Patent uncertainty: Goldilocks and Google

The IPKat has received this comment from an employee of a well-known patent-granting office.  For the sake of his job security, peace of mind and future promotion prospects he prefers to remain anonymous.  He writes:
"Reading the plea in your recent post for someone to explain how a single EU patent would lead to greater legal certainty, may I proffer an explanation?

The key is Article 69 EPC and its attendant protocol, regarding interpretation of the scope of protection provided by a claim. As is well known, this boils down to stating that the scope of protection is not too broad, and not too literal, but somewhere in between [Indeed, says the Kat -- and while he's not convinced that there is such a thing as "too literal", we all know what this means]. As neither the EPC, the protocol nor EPO Board of Appeal case law has, as far as I am aware, characterised a skilled Goldilocks who can get it just right, this has led to well-known differences when the subject-matter of a European patent is subjected to the rules of interpretation in the courts of the countries of the resultant national patents, albeit according to the same initial criteria. Cases such as Catnic/Formstein and Epilady (discussed here) spring to mind, representing Britain v Germany. Legal certainty is, as is well known, compromised by varying interpretations across the EU's single market.

The EU patent will solve this simply because there will be one patent interpreted, ultimately, in one place, although this has little or nothing to do with language per se. It does, however, have everything to do with establishing a full EU patent regime, with a single legal structure and preliminary reference procedure to address problems such as this. Legal certainty is obviously enhanced by having one interpretation and ultimate decision which is applicable throughout the single market. None of the criteria are being changed, but at least there will be a facility for imposing uniform interpretation. One should not of course forget the other 11 non-EU EPO states, which it is planned will be subject to the "E" part of the EEUPC, although this aspect appears to be receiving little attention in the light of the present EU initiative!"
The IPKat thanks his correspondent for the time and effort taken in seeking to explain 'certainty', but he remains unconvinced that this certainty is of any substantial benefit to industry and business, if it exists at all.  The interpretation of a patent is an after-the-event occurrence.  Decisions concerning the investment in the development, testing, manufacturing and marketing of products or operating processes -- whether covered by a patent or whether attempted by a competing third party -- will generally have been taken long in advance of a final decision as to whether, on even the best application of the principles of the protocol to Article 69, an infringement exists.  What will happen is that investors, managers, manufacturers and other commercial interests will find that a specific patent is either infringed everywhere in the EU or nowhere in the EU, while at present they find that the same patent is infringed in all, some or no countries in the EU.  Are we not just replacing one uncertainty with another?

Merpel adds, if you look at the total number of patents granted in Europe but then start totting up the total of cases in which national courts come to conflicting decisions on the application of the Protocol to Article 69, are they not a tiny proportion of the whole?  We talk of "cases such as Catnic/Formstein and Epilady", but how many of us can confidently, off the top of our heads, name another five examples?
Patent uncertainty: Goldilocks and Google Patent uncertainty: Goldilocks and Google Reviewed by Jeremy on Friday, December 10, 2010 Rating: 5


  1. I think there is a further reason why this does not increase certainty. It will guarantee that the interpretation of the patent is the same against one infringer for all 27 countries, ok. But if there is a new infringer? A different court would be judging, and might well take a different approach at what the patent means.

  2. @Patricia
    Thanks for the observation. I doubt that the patent-using community would be thrilled if the "new infringer" problem were solved by imposing a sort of res judicata principle that, once a claim has been construed in one way and against one infringer, that interpretation is binding in all subsequent proceedings in all EU jurisdictions, regardless of the identity of the parties.

  3. I wonder if your mole inside the Patent Office can tell us about convergence in the twenty or so years of progress since the cases he cites. Let him also comment on the Hilti (Spannschraube) litigation, in which courts in a clutch of EPC countries came to much the same outcome (ie who "won" and who "lost") but all with different paths of reasoning. I think I am not the only one who believes that legal certainty is not going to be delivered by a pan-European court of appeal but is by keeping going along our present path. Look, the German Supreme Court only last year knuckled under to the DG3 view on novelty and on added subject matter. These convergence processes take an awful long time.

    Consider what legal certainty the 24 Technical Boards of Appeal at the EPO have brought us, over 30 years. See, the latest annual DG3 caselaw digest. Not much new there, is there?

    Now imagine how the continuing convergence in the national courts of EPC countries will occur, once they start to decide on European patents written in the 21st century (rather than prior to 1978). Then mull over what legal certainty for Americans is coming out of the CAFC and Supreme Court, these days.

    Can we rejoice, please, that there is no pan-European appeal court for patents in Europe?

  4. Having just one European Court will not provide more legal certainty (not least as certainty in any form is not known to exist before any court anyway). The European Court will simply exclude all but one view. Diverging decisions such as Epilady, Conormed etc are not a sign of weakness of the Court system, but an indication of borderline cases. The diverging decisions in these cases are not the result of different jurisdictions. They express the views of different Judges. That will remain. However, while today the different views induce the parties to find an out of court solution, a single Court will simple take the one or the other view, depending who happens to be the Judge on the day. The European Court will thus lead to less legal certainty, but more definite results.

  5. No, no, no, no, no. You are all missing the point. Creating a single patent forum will provide COMMERCIAL certainty. Don't forget who the courts are supposed to serve after all. There will always be different ways in which the law can be interpreted, so in one way the comments are correct when they say that there will not be more legal certainty. However, what gets the goat of industry is the fact of conflicting decisions in different countries within the EPC. Just picking biotech / pharmaceuticals, for example, look at the conflciting decisions in the following cases: fluvastatin XR (revoked in UK / NL, under opp at the EPO, interim injunctions in Spain and Belgium), olanzapine SPC (upheld in UK, revoked in NL but under appeal), escitalopram SPC (upheld in UK by House of Lords, revoked in NL at first instance but under appeal), losartan + HCTZ (interim injunction at Court of Appeal in France, no interim injunction at Court of Appeal in Belgium), HGS v Eli Lilly (revoked in UK but under appeal, upheld by EPO TBA), alendronate (approx 7 years of a circus of divisional patents being enforced in different counrties - see the submisisons to the EC Pharma Enquiry for the gory details). Come back again in 2 years time for an update on the drama unfolding before our very eyes around the European numerous courts regading esomeprazole....

  6. There is also the issue of cost. A single patent court may or may not solve the problems of a consistent approach (the comments above relating to different judges giving different judgements are very relevant in this regard), but it is to be hoped that it would reduce the financial burden on litigants (both the proprietor and alleged infringer). Ideally this would be one legal team, one language, one court (I stress ideally!). Language is, of course a major sticking point in this whole issue as is the point about whether infringement and nullification actions should be combined.

    It would also enable decisions to be reached which are valid in a number of jurisdictions of smaller states where litigants might not normally bother to litigate because of the limited benefit for the cost of that litigation, but which smaller states collectively represent a sizeable market.

  7. The number of cross border cases is insignificant, compared to other cases, which are national.

    The creation of an EU central patent court will raise costs for the majority of cases, which are national only.

  8. Ah, costs again. Why do people believe that low cost IP is good IP?. The contrary is true. IP must come with a price tag. Patents hinder competition. As we all believe in competition, it follows that the number of patents should be kept at a minimum and the best way of achieving this is to keep costs up. The same is true for litigation. Should litigation be cheap? No. Patentees and infringers should know that going to Court is costly and that they are better off to find a business solution. Asking for cheap IP is a short-sighted short term view on one's own budget. In the long run, cheap IP leads to more patents, more FTO efforts, more litigation and more costs.

  9. I also believe that a narrow focus on "legal certainty" is a red herring. To understand what effect a European patent court could have, we should study the effect that the creation of the CAFC had in the US in the 80s. Prior to it, some US District Courts hadn't decided a single case in favour of the patentee in eighty years. Thus, patentees had plenty of certainty in those District Courts: they had the certainty that they were going to lose independently of the quality of their case.

    Likewise, only a very naïve (or disingeneous) observer would claim today that the patent courts in all EU countries currently examine the cases with the same level of rigour and expertise (never mind speed). Bringing them all under the umbrella of a single system can only raise the level of discourse. Those who argue that "competing" case law enriches the debate are assuming that all courts read each others' decisions. That may be true for the most sophisticated among them, but it's very certainly not true for most EU countries, if only because of language reasons. Indeed, the courts with the most need for improvement are those least likely to consider (or even begin to understand) the decisions of others.


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