For the half-year to 30 June 2014, the IPKat's regular team is supplemented by contributions from guest bloggers Alberto Bellan, Darren Meale and Nadia Zegze.

Two of our regular Kats are currently on blogging sabbaticals. They are David Brophy and Catherine Lee.

Thursday, 6 December 2007

Extra-territorial jurisdiction by the back door?

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.

6 comments:

Anonymous said...

Doesn't Section 63(4) simply give the proprietor the option of centrally amending the EP patent as an alternative to just amending the GB part?

David said...

Not according to how I read it. The "at the request of the proprietor" bit refers to the fact that only the proprietor can apply for limitation under Articles 105a-c. It would not therefore be an option if the court/comptroller insisted on limitation being done in order to get damages.

Anonymous said...

David, I would note the difference in language between (3) and (4) - in the former the wording is "may direct" and in the latter "on condition". 63(4) seems to be saying to me - that an application for amendment at the EPO has the same effect as amending just the GB part in the jurisdiction and so (4) provides the patent proprietor with this option, i.e. amend just the GB part or all the parts.

David said...

You could be right, and that interpretation seems to make sense. However, wouldn't it make more sense if the amendment instead went: "The court or the comptroller may, at the request of the proprietor, grant relief under this section in the case of a European patent (UK) on condition that the claims of the patent are limited by the European Patent Office to the court or the comptroller's satisfaction"? Is it simply a badly worded amendment?

Perhaps we will find out when the Astron Clinica judgment comes out.

Orchidy said...

Aah...if only the Parliamentary Draftsmen were as well trained and rigourous as David.

See for example Rule 6C(1)(c) of the current Patents Rules, which allows the comptroller to ask for a translation of the priority application where "the matters disclosed in the priority application are relevant to the determination of whether or not an invention, to which the application in suit relates, involves an inventive step (sic)"

mad_as_a_hatter said...

Interesting: I do not believe that it was the intention of the (EPC) legislator to allow member states to apply national provisions at a Europe wide level. I think that a national law which forces a European patent proprietor to limit his patent outside the jurisdiction of that law is in conflict with the provisions of the EPC, which states in Art.105a EPC that the limitation is only performed "at the request of the proprietor". This is not strictly according to his request when he is forced to do so by a Judge of a national court. Furthermore, it is also possible that a European patent has different proprietors in respect of different designated European States. What a Judge in the UK orders the proprietor to do according to the centralised limitation procedure is not binding under the relevant national provisions on the proprietors in respect of other EPC states, since they are not party to the proceedings in the UK. However, the consent of these other proprietors is still required in order for the UK proprietor to request centralised limitation procedure at the EPO (Rule 92(2)(c) EPC and EPC Guidelines D-X, 2.2). The EPO will not allow limitation of the claims in respect of only certain states and not others purely based on different interpretations of patentability requirements in the EPC Contracting States (see Art.118 EPC, Rule 138 and EPC Guidelines D-X, 10.1).

Subscribe to the IPKat's posts by email here

Just pop your email address into the box and click 'Subscribe':