be sought including an up front payment, a fixed minimum monthly royalty and variable royalty based on sales. This is good news for patent litigators in Spain where judges traditionally tend to be guarded in their damages awards. 

This blogger has long been concerned at the relative lack of consistency in the assessment of damages in IP infringement proceedings, as well as being baffled by the paucity of references to the Court of Justice for preliminary rulings on how the Enforcement Directive should be interpreted.  This decision is therefore of particular interest to him.  Do readers from other countries have any thoughts?

No foreseeability bar in the doctrine of equivalents, says the US Federal Circuit

Do you foresee a bright future
for the doctrine of equivalents?

Last week, besides discussing the proper standard for reviewing a district court’s claim interpretation (see David's post here), the Court of Appeals for the Federal Circuit also examined the doctrine of equivalents, evaluating whether foreseeability of an equivalent at the time of patenting prevented its use. In Ring & Pinion Services Inc. v ARB Corporation Ltd., the court held that 'foreseeability does not create a bar to the application of the doctrine of equivalents', in light of the copious case law according to which the concept of 'known interchangeability' supports a finding of infringement under this doctrine. The judges also clarified the relationship between the doctrine of equivalents and claim vitiation, reversing the district court's decision on the matter.

The case originated from a declaratory judgment action for non-infringement filed by Ring & Pinion Services against ARB Corporation, before the District Court for the Western District of Washington. The plaintiff sought declaratory judgment that one of its products did not infringe US Patent No. 5,591,098, which claimed an improved automobile locking differential. The parties agreed that the plaintiff's product met every limitation of Claim 1 of the '098 patent, except the limitation concerning 'cylinder means formed in said differential carrier and housing an actuator position[ed] to cause movement of said locking means relative to said carrier'. They also acknowledged that the product included an 'equivalent' cylinder, which would have been foreseeable to a person of ordinary skill in the art at the time of patent filing. In light of these considerations, the parties stipulated that the outcome of the case depended upon the resolution of a single legal issue, namely whether foreseeability precluded the application of the doctrine of equivalents. The district court provided a negative answer to this question, holding that foreseeability of an equivalent at the time of application did not prevent use of the related doctrine. The court, however, ruled that a finding of infringement under the doctrine of equivalents would have vitiated the claim limitation. Thus, it granted summary judgment of non-infringement to the plaintiff.

The Federal Circuit clarified that '[t]here is not, nor has there ever been, a foreseeability limitation on the application of the doctrine of equivalents'. In this perspective, the panel recited previous case law according to which 'known interchangeability' is a key factor to be taken into account when establishing infringement under the doctrine of equivalents analysis (see, inter alia, Abraxis Bioscience Inc. v Mayne Pharma Inc. and Interactive Pictures Corp. v Infinite Pictures Inc.). It also rejected Ring & Pinion's reliance on Sage Products Inc. v Devon Industries Inc. and on Chiuminatta Concrete Concepts Inc. v Cardinal Industries Inc.. With regard to the first case, the court observed that it merely recognized the possibility that a finding of infringement under the doctrine of equivalents may vitiate a claim limitation. On the second case, the judges clarified that:

In Chiuminatta, we explained that there are two differences between the equivalence determination made for literal infringement purposes under § 112(f) and a doctrine of equivalents determination for the same limitation: timing and function. Equivalence under section 112(f) is evaluated at the time of issuance [Al-Site Corp. v VSI International Inc.]. Equivalence under the doctrine of equivalents, in contrast, is evaluated at the time of infringement. Hence, an after-arising technology, a technology that did not exist at the time of patenting, can be found to be an equivalent under the doctrine of equivalents even though it cannot be an equivalent under the literal infringement analysis of § 112(f).

The second difference between literal infringement and doctrine of equivalents infringement under § 112(f) relates to the function of the element. For literal infringement, the accused structures must perform the function recited in the claim (identical function). The doctrine of equivalents covers accused structures that perform substantially the same function in substantially the same way with substantially the same results. The doctrine of equivalents thus covers structures with equivalent, but not identical, functions. This is true whether the accused equivalent was known at the time of patenting or later arising.

The appellate court, however, did not uphold the judgment of non-infringement rendered at first instance, noting that claim vitiation 'is not an exception to the doctrine of equivalents, but instead a legal determination that the evidence is such that no reasonable jury could determine two elements to be equivalent' (Deere & Co. v Bush Hog LLC). The panel noted that, in the case in hand, the parties had jointly stipulated to equivalence, agreeing that there were no remaining issues of fact. Thus, it concluded that the district court should have granted summary judgment of infringement to the patentee, in light of its findings on the applicability of the doctrine of equivalents, and of the parties' joint stipulation.

No, you can't be served with any more pleadings, judge tells defendants

Last Friday Mr Justice Mann, sitting in the Patents Court, England and Wales, gave a ruling in a hearing relating to the service of further pleadings in a patent infringement action. The case, Electromagnetic Geoservices ASA v Petroleum Geo-Services ASA & others, is not reported on BAILII but a note has been published on the subscription-based Lawtel service.

The patent in this action, which related to electromagnetic surveying for oil, had already been the subject of a previous challenge to its validity. Electromagnetic Geoservices ASA (EGA) claimed that the defendants had infringed the patent. The first two defendants had not served their defences and sought an extension of time. The third defendant had to be served out of the jurisdiction and that had not yet been achieved. According to the defendants, one of the reasons why the defences had not been filed was the uncertain nature of the case on infringement. Accordingly the defendants sought documentation in relation to the previous proceedings, as well as further particulars of the mode of operation which was alleged to infringe. Correspondence between the parties culminated in two letters from EGA's solicitors which gave particulars as to the manner in which the defendants' operations were alleged to infringe the patent, with the caveat that the position might be reconsidered following disclosure and in the light of any further information arising.

In these proceedings the defendants argued that EGA' case on infringement should be embodied in a pleading in order to achieve clarity and so that the defendants (i) could see whether there was a reasonably arguable case, (ii) could assess the shape of the action and formulate their own case, and (iii) could prepare their product and process description (PPD).

Mann J refused the application on the basis that, in the circumstances, the letters from EGA's solicitors were likely to be treated in the proceedings as though they were a pleading. In his view:

* since the defendants' operations took place on ships in the middle of the sea, EGA was relying on publicly available materials in order to give the best particulars it could of the allegedly infringing acts.

* what was requested by the defendant was something that was not usually done in patent cases and which appeared to be unnecessary in the circumstances. The letters from EGA's solicitors appeared to be full, frank and comprehensive. While the case set out in them was subject to variation after disclosure, that would be the normal position with a pleading.

* the defendants were sufficiently tied down to their case in the correspondence, and it would be a waste of time and costs to require a pleading -- there being nothing to be gained from the small degree of additional fixing which would result from a pleading.

* if the defendants wanted to apply to strike out the claim, they had the information on which to make a decision.

* if a pleading gave better particulars, the defendants might even be slightly worse off from that point of view and EGA would not be prevented from adducing further information to meet any strike-out application. 

* it was better not to depart from the usual course in patent actions which turned on issues of construction.

At this distance from the case and with no further facts, it's difficult to know whether the defendants were trying a crafty ploy or genuinely seeking clarification of EGA's claims. Either way, the court appears to have taken an approach which is both cautious and pragmatic.

CAFC Splits Sharply Over Deference To District Courts on Markman Rulings

In a February 20 en banc decision, the U.S. Court of Appeals for the Federal Circuit considered the proper standard for reviewing a district court’s claim interpretation. The court ruled 6-4 to retain its controversial de novo review standard, which considers claim construction afresh without deference to the district court’s ruling. In a strongly worded dissent, Justice O’Malley, a former district judge, criticized the majority. Lighting Ballast Control LLC v. Philips Electron. North Am. Corp., No. 2012-1014 (Feb. 21, 2014) (en banc).

A district court’s Markman hearing and subsequent claim construction order is a pivotal event in most patent infringement actions. One perplexing issue has been the proper standard for reviewing the claim construction ruling on appeal. Generally speaking, appeals courts review legal rulings under a de novo standard, but review factual findings on a deferential “substantial evidence” standard. The deference afforded factual findings reflects the district court’s unique position to evaluate witness testimony and other evidence at the trial level.

Markman rulings do not fall neatly into one category. In the original Markman decision, the Supreme Court ruled that district judges are responsible for construing claim language, but called the task a “mongrel practice” of law and fact with “evidentiary underpinnings[.]” In Cybor Corp. v. FAS Technologies, Inc., 138 F.3d 1448 (Fed. Cir. 1998) (en banc), the court ruled that claim construction ruling are subject to de novo review. That decision has drawn heated criticism, both from commentators and some federal circuit judges.

In Friday’s 6-4 decision, the Federal Circuit put the arguments against de novo review on full display. The majority decision, written by Circuit Judge Pauline Newman, considered three possible approaches to the issue. First, the court could retain the de novo standard it has maintained since Cybor. Second, it could adopt a hybrid standard, reviewing findings based on so-called intrinsic evidence (such as the patent specification and prosecution history) de novo, but granting deference to the district court’s consideration of extrinsic evidence, such as expert testimony at the Markman hearing. Third, it could review the entire claim construction decision under the deferential ‘substantial evidence” standard.

Newman concluded that the court should retain the de novo standard. The principal reason for that conclusion was adherence to stare decisis, and the absence of any compelling justification for adopting a different standard: 

Stare decisis is of “fundamental importance to the rule of law.” The doctrine of stare decisis enhances predictability and efficiency in dispute resolution and legal proceedings, by enabling and fostering reliance on prior rulings. By providing stability of law that has been decided, stare decisis is the foundation of a nation governed by law. The Supreme Court has said: “we will not depart from the doctrine of stare decisis without some compelling justification.” 

Slip op. at 17 (citations omitted). Judge Newman then concluded that such a compelling justification to overturn the Cybor rule does not exist: 

Applying these premises, we have reviewed the arguments for changing the Cybor procedure of de novo review of claim construction. First, we have looked for post-Cybor developments, whether from the Supreme Court, from Congress, or from this court, that may have undermined the reasoning of Cybor. None has been found, or brought to our attention. There has been no legislative adjustment of the Cybor procedure, despite extensive patent-related legislative activity during the entire period of Cybor’s existence. 

 We have looked for some demonstration that Cybor has proved unworkable. No proponent of change has shown that de novo review of claim construction is unworkable — nor could they, after fifteen years of experience of ready workability. Nor has anyone shown that Cybor has increased the burdens on the courts or litigants conducting claim construction. 

 To the contrary, reversing Cybor or modifying it to introduce a fact/law distinction has a high potential to diminish workability and increase burdens by adding a new and uncertain inquiry, not only on appeal but also in the trial tribunal. No consensus has emerged as to how to adjust Cybor to resolve its perceived flaws. Despite probing questioning at the en banc hearing, and despite the extensive amicus curiae participation, there is no agreement on a preferable new mechanism of appellate review of claim construction; there is no analysis of how deference would be applied to the diversity of old and new technologies and modes of claiming, no clear exposition of fact or law as could be applicable to the millions of unexpired patents, each on a different new technologic advance. As will be discussed, no one, including the dissent, proposes a workable replacement standard for Cybor, no workable delineation of what constitutes fact and what constitutes law. 

 Disentangling arguably factual aspects, some in dispute and some not, some the subject of expert or other testimony and some not, some elaborated by documentary evidence and some not, some construed by the district court and some not, some related to issues to be decided by a jury and some not—and further disentangling factual aspects from the application of law to fact—is a task ripe for lengthy peripheral litigation. We are not persuaded that we ought to overturn the en banc Cybor decision and replace its clear de novo standard with an amorphous standard that places a new, cumbersome, and costly process at the gate, to engender threshold litigation over whether there was or was not a fact at issue. The principles of stare decisis counsel against such an unnecessary change. 

Slip op. at 20-22. Newman also concluded that the de novo rules as critical to maintaining consistency and uniform interpretation of patents across the nation.

In a dissent, Circuit Judge Kathleen M. O’Malley, writing for three other judges including Chief Judge Rader, criticized the Cybor approach. She pointed out that the Federal Circuit judges have regularly objected to the standard, including Judge Newman and other judges joining the majority. She tweaked those judges, commenting that, “In fact, it appears that some members of today’s 6–4 majority believe the pull of stare decisis is so strong that it prevents them from acting on their long-term convictions that Cybor was wrongly decided. No reasoned application of stare decisis principles supports that conclusion." O’Malley, dissent at 2-3.

The dissent’s fundamental complaint about the Cybor rule is that it ignores the reality of the claim construction process, which – as the Federal Circuit in Phillips acknowledged – involves the consideration and weighing of testimony and evidence by the district court. O’Malley stressed that the Cybor rule directly violates the Federal Rules of Civil Procedure: 

Stare decisis also must give way because, by refusing to acknowledge the factual component of claim construction, Cybor contravenes the clear directives of Federal Rule of Civil Procedure 52(a)(6). When a district court makes findings of fact—as claim construction sometimes requires — Rule 52(a)(6) provides clear instructions to this court: “Findings of fact, whether based on oral or other evidence, must not be set aside unless clearly erroneous . . . .” The rule is clear on its face, and decisions interpreting it show that it makes no exception with regard to fact-finding in the claim construction context. As the Supreme Court has observed, “Rule 52(a) broadly requires that findings of fact not be set aside unless clearly erroneous. It does not make exceptions or purport to exclude certain categories of factual findings from the obligation of a court of appeals to accept a district court’s findings unless clearly erroneous.” Thus, there is direct conflict between Cybor—which expressly calls for de novo review of “any allegedly fact-based questions relating to claim construction,”— and Rule 52(a)(6) — which requires deference to all fact-findings that are not clearly erroneous. 

O’Malley, dissent at 23-24 (citations omitted).

Given the critical nature of claim construction in patent litigation, the controversy over the proper standard is not likely to disappear. The majority and dissenting opinions may tee the issue up for consideration by the Supreme Court. The full opinions, plus a concurring decision by Judge Lourie, are HERE.

Denmark and the UPC: breaking news

If Denmark's national aquarium looks like this, can
anyone imagine what its UPC building might look like?

From our friend George Brock-Nannestad comes news, fresh from Danish Radio station P1, that the current two-party Government in Denmark has entered into a political agreement with the parties outside the government Venstre, De Konservative, Liberal Alliance and SF (who broke away from the Government a couple of weeks ago) that a local department of the Unified Patent Court UPC) should be created in Copenhagen. There had previously been a proposal to create a Nordic local department. George adds:

Before getting further details about the agreement I consider this an attempt to make sure that the proposal for Danish ratification does not fall at the referendum that is to be made on the same date as the elections for the European Parliament on 25 May. The public debate has been very tiny, and it has been driven by the parties Dansk Folkeparti and Enhedslisten, who believe that how the UPC will actually function in practice is too uncertain to accept from the outset. 

An attempt to support ratification by the Government was tried a couple of weeks ago in newspaper debate, but it was completely overshadowed by the disruption of the Government. My own view is that there has been far too little information on the flood of patents that will submerge Danish SMEs: 10 times as many per year as the Danish validations of European patents as we know it.

White House Announces Array Of Programs To Fight Trolls, Improve Patent Quality

In his State of the Union address last month, President Obama promised further action to improve the U.S. patent system, stating (to significant applause) that the government should "pass a patent reform bill that allows our businesses to stay focused on innovation, not costly and needless litigation."  While more than a dozen patent-related bills percolate in the Congress, Obama has taken some steps to advance his goals through executive actions.

On February 20, the White House announced a series of programs to combat the patent troll problem and to improved the quality of patents generally. Three new programs were announced: (1) new procedures to allow examiner to take advantage of "crowd-sourced" prior art by making it easier for members of the public to bring prior art to the attention of the office; (2) better training for examiners in areas of rapidly-advancing technology; and (3) expanding the USPTO's patent pro bono initiative to cover low-income inventors in all 50 states.

The Whites House also reported on its progress on initiatives announced earlier.

• The USPTO has proposed a new rules requiring patentees to report the "attributable owners" of patents, making it harder for trolls to operate anonymously through shell companies. Those rules are in the public comment stage.
• A better training program for USPTO examiners, focusing on improving claims; 
• A new "toolkit" on the USPTO website proving small businesses with advice on what to do if sued by a patent troll. You can access a beta version of that toolkit HERE.
• Better outreach to stakeholders and expanding the Edison Scholars program to enlist more academics and researchers to study the NPE problem. 
• New procedures relating to enforcing exclusion orders from the ITC.

You can download a detailed Factsheet about these efforts from the White House website HERE. Although these steps seem incremental, and largely symbolic, they do suggest an effort to keep some momentum behind legislative patent reform efforts.

Mobile Devices in Oral Proceedings Before the EPO Boards of Appeal

If you ever wanted to call your psychiatrist in the course of oral proceedings before the EPO boards of appeal but did not dare to do so, you may be relieved by taking note of the following notice published Wim van der Eijk Vice-President DG3:

In oral proceedings before the Boards of Appeal under Article 116 EPC the parties and their representatives are allowed to have with them and to use portable computers such as laptops, tablets or other electronic devices provided that their use does not create any nuisance or disturbance. Where, for example, the use of an electronic device disturbs the oral proceedings, the chairperson may decide to forbid its use.

This blogger wonders whether the gender-neutral word "chairperson" will become a trend in our business. Actually, in the EPO context the word chairperson has recently appeared in the rules of procedure of the EPO select committee for implementing the tasks in connection with the patent with unitary effect. The first decision of the select committee was, however, singed by a chairman. The agreement on the UPC is not quite consistent in this point. According to Art. 12(5) of the agreement,
the Administrative Committee shall elect a chairperson from among its members years, whereas Articles 9, 10 and 18 refer to a chairman of the Administrative Committee.

It appears that we all will have to get used to this.

New Name and New Invalidity Procedure for German Registered Designs

Cornelia Rudloff-Schäffer - a friend
of handy names - at least for IP rights

The German IP right formerly known as Geschmacksmuster is a fairly powerful tool but has hitherto lingered in a niche existence. One of the reasons might have been that its name was difficult to pronounce for foreign applicants and even for the German public not very telling. According to the press release:

From 1 January 2014, designs - previously named "Geschmacksmuster" in German - will be called "eingetragenes Design" - meaning "registered design" - in Germany. The Act Modernising Designs Law and Revising Provisions for Notifications on Exhibition Protection (Gesetz zur Modernisierung des Geschmacksmusterrechts sowie zur Änderung der Regelungen über die Bekanntmachungen zum Ausstellungsschutz) of 10 October 2013 (Federal Law Gazette I 2013, no. 62, p. 3799) has also implemented other changes facilitating procedures for designs.

"With the renaming, we accommodate language developments," says Cornelia Rudloff-Schäffer, President of the DPMA. "The IP right's subject matter will become easier to understand, referring to both form and appearance of a product."

Invalidity proceedings for registered designs will also be introduced. The designs unit in Jena can declare a registration invalid if a respective application has been submitted. It can be based on absolute or relative grounds for invalidity. In civil proceedings, invalidity of a registered design can only be achieved by putting forward a counterclaim before the designs courts of the Länder from 1 January 2014.

Assessing the new European patent package: Newport, here we come!

Not everything to do with the new European patent package revolves round London and other major conurbations in which patent litigators tend to congregate -- and here's the proof.  "The Unitary Patent and Unified Patent Court: An Assessment and Outlook”, a seminar talk by Dr Thomas Jaeger, will take place at the University of South Wales (Newport City Campus) on 17 July 2014, 10.30 am to 12 noon. Attendance is free of charge, but you still have to register by emailing Ana Ramalho at ana.ramalho@southwales.ac.uk

Here's an abstract of the talk, in case you're interested: 

“The EU’s patent package enacted in 2012/13 ended a decade-long dispute whether an EU patent was needed and how cross-border patent enforcement could be made more effective. One would expect that the outcome of such a long debate should incorporate an optimal system. However, the contrary seems to be the case: Compromises successively introduced for legal and political reasons significantly altered the shape of the package as compared to the original plans. The substantive patent now envisaged is a strangely hybrid and, upon closer examination, deficient legal title. Likewise, the patent court as it is now designed neither seems to remedy key deficits of current cross-border enforcement, nor does it provide sufficient legal certainty and equal opportunities for potential users.

This lecture seeks to inform about the current state of affairs for the package. It will start with a brief outline of the substantive and structural elements of the patent package, then venture into a by a discussion of its principal shortcomings and close with an outlook and assessment on the pitfalls still ahead until the package may become operable”.