tag:blogger.com,1999:blog-5574479.post3682788673162268064..comments2024-03-28T16:45:51.051+00:00Comments on The IPKat: Will the German exchequer be laughing to the bank courtesy of Article 10 of the proposed Regulation on unitary patent protection? (UPDATED)Verónica RodrÃguez Arguijohttp://www.blogger.com/profile/05763207846940036921noreply@blogger.comBlogger15125tag:blogger.com,1999:blog-5574479.post-27900731631450147882011-12-07T11:26:06.289+00:002011-12-07T11:26:06.289+00:00The Rome I and Rome II Regulations both give way t...The Rome I and Rome II Regulations both give way to choice-of-law rules set out in other EU legislation (Art. 27 of Rome II; Art. 23 of Rome I). So a conflict-of-law rule in the unitary patent regulation - which presumably means Art. 10 of that Regulation - would trump them. However, there could be a complication because Spain and Italy are subject to the Rome I and II Regulations, but will not be subject to the unitary patent Regulation; while the reverse will be true of Denmark (except that Denmark, and the other Member States in their relations with Denmark, are still bound by the prior Rome Convention, which contains an equivalent rule in Art. 20). <br /><br />As for jurisdiction, the normal rule is that the court of the defendant's domicile (if the defendant is domiciled in a Member State) has jurisdiction over proceedings, but there are lots of special rules, including exclusive jurisdiction rules relating to immovable property (which wouldn't apply) and to proceedings concerning the validity or registration of patents - where, inter alia, proceedings must be brought where an EU instrument deems the deposit or registration to have taken place. Art. 10 of the unitary patent Reg would presumably be relevant there - except, of course, again there could arguably be a complication, to the extent that Spain and Italy are not bound by it. Of course, not all patent disputes concern validity or registration, and in those cases the general jurisdiction rules apply. But all of these rules will be reviewed as part of the process of revising the jurisdiction regulation, which is already underway - see the link to the document in the Amerikat's later post.Steve Peersnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-24420662706624448212011-12-07T08:05:55.729+00:002011-12-07T08:05:55.729+00:00"In these situations, if it defaults to Germa..."In these situations, if it defaults to German law, won't the German courts have to decide?"<br /><br />As Steve said jurisdiction on the one hand and applicable law on the other hand are something completely different.<br /><br />The internationally competent court is determined based on the EU jurisdiction Regulation. Using this regulation, British courts could have jurisdiction.<br /><br />However, for determining the applicable law you have to apply the Rome I and II Regulation.<br /><br />Thus, British courts could decide based on German law and vice versa.<br /><br />As Steve already set forth the provision in question means that German law (NOT courts) will apply in certain cases.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-62104353532684904602011-12-06T22:42:54.499+00:002011-12-06T22:42:54.499+00:00A UK judge interpreted US law a few years ago in a...A UK judge interpreted US law a few years ago in a patent licence dispute - Celltech v Medimmune with Mr Justice Jacob.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-55730122928963966272011-12-06T22:22:45.727+00:002011-12-06T22:22:45.727+00:00Steve, let's take the example of a dispute ove...Steve, let's take the example of a dispute over the what happens to a co-owner's interest on death, or whether a licensee is entitled to sublicense, and let's assume there is no contract between the parties on these points governed by a different law. Do we not then have to default to national property law? In these situations, if it defaults to German law, won't the German courts have to decide? Surely an English court is not competent to decide on the rights of co-owners of property on death under German law?<br /><br />Just some initial thoughts - I am not an expert in international law! If I were I might start using terms like lex situs...Markhttp://www.ipdraughts.wordpress.comnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-372963650899629982011-12-06T20:01:11.136+00:002011-12-06T20:01:11.136+00:00Thanks for the explanation! I agree with the comme...Thanks for the explanation! I agree with the commenter at 3.28 - this looks like a fallback option when all else fails, which must be pretty rare.Tom Mnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-53933871287536039612011-12-06T18:42:56.970+00:002011-12-06T18:42:56.970+00:00Isn't Germany already the default jurisdiction...Isn't Germany already the default jurisdiction for ownership disputes for EP applications if the parties are from non-contraciting state countries?Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-17766094866643927032011-12-06T16:38:15.832+00:002011-12-06T16:38:15.832+00:00If it read 'a residence or place of business&#...If it read '<b>a</b> residence or place of business' that more limited interpretation might be a very natural one. As it is, one might think that 'principal' is put in to emphasise that where the applicant has more than one place of business (or residence) it is the principal one that counts.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-87256212702733980132011-12-06T15:52:28.027+00:002011-12-06T15:52:28.027+00:00Obviously this provision means that German *law* w...Obviously this provision means that German *law* will apply in certain cases, presumably prevailing over the Rome I and II Regulation to the extent that they might otherwise apply; but how does it necessarily follow that the German courts will have *jurisdiction* over such disputes? The choice of law does not necessarily determine the jurisdiction, and vice versa; and the EU jurisdiction Regulation is also in the midst of a revision process. So jurisdiction is whole different kettle of fish (as the Kats might say).Steve Peersnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-41242657953318407992011-12-06T15:29:43.312+00:002011-12-06T15:29:43.312+00:00But hopefully readers will have taken the several ...<i>But hopefully readers will have taken the several opportunities presented in the post to click on the text of Article 10...</i><br /><br />Is that sneaky or not - how to get people to read something they'd rather not have read.<br />Only a true cat could have come up with that ... <br />:-)Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-81905857762592068642011-12-06T15:28:21.674+00:002011-12-06T15:28:21.674+00:00Isn't the post unnecessarily alarmist? Let'...Isn't the post unnecessarily alarmist? Let's go back to Art. 10(3):<br /><br /><i>Where no proprietor has his/her residence, principal residence, principal place of business <b>or place of business</b> in a participating Member State in which that patent has unitary effect for the purposes of paragraphs 1 or 2</i><br /><br />Please correct me if I'm wrong, but I'd understand this as meaning that the proprietor will not have to be <i>based</i> in another participating state to "escape" German jurisdiction. It should be enough for the proprietor to have a "place of business" in another participating state, something that I'd expect to be the case normally, and certainly for multinationals having a "EU patent department"...Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-59694374608791497812011-12-06T15:23:37.919+00:002011-12-06T15:23:37.919+00:00Don't worry I am still dying of embarrassment ...Don't worry I am still dying of embarrassment due to the omission and my litigator side is still lecturing me. But hopefully readers will have taken the several opportunities presented in the post to click on the text of Article 10...Annsley Merelle Wardhttps://www.blogger.com/profile/09184706067469338128noreply@blogger.comtag:blogger.com,1999:blog-5574479.post-25650894161923181232011-12-06T15:16:38.219+00:002011-12-06T15:16:38.219+00:00interesting point indeed. At least I may reassure ...interesting point indeed. At least I may reassure you that the German law of inventor compensation will not enter the game. The applicability thereof is determined by the law governing the employment contract.Michael Thesenhttps://www.blogger.com/profile/11216937613426928728noreply@blogger.comtag:blogger.com,1999:blog-5574479.post-48226228042884386712011-12-06T15:09:05.150+00:002011-12-06T15:09:05.150+00:00Late, as we have found it ourselves noe, but forgi...Late, as we have found it ourselves noe, but forgiven. Isn't it amazing how, after doing so much on this, all your good work can be forgotten by a simple oversight? That's pernickety patent peopl for you.<br /><br />I don't see a great problem with this article leading to Germany as the default position, providing the central court is located in the UK.<br /><br />I don't see the place of residence of the representative as relevant for property ownership. The clause was probably originally drafted in response to objections such as those of the CIPA committee members, but deliberately not included in the unitary patent regs for good reason.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-75324652715695294852011-12-06T14:56:40.898+00:002011-12-06T14:56:40.898+00:00@Tom M - It would help if I put in the entire prov...@Tom M - It would help if I put in the entire provision of Article 10, wouldn't it? Blame Blogger, not me...<br /><br />Please see Article 10(3) in the updated post. Let me know if that helps!Annsley Merelle Wardhttps://www.blogger.com/profile/09184706067469338128noreply@blogger.comtag:blogger.com,1999:blog-5574479.post-56024026545844975722011-12-06T14:43:54.914+00:002011-12-06T14:43:54.914+00:00Sorry, can you explain how the jurisdiction ends u...Sorry, can you explain how the jurisdiction ends up being Germany by default for people outside the participating Member States?Tom Mnoreply@blogger.com