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Thursday, 1 November 2012

Europe's patent judges call for improvements to Draft Agreement on Unified Patent Court

The IPJA's 1 November 2012 Resolution
Following in the footsteps of the Max Planck Institute and AIPPI, the Intellectual Property Judges Association (IPJA) has today published its conclusions on the proposed Unitary Patent and Unified Patent Court (to be posted here as soon as Google Documents starts working). The IPJA meets annually in Venice (nice work for some) and comprises of Patent Judges from 12 EU Member States.

The document sets out three key points which represented issues of the most concern to the judges.  These were: (1) arguing that Article 118 TFEU does not require that questions of patent infringement be EU law; (2) arguing that the Draft Agreement on the Unified Patent court should be improved and annexing amendments to the Draft Agreement to paper; and (3) proposing that a defendant should not be given the right to request a transfer of an infringement case from a regional division. The three conclusions, signed off on behalf of the IPJA by its President Sir Robin Jacob - who said that the amendments could "make all the difference between success and failure" - reads as follows:
1. That they are (save for 2 Judges) of the opinion that Art.118 of the TFEU does not require that questions of what acts amount to infringement of a patent should be matters of EU law. All that Art. 118 requires is that any IP right created pursuant to Art. 118 should have a unitary and uniform character.

2. That the Memorandum (copy annexed) identifying points for improvement of the draft agreement to the Unified Patent Court identified by the Court Rules Drafting Committee (whose members included French, German, and British judges) was seen by that Committee as uncontroversial. The Judges in Venice agreed both that the points are uncontroversial and that if incorporated in the ultimate agreement would result in very important improvements to it.

3. That although in the existing proposals there is no possibility for the defendant to request a transfer of an infringement case from a local division to the central division, there is not the same rule with regard to a regional division. Giving the defendant the right to request a transfer of an infringement case from a regional division would undermine the position of the regional divisions as competent divisions for infringement cases. It will cause unjustified delay or even completely deter claimants from bringing an infringement action before a regional division.

As regards to Resolution 2, the Annex sets out eight key amendments to the Draft Agreement following the deliberations of the Drafting Committee (of which, of course, includes a French, German and English patent judge). These include, but are not limited to, the following:
  • Amending Article 15(a)(5) to ensure that it does not prevent a patentee or exclusive licensee from commencing an infringement action after 3 months following the commencement of declaratory proceedings in the Central Division.
  • Adding in a new clause Article 34(a)(3) to provide a power to order compensation to a defendant when an order of the court is subsequently revoked owing to, for example, invalidation of a patent or the reversal of a decision by the Court of Appeal.
  • Adding a new second sentence to Article 45(1a) to ensure that there is a general power to appeal procedural decisions with the leave of the Court of First Instance, or if such leave is refused, to provide for leave to the Court of Appeal.
  • Adding a new Article - Article 14(j) - to address the issue of accessory liability which provides that where a third party commits an act of infringement another party shall be jointly liable with the first party for that act if, but only if, "that party procures the commission of the act in question or that party participates in a common design to commit the act in question".
  • Adding reference to the power of the court to amend patents at a new sub-clause Article 15(1(c2)
  • Clarifying Article 27(4) on patent proprietors being joined as a defendant should they not agree to be joined as a plaintiff in actions initiated by a licence holder. Patent proprietors in these cases shall not be obliged to take steps in the proceedings and if it does not take any steps, it will not be liable for costs.
The AmeriKat welcomes this resolution from IPJA and the concrete suggestions made by the judges to the Draft Agreement. In particular, she rejoices that there is a provision dealing with accessory liability (a lacuna that had been raised Mr. Justice Arnold in respect of the proposals) and the ability for the court to amend patents. She hopes that those in Brussels will take notice of the amendments proposed by this learned "interest group" when formulating the final version of the Draft Agreement. Further, she hopes that IPJA's comments as to the true construction of Article 118 TFEU will only support the current rumor that Articles 6 to 8 have indeed been deleted and replaced with an alternative provision.

Also today, the AmeriKat received news from Vicki Salmon (IP Asset) that the A-G's decision in the Italian and Spanish references on the use of the enhanced cooperation procedure will be delivered on 11 December 2012 .

8 comments:

Gibus said...

"Following in the footsteps of the Max Planck Institute"

This is very misleading, as regards the first point. The MPI says exactly the opposite: removing article 6-8 from the regulation would not comply with Art. 118 TFEU.

This has long been said and demonstrated, I won't repeat again the arguments and references. The Amerikat and patent judges does not want to hear. Go on, and you'll never have any unitary patent...

Gibus said...

I'm sorry but I've missed something about the idealogical wish that deleting Arts 6 to 8 from the regulation would be compliant with Art. 118 TFEU.

First, note that this is not a unanimous opinion, even among Venice patent judges: two of them do not think so.

Second, note the difference between IPJA:

"1. That they are (save for 2 Judges) of the opinion that Art.118 of the TFEU does not require that questions of what acts amount to infringement of a patent should be matters of EU law. All that Art. 118 requires is that any IP right created pursuant to Art. 118 should have a unitary and uniform character."

and Max-Planck Institute:

"10. Incorrect legal basis for the unitary patent.

Art. 118(1) TFEU provides a legislative basis for the “creation of European intellectual property rights to provide uniform protection of intellectual property rights throughout the Union”. Accordingly, the provision envisages the establishment of a regime of protection which derives its substance from EU law. The Unitary Patent Package falls short of this.

a. Mismatch with the legal basis.

The UP Regulation claims EU origin for the unitary patent, but disclaims EU law quality for its central features (see reason 9.a). This approach is not covered by the scope and purpose of Art. 118(1) TFEU. At the very least, the terms of the individual right granted under the UP Regulation (patentability, exclusivity, property) must be such as to enable the ECJ to exercise its judicial review. This is even more necessary since the unitary patent forms part of the rules governing the functioning of the Internal Market.

b. Evasion of the EU legislative process.

Under the consistent jurisprudence of the ECJ, recourse must be had to legal bases where they are provided for in EU law. There is no legislative discretion as to what aspects of the unitary patent may be regulated in the UPCt Agreement vis-à-vis the UP Regulation. This concerns in particular the definition of the scope of exclusivity. Otherwise, the procedures and procedural safeguards provided for in the Treaties would be side-stepped and the principle of institutional balance compromised. A similar issue arises regarding the relationship between Art. 114 TFEU and the rules on infringement of the European patent in the UPCt Agreement."

IPJA has only an opinion. MPI has reasoned arguments.

But as the AmeriKat says, these judges are only an "interest group". Moreover, they are interested by being promoted as judges of the newly (if ever) created UPC. No doubt, that these judges will gain some powers if they are elected to seat at the UPC. No doubt also they do not want this power to be under the control of even more powerful judges, namely those of the CJEU.

Anonymous said...

...or maybe they don't want to see the whole system put to waste by a bunch of incompetent amateurs in the higher court.

Mark Anderson said...

"The Amerikat and patent judges does not want to hear".

So far, I have heard patent judges in several continents, all the IP lawyers that I have heard express views, and the British prime minister all saying the same thing - drop Articles 6-8. The main counter-view seems to come from people whose interest in IP is less than their interest in the powers of European institutions, including some in the European Parliament.

On an unrelated topic, why are so many correspondents on IPKat anonymous? I am much more open to persuasion by comments from people who identify themselves and whose CV I can see on LinkedIn or on their firm's website.

Gibus said...

@Mark Anderson

Here is a non-exhaustive list of people having said that removal of Arts 6-8 would not comply with Art 118 TFEU:

* Reto M. Hilty, Thomas Jaeger, Matthias Lamping, Hanns Ullrich from the Max-Planck-Institute for Intellectual Property and Competition Law, in a common paper The Unitary Patent Package: Twelve Reasons for Concern, summarizing analyses by Thomas Jaeger (All Back to Square One? - An Assessment of the Latest Proposals for a Patent and Court for the Internal Market and Possible Alternatives) and Hanns Ullrich (Harmonizing Patent Law: The Untamable Union Patent and Select from Within the System: The European Patent with Unitary Effect);

* United-Kingdom European Scrutiny Committee;

* Legal service of the European Commission;

* Legal service of the European Parliament;

* Klaus-Heiner Lehne, chairman of the Legal Committee (JURI) of the European Parliament, lawyer and partner at international law firm Taylor Wessing (Düsseldorf);

* Bernhard Rapkay, rapporteur on the Unitary Patent regulation;

* Winfried Tilmann, Attorney-at-Law (Hogan Lovells, Düsseldorf), member of the German Association for Intellectual Property and Copyright and the European Patent Lawyers Association (EPLAW), advisor in patent and trademark law in the German Federal Ministery of Justice, members of the Rules of Procedure Committee for the Unified Patent Court;

* Ferdinand Visscher, Attorney-at-Law (Simont Braun, Brussels), Past President AIPPI Belgian Group, Founding member and past secretary to EPLAW, Visiting Lecturer, Université catholique de Louvain (Belgium), in European Unified Patent Court: Another More Realistic and More Equitable Approach Should be Examined, GRUR Int 2012, Heft 3;

* And of course, myself in Academics Confirm Flaws in the Unitary Patent, various posts on https://www.unitary-patent.eu and many comment on this blog…

Do you really think that all these people have "interest in IP is less than their interest in the powers of European institutions"? I think that you shouldn't weight one side to be more a matter of interest than the other. That is the problem with proponents of a removal of Arts 6-8, as illustrated by Anonymous comment above (Friday, November 02, 2012 12:02:00 AM), they tend to think that people who are not members of the patent microcosm are "incompetent amateurs". But patent law isn't isolated.

(about "anonymous", I share your concern)

Mark Anderson said...

@ Gibus. Hold on a minute. I have not checked all your claimed supporters, but the very first of your links I looked at - the European Scrutiny Committee - included the following statement:

We agree with those who so strongly oppose the inclusion of Articles 6 to 8 in the unified patent Regulation.

Gibus said...

@Mark Anderson

Maybe you can read and report just the next sentence:

"There is, however, in our opinion an inevitability to their inclusion."

That is what I mean, proponent of removal might have their own reasons, such a removal is not compliant with EU Law.

Then note the final conclusion of UK European Scrutiny Committee : "This calls into question whether incorporating a unitary patent regime within the EU will ever be practicable."

To be clear: if you don't want CJEU, then you cannot have a EU unitary patent.

Mark Anderson said...

So be it.

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