PATENT REFORM If the price is right
Te EEUPC seems to be a welcome and necessary prospect. Te European Patent Office (EPO) is already able to grant the European patent. Current law treats the European patent like a bundle of national patents when it comes to enforcement. Legal action in each relevant national jurisdiction is necessary when the patent is under legal debate.
Te new EEUPC would also have jurisdiction not only over the European patent, but over the proposed EU patent, which would provide patent protection throughout Europe. Te EU patent would be additional to the European patent, which is for selective rather than total coverage.
Vicki Salmon, a partner at IP Asset, an intellectual property firm based in the UK, and chair of the Chartered Institute of Patent Attorney’s Litigation Committee, believes the EEUPC is wanted by those that need to litigate their patents in more than one jurisdiction.
She says: “Te idea that you have to enforce what is essentially the same patent separately in each European jurisdiction, as opposed to just once, as in the US, doesn’t make commercial sense. One of the barriers to innovation is the cost of obtaining and enforcing patents. If this can be reduced, then innovation and the protection that people obtain for it, can be improved. A lot of people get priced out of trying to enforce patents because it’s too expensive.”
Te cost savings are important to those that need wide protection and wish to enforce a patent in many jurisdictions, but these entities may be in the minority, according to Jochen Pagenberg, a founding partner of Bardehle Pagenberg, a German patent law firm. Pagenberg is president of the European Patent Lawyers Association, a member of the Expert Group of the EU Commission for the EEUPC and has served as an expert on the Working Party for the European Patent Litigation Agreement.
He says: “Small and medium enterprises (SMEs) oſten file their European patents in fewer than 10 countries. Tere are not many patent cases involving SMEs that are litigated in more than one or two countries. Some practitioners estimate around 5 to 8 percent, so [for this percentage] a court in their own country where they can speak their own language and choose their own attorneys may be a comfortable situation. If a litigation system for the large corporations is being discussed, one should not forget the SMEs and not force them into the same system with the big ones.”
Te proposal for the exclusive jurisdiction of a single patent court—not only over future EU patents, but also over existing European patents—could provide an intolerable financial risk for SMEs that was not there before.
Currently, a European patent can either be challenged in a relatively inexpensive opposition proceeding at the EPO or in each of the individual countries for which it has been granted. Te EEUPC would make it possible to challenge a European patent’s multiple validities in a single court. For SMEs that rely on the rights provided by only a few patents, this could put their very livelihoods at risk. “Te centralisation of all litigation in one court opens up the possibility of a counterattack as an invalidation request for all designated countries,” says Pagenberg.
defendants in an infringement litigation have to go to the EPO with an opposition proceeding and/or could use the national courts, but only one by one. Tis usually means only the one where the infringement case has been filed.”
“ THE IDEA THAT YOU HAVE TO ENFORCE WHAT IS ESSENTIALLY THE SAME PATENT SEPARATELY IN EACH EUROPEAN JURISDICTION, AS OPPOSED TO JUST ONCE, AS IN THE US, DOESN’T MAKE COMMERCIAL SENSE. ONE OF THE BARRIERS TO INNOVATION IS THE COST OF OBTAINING AND ENFORCING PATENTS. IF THIS CAN BE REDUCED, THEN INNOVATION AND THE PROTECTION THAT PEOPLE OBTAIN FOR IT, CAN BE IMPROVED.”
Te unknowns of the EEUPC make it difficult to know what the final litigation system will look like, or what the exact benefits and risks of such a system would be. Benoît Battistelli, president of the EPO, recently commented on the drawbacks of defending a patent in each member state of the EPO. He said: “[It] costs a lot of money and time, and sometimes there are contradictions in the national judge’s decisions.” It is hoped the EEUPC will combat these issues, but Catriona Hammer, senior IP counsel at GE Healthcare, a company that owns patents in fields such as medical devices, medical soſtware and life sciences, prefers to have a certain system that will meet the specific needs of her business.
She says: “Looking at our patent portfolio as a whole across Europe, it’s very difficult to say what the impact of the EEUPC will be, because there’s still a lot of uncertainty about what it’s going to end up looking like. It’s also uncertain whether it will result in more or less litigation in Europe. What we’re looking for is a high-quality, cost- effective litigation system for Europe. We do not want a poor-quality system to be forced through as a political compromise—we would rather keep the current system.
“Right now our major concern is with the privilege provisions, which are inadequate as currently proposed. For example, it appears that communications between the patent attorney draſting the initial patent application and the inventor may not be privileged when the initial application is prepared outside of Europe. Te IP Federation has prepared a good position paper on this topic.”
Shop ‘til you drop
“Tis is a large risk. It could be done with long trials, costly expert opinions, witness hearings and so on. But at the same time, the threat of losing the coverage of all the designated countries in a single litigation could be a reason for an SME to file in national patent offices rather than the EPO. For SMEs, it is a cost and risk question.”
He says: “I’ve always proposed that European patent filers should have the option of not using the new EEUPC, allowing them to keep their litigation in the national courts that they have always used. Tis would exclude the possibility of a central attack in one court, because then
14 World Intellectual Property Review November/December 2010
Te EEUPC draſt agreement makes provisions for a first instance court and a second instance, appellate court. Te first instance court, according to the draſt agreement, will be split into local and regional divisions, as well as a single central division.
Article 15a of the draſt agreement says that actions will usually be brought before the host of a local division or the participant of a regional division where the infringement of a patent occurs, or where the defendant is domiciled. If there is no local or regional division, then actions can be brought before the central division.
www.worldipreview.com
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