The IPKat was puzzled by one of the arguments apparently used in a recent High Court hearing (see the recent post here). The point was made, in respect of the current Patent Office practice to reject computer program product claims, that when EPC2000 comes into force a UK court would have the power to force a patent proprietor to limit his patent centrally via the new limitation and revocation procedure under Articles 105a-c EPC2000. Since the EPO practice of allowing such claims continues, a UK court could then (so the argument goes) force the claims to be deleted for all EPC states, even though the claims might only be invalid in the UK.
The IPKat was sceptical about whether this could actually happen, but it was pointed out by an anonymous commenter (here) that there will be a new provision in UK law that could allow it. This is new subsection (4) of section 63 of the Patents Act 1977, which will come into force next week to coincide with the start of EPC2000:
(4) The court or the comptroller may also grant relief under this section in the case of a European patent (UK) on condition that the claims of the patent are limited to its or his satisfaction by the European Patent Office at the request of the proprietor.This would allow a court or the comptroller to force a patent proprietor to amend his patent to be allowed any damages, if it was held that his patent was only partially valid. The effect would, however, under the limitation procedure be that the patent would have to be permanently limited in respect of all EP member states, not just in the UK (which the equivalent provision of section 63(3) is there for).
The IPKat was unaware whether this new provision was to be a general principle put in place across Europe to harmonise patent law, so he asked fellow blogger and patentanwalt Axel Horns (of the IP::Jur blog). Axel says he is unaware of any clause in German patent law that would resemble what is being put in place in UK law. It also seems that there couldn't be such a clause, due to the separation in Germany of validity and infringement in the courts.
If in fact there is no equivalent provision in German law, then this could cause an interesting conundrum for patent proprietors, if they wish to claim damages for infringement of their patent. Is this another argument for not choosing England as a place to enforce a patent? Regardless of this, is the new provision allowing extra-territorial jurisdiction in by the back door? The IPKat would very much like to see what others think about it.