Parallel proceedings in the UK courts and the EPO: a new article

"Parallel patent proceedings between the European Patent Office and UK courts" is the title of a recent article by Paul England (Taylor Wessing) in the Journal of Intellectual Property Law & Practice (2015). The print version is not yet out but you can access it online via the JIPLP website. Subscribers to the online edition can access it as part of their subscription, while non-subscribers can purchase limited-time access from the same site.

 According to the abstract

In the European patent system, proceedings concerning patent validity can run concurrently in both the European Patent Office (EPO) and a number of national courts. In the UK, a number of cases have addressed the details of how the relationship should be managed between the courts and the EPO when such parallel proceedings are on foot.

Until recently, this had appeared to be settled by rules and guidelines that were logical, if not ideal in all their implications. However, a series of recent cases concerning the revocation and amendment of patents in the EPO have now posed difficult questions for judges at first instance and on appeal.

The solutions have required a significant shift in the UK and EPO relationship and raise awkward questions of their own about the possibility of patents being re-litigated between the same parties. This matters at another level, because the UK experience may inform the relationship between the Unified Patent Court (UPC) and the EPO in similar circumstances.

Spanish challenge to new European regime: is the Court of Justice failing to engage with the issues?

German attorney and Certified Specialist for IP Law Ingve Stjerna has written a further analysis of the current judicial scrutiny of the European Union's proposed (but not yet operative) new regime for patents.  It's "Unitary patent“ and court system – Advocate General’s Statements of Position: Superseded by reality" and you can access it via Ingve's website here.  Focusing on the Advocate General's Opinion in Case C-146/13 Spain v Parliament and Council [which, astonishingly, is still not available in English] and the implications of the most recent events at the EPO, Ingve sets the scene as follows:

On 18 November 2014, Advocate General Yves Bot‘s Statements of Position in the Spanish nullity proceedings against the two Regulations on the “unitary patent” were published, his recommendations to the Court being a rejection of the actions. Once again, the legal issues are subordinated to the political interest in the implementation of the “patent package”, however, based on a widely not very convincing argumentation. Especially the Statement in case C-146/13 largely tries to avoid any contextual debate of the critical aspects raised, e. g. in relation to the adequacy of legal protection at the European Patent Office, while contradictions and misunderstandings occur repeatedly. Not least in view of the recent events at the European Patent Office, culminating in the suspension of a Boards of Appeal member by the President, the question arises to what extent the Statements of Position can form a suitable basis for the Court’s decision at all.

Ingve's conclusion is as follows:

The presented Opinions are not convincing. When comparing them to the Opinion from proceedings 1/09, which addressed the existing problems in all their clarity, they rather seem to endeavor avoiding any confrontation with the controversial issues and to seek to easiest way to come to a rejection of the complaints. The impression arises that it is sought to achieve a predefined result, without having well-founded arguments supporting it. This may imply that a serious discussion of subject matter is possibly not wanted, because all the institutions involved anyhow wish to nod the package through.

One decisive aspect will be whether, despite the neglect in dealing with this issue in the Opinion, the CJEU will be prepared to tackle the situation at the EPO. Should they avoid this or not deal with it exhaustively, the focus will shift to the national Constitutional Courts for this examination, especially to the German BVerfG due to its mentioned powers to review ratification statutes. Since ratification by Germany is obligatory for the UPCA to enter into force, a veto by the BVerfG would stop the whole project. Already for this reason, it will be interesting to see how the CJEU will deal with Spain’s actions. Its judgments should be given in spring 2015.

PatLit looks forward to reading Ingve's comments when the CJEU finally gives its decision.

Patent litigation and implications of EU federalisation: more study needed

"The European Unified Patent Court: Assessment and Implications of the Federalisation of the Patent System in Europe" is the title of an article by Dimitris Xenos (Lecturer in Public Law and Intellectual Property Law, School of Law and Social Sciences, University of East London), which has just been published in the latest issue of the excellent online peer-reviewed IP/IT journal SCRIPTed.

The subject of the article is easily guessed from its descriptive title, which indicates that it will be of great interest to readers of this weblog -- but its content is not, with the author calling for far more rigorous and methodologically sound studies on the likely impact of the new system, given that the issues involved are so complex and cannot easily be understood by non-experts, nor even by the patent profession itself. It's worth taking a look at the author' conclusions, quoted in relevant part here:

"... Unlike the federal model of the US which the UPC tries to imitate, the European states do not form a federation. As a result, there cannot be a uniform economic policy that will influence the setting of the legal standards of patents, because the economic and technological needs and capacities of the European countries vary considerably. Another important difference is that the UPC will create a centralised institution that escapes the democratic control of the people on whom the legal standards will be imposed. Indeed, a new form of monopolistic source of legal power will be established that has no precedent in the world’s democratic political history.

... To the extent that the UPC replaces the national courts in the legal disputes relating to patents with unitary effect, the determination of patents as objects of property and the distribution of justice will mainly be made by this new source of legal power. ...[C]rucial issues of property rights and the underlying economic sustainability policies on which the future and well-being of a country depends will be decided by a body of foreign judges.

... For the large body of SMEs which do not have patents, or patents of strong market relevance, the situation can be illustrated as follows: Under the current regime when a foreign company sues a SME that is based in the UK, the case will be tried in the UK courts and in the English language. Under the UPC, the UK SME might stand as a defendant in a litigation that takes place abroad, in another language and in various judicial forums. The same applies to the majority of SMEs in other EU countries. More seriously, the legal principles against which the case will be examined will no longer by influenced by the adjusting ability of national courts.

In short, the issue of surrendering an important element of national sovereignty that concerns vital economic policies and property rights requires a comprehensive economic study about the effect that the UPC will have on local business and economy. Irrespective of whether or not the UPC is challenged in national courts (e.g. the state’s sovereign ability to determine property rights; the right to fair trial regarding the language issue in patent litigation, etc), or there is a constitutional obligation for a referendum (e.g. Ireland, Denmark), non-expert politicians and lay people cannot rely solely on an outdated study which was of limited scope that the EU Commission has presented to the states nor can they rely solely on the advice of the patent profession which benefits most from the considerable expansion of its business activities. Since the very important issue of national sovereignty in the context of patents is at stake, comprehensive and thorough national economic studies must be prepared in order for the decision-makers to make an informed choice, and the people, who will ultimately come to evaluate this choice, to be able to understand the various parameters involved".

Intent and indirect infringement: a comparative article

"What intent, whose intent, and to what extent? The knowledge requirement in indirect patent infringement" is the title of an article by David Nilsson (Bird & Bird, Stockholm) and Timo Minssen (assistant professor, Centre for Information & Innovation Law (CIIR), University of Copenhagen). According to the abstract:

"Recent UK and US case law has shed light on the requirements for a successful indirect patent infringement claim, in particular the knowledge requirement. In light of these cases, the knowledge requirement in indirect patent infringement will be analysed in the US, the UK, Germany and Scandinavia.

Courts in Community Patent Convention (CPC) jurisdictions will probably look to each other for precedent. While knowledge of the patent appears to be required in the US, it does not seem to be required in CPC countries. The requisite degree of knowledge required in the US appears to be the specific intent of the indirect infringer, whilst in Germany and the UK it is the supplier's knowledge of the intention of the buyer that matters. In the CPC countries, it suffices that the knowledge exists at the time of offer. Presumption of intent if means provided are particularly suited for use according to patent or supplier has highlighted such use in marketing or other informational materials in the CPC countries.

Recent US and UK case law in respect of indirect patent infringement, in particular the knowledge requirement, useful for both patentees and suppliers".

This article, which appears in the Journal of Intellectual Property Law & Practice, was first published online on 2 April 2012, doi:10.1093/jiplp/jps023. The printed version will be published in due course. The article can be accessed for a charge on a limited time basis from the JIPLP website here.

Germany: bifurcation and best-buys

The Journal of Intellectual Property Law and Practice (JIPLP) published online earlier this week, for the benefit of subscribers to its electronic version, an article by Jochen Herr and Marc Grunwald (both of Field Fisher Waterhouse) entitled "Speedy patent infringement proceedings in Germany: pros and cons of the go-to courts". According to the abstract:

"Legal context. Due to the bifurcation of nullity and infringement proceedings in Germany, the infringement issue there is often resolved quickly.

Key points. This applies in particular as compared to other member states of the European Union. However, the various German first instance courts differ in the way cases are managed and in the average duration until judgment.

Practical significance. This article aims to provide insight into the three most important district courts dealing with patent litigation, thereby alerting the reader to what may be central issues in choosing a venue when litigating patents in Germany".

Non-subscribers can read this article by clicking here and scrolling down to "Purchase Short-Term Access". Articles in JIPLP are first published online, normally several weeks ahead of the printed version.

Unitary patent "would advantage the English, French and Germans"

"The EU Embraces Enhanced Cooperation in Patent Matters: Towards a Unitary Patent Protection System" is a recent article by Enrico Bonadio (City University London; The City Law School of City University, London). It has been published in issue 3/2011 of the European Journal of Risk Regulation and is now available in full on SSRN here. According to Enrico's abstract:

"On 13 April 2011 the Commission tabled a package of two legislative proposals implementing enhanced cooperation in the field of unitary patent protection and translation arrangements. Such proposals were subsequently agreed upon by the EU ministers in an Extraordinary Competitiveness Council on 27 June 2011. 

The objective of this regulatory move is to offer innovators in Europe a unique patent right which can only be transferred, licensed, revoked or may lapse in all the Member States which participate in the enhanced cooperation. 

However, Spain and Italy have chosen to remain outside the enhanced cooperation system and challenged before the Court of Justice of the European Union (CJEU) the Council Decision of 10 March 2011 authorizing such cooperation. They point out inter alia that the envisaged system would advantage applicants coming from EU English, French or German speaking countries".

Readers are invited to peruse Enrico's piece, which is a refreshingly brief five sides of pdf, and let PatLit (and Enrico) know what they think of it.