Draft Agreement, not many stakeholders stifled ...

The IPKat's learned colleague Axel Horns (IP::JUR) posted an item last week that does not seem to have generated the degree of attention it deserves. Axel's item begins as follows:
"Draft Agreement on the European Union Patent Judiciary

The EU Council has published Document 9124/08 issued by the Slovenian EU Presidency and addressing the Working Party on Intellectual Property (Patents). The title of the Document is Draft Agreement on the European Union Patent Judiciary.The revised Presidency working document contains a Draft Agreement on the European Union Patent Judiciary for discussion at the meetings of the Intellectual Property (Patents) Working Party on 28 May and 11 June 2008. The revised version takes account of the discussions in the Working Party on 2, 8 and 25 April 2008 as well as of comments and observations received from stakeholders. Furthermore, it also comprises two lists of issues to be included respectively in the Statute of the European Union Patent Judiciary and in the Rules of Procedure, which need to be developed at a later stage".
The IPKat has taken a quick look at the Draft Agreement and notes the following highlights:

"Article 3: Scope of Application

This Agreement shall apply to:

(a) any Community patent;
(b) any supplementary protection certificate issued for a Community patent;
(c) compulsory licenses in accordance with Article [21] of Council Regulation (EC) No … on the Community patent;
(d) any European patent which was granted and not yet expired at the date referred to in Article 60 or was granted after that date, without prejudice to Article 58; and
(e) any application for a patent which is pending at the date referred to in Article 60 or filed after that date".

So now we know what the Court's bread-and-butter subject matter will be, and that we can expect a Council Regulation on the Community patent in the foreseeable future (no shock there).
"Article 10: Eligibility criteria

(1) The Court shall comprise both legally and technically qualified Judges. Legally qualified Judges shall be qualified for judicial functions at the national level [this doesn't specify experience or qualification to deal with IP cases -- but see below]. Technically qualified Judges shall have a university degree in a field of technology.

(2) Judges shall ensure the highest standards of competence in the field of patent litigation [the IPKat wonders how this might be achieved]. They shall have adequate knowledge of civil law and a proven experience in patent litigation [this should exclude judges from most of the EU's 27 countries, then]".
And now for something completely different -- training for the patent judiciary:

"Article 14: Training Framework

(1) A training framework for Judges shall be set up in order to improve and increase available patent litigation expertise and to ensure a broad geographic distribution of such specific knowledge and experience [so we might get Estonian judges sitting in Amsterdam?].

Right: wasting no time--the Germans are training their next generation of European patent judges from the age of 11

(2) The training framework shall in particular focus on:

(a) internships in patent divisions having a substantial number of patent litigation cases;
(b) improvement of language skills [the IPKat has a few suggestions for one or two British judges who might want to brush up their basic English ...];
(c) technical aspects of patent law;
(d) the dissemination of knowledge and experience on civil procedures for technically qualified Judges; and
(e) the preparation of candidate-Judges.

(3) The training framework will provide for continuous training. Regular meetings will be organized between all Judges of the Court in order to discuss developments in patent law and ensure consistency of jurisprudence [Consistency? Is this designed to deter anyone from the EPO?]".

Passing over the new unified substantive law on patent infringement, which looks as though it was inserted as an afterthought, let's take a look at the professions:

"Article 28: Representation

(1) The parties shall be represented by lawyers authorized to practise before a court of a Contracting Party who may be assisted by a European Patent Attorney, who is a national of a Contracting Party entitled to act as professional representative before the European Patent Office (hereafter: European Patent Attorney), and/or by patent attorneys with proven patent litigation experience.

Left: European Union Litigation Certificates are much-sought-after. Even a slightly used one can still fetch a tidy sum on eBay ...

(2) Notwithstanding paragraph 1, European Patent Attorneys and patent attorneys with proven patent litigation experience [now, the IPKat would love to know what this means and how it is to be proved] who are in possession of a European Union Litigation Certificate [A WHAT? And where might one obtain such a thing? At what expense? And how long will it take? Who will pay - apart from the clients, that is?] may represent the parties in actions for revocation of a patent before the central division.

(3) Representatives of the parties and their assistants shall enjoy [good choice of words!] the rights and immunities necessary to the independent exercise of their duties.

(4) Representatives of the parties and their assistants shall be obliged not to misrepresent cases or facts before the Court either knowingly or with good reasons to know [how very different from Community trade mark proceedings, where in some cases one wonders if there isn't a duty to do so]".

There's lots more where all this comes from, dealing with languages, appeals, provisional and final relief, stays -- as a sop to the common lawyers and some Scandinavians -- and even allowing judges to deliver their own separate judgments, whether dissenting from the majority or concurring with it.

IPKat is curious to know what his readers think about this: he doesn't think they'll be terribly happy. Merpel says, come now, you're just over-dramatising. And isn't this a neat way to narrow the scope for patent attorneys to litigate and make sure the work is safe and sound in the hands of real lawyers, like in Germany?
Draft Agreement, not many stakeholders stifled ... Draft Agreement, not many stakeholders stifled ... Reviewed by Jeremy on Tuesday, May 27, 2008 Rating: 5


  1. Is not the lack of comment on the Horns blog an indication that it is not sporting to make sneering remarks about worthy aims like getting litigation done by qualified judges listening to qualified litigators. But I do agree with you in wondering just how we are supposed to get to that desirable end result, in mainland Europe. The Litigation Certificate idea strikes me as one adopted from the UK, while other ideas (technical judges)come from German practice. The patent judges themselves made light of the common law/civil law divide in their report last year, and we don't see it mentioned here, but it's the elephant in the room, isn't it? What is it that deters a lawyer in a civil law country from unashamedly misrepresenting? After all, without the common law fact-finding tools, how are you going to establish the facts that will reveal that the lawyer has been misrepresenting them?

  2. (another Anonymous): I have looked in vain for a future possibility for taking the EPO to court for refusing an application. That would re-create the balance or symmetry that we have in our national patent systems. This would remove the need for the EPO to be overly inventor-friendly. However, I do not see this expressed (or maybe I am too dense to see it) in the Draft Agreement.

  3. Art 10: Judges shall have "adequate knowledge of civil law". That disqualifies all judges from all common law jurisdictions, doesn't it?

  4. To the second anonymous:

    EPO sits outside of any jurisdiction, so it is pretty impossible for any EU court to have a grip on them.

    EPO should be an EU agency in order to have a legal bind with the central court.

    Some people are arguing that the EPO should be part of the EU system, notably for responsability in front of the Parliament (legislative) and the Court (judiciary).

  5. (another Anonymous, again): To the first anonymous: but look at this:

    Article 3: Scope of Application
    (d) any European patent which was granted and not yet expired at the date referred to in Article 60 or was granted after that date, without prejudice to Article 58; and
    (e) any application for a patent which is pending at the date referred to in Article 60 or filed after that date

    ----- do you think that the Working Party does not know that there is no such thing as a European patent that is/has "not yet expired"? What we get is a bundle of patents. The other concept is the Community patent, but that is treated in (a) and (b).

    So, it would seem that the Patent Judiciary is intended to deal - in some manner - with European patents.

  6. To one of the anonymouses

    I think "adequate knowledge of civil law" means civil law as opposed to criminal law. Seems like a reasonable demand.

  7. anonymice?

    wouldn't it be more sensible if each anonymous commentator gave him/her/itself a catchy little speudonym so that subsequent anonymice could make it clear which earlier comment they were responding to.

  8. A Speudonym. Lovely word. Great idea. Thanks for that. Meanwhile, scary, isn't it, that the authors thought it necessary to spell out that those who are going to be the judges, in the brave new world of pan-European patent litigation, have to have some knowledge of the law. Still, better to stipulate it explicitly, than suppose the stipulation to be unnecessary. Maybe they are mindful of backlash from the excluded class of mere patent attorneys, and are covering their back by making sure that everybody else in the courtroom will be more knowledgeable about patent law than the excluded patent attorneys.

  9. To the anonymous of Tuesday, May 27, 2008 11:22:00 AM: Greeting!

    You say there is no such thing as a European patent. True enough, in a general way - but the Slovenian document has definitions. According to it, a European patent is one granted under the provisions of the European Patent Convention designating one or more Contracting Parties (to the new agreement).
    What surprises me is that Art 14 gives (virtually) exclusive jurisdiction over such patents to the new Courts. So, for UK patents granted via the EPO, no more High Court, no more County Court, no more adjudication by the Patent Office. Why can't the new Courts compete with national courts, as the EPO has competed with national patent offices?

  10. Estonian judges are welcome in Amsterdam, but patent cases in the Netherlands are aexclusively dealt with by the courts in The Hague.

  11. "... a neat way to narrow the scope for patent attorneys to litigate and make sure the work is safe and sound in the hands of real lawyers, like in Germany?"

    - To the best of my knowledge, German patent attorneys represent parties without any involvement of "real lawyers" right up to the BGH (federal supreme court, on appeal from the federal patents court BPatG) in revocation proceedings. It's only in the (separate) infringement proceedings that they are restricted to assisting "real lawyers". Do UK patent attorneys in general do a significant amount of litigation themselves? I doubt it.

    Now, why infringement and revocation proceedings in Germany are separate is a completely different question. In any case it is maybe worth noting that no such separation appears to be proposed in the current Draft Agreement.


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