European Patent Litigation Agreement

Last updated

The draft European Patent Litigation Agreement (EPLA), or formally the Draft Agreement on the establishment of a European patent litigation system, was a proposed patent law agreement aimed at creating an "optional protocol to the European Patent Convention (EPC) which would commit its signatory states to an integrated judicial system, including uniform rules of procedure and a common appeal court". [1] It differed from the Unified Patent Court Agreement in that the EPLA negotiations were coordinated from the side of the European Patent Office, rather than from the European Council and Commission [2] and therefore also offered the possibility for non-EU states to participate.

Contents

The EPLA was a proposed alternative to a set of proposed Community patent regulations. [3] The European Commission regarded the negotiations on the EPLA as unlawful, [4] although in 2006 it had gained a considerable ground among patent practitioners [3] and national patent judges. [5] [6] The EPLA proposal was essentially dropped in 2007 after the Legal Service of European Parliament issued an opinion that the EPLA would prima facie constitute a breach of Article 292 of the EC Treaty and thus the European Community and its members states could not participate. [7] Many of its provisions were subsequently incorporated into the Agreement on a Unified Patent Court, which is currently undergoing ratification.

Background

Under Article 64(3) of the European Patent Convention, [8] any infringement of a European patent is dealt with under national law (i.e. the law of one of the 38 member states to the European Patent Convention). Additionally, once the 9-month opposition period under Article 99 EPC has expired, there is no centralised way of challenging the validity of a granted patent, leaving proceedings also there only to national law.

Furthermore, Brussels I Regulation "on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters", valid for 26 European Patent Convention members (all European Union members except Denmark) does not according to a 2008 judicial opinion in the UK "fully consider[ed] the problems posed by intellectual property rights". Such disputes are typically based on parallel national rights rather than European-wide rights. [9] As a consequence, parties wishing to litigate a patent often have to litigate as much about where and when disputes should be heard and decided as about the real underlying dispute. [10]

History

In 1999, a Working Party on Litigation was set up by member states of the European Patent Organisation to propose an optional agreement on the creation of such a central judicial system. At its fifth meeting on 19 and 20 November 2003, the Working Party came up with a draft agreement and a draft statute for the European Patent Court. [11] The EPO level proposal parallelized a similar EU level proposal for a Luxembourg European Patent Court by the European Commission and Council [12] in conjunction with the community patent.

In 2006, the European Commission launched a public consultation on future patent policy in Europe, [13] where the EPLA featured next to the community patent, harmonisation and mutual recognition of national patents, and general issues. Both proponents and critics of the EPLA spoke out at the ensuing hearing on 12 July 2006. [14]

On 12 July 2006, Charlie McCreevy, European Commissioner for Internal Market and Services, said "the European Patent Litigation Agreement is seen as a promising route towards more unitary jurisdiction" [15] while closing the above-mentioned public hearing on future patent policy in Europe.

In October 2006 the European Parliament adopted a resolution on Future action in the field of patents. As regard to the EPLA it considered "that the proposed text needs significant improvements, which address concerns about democratic control, judicial independence and litigation costs, and a satisfactory proposal for the Rules of Procedure of the EPLA Court;" and asked its Legal Service to provide an interim legal opinion on a potential overlap with the acquis communautaire. [16]

In November 2006, an informal panel of judges from different European countries met in San Servolo, Italy, and adopted rules of procedures for the EPLA court. They signed a Resolution, the so-called "Second Venice Resolution". [17]

In February 2007, an interim legal opinion of the Legal Service of the European Parliament was non-officially published and provided a negative opinion on the EPLA. The opinion concludes that the EPLA, specifically compliance by the Member States of the European Union with Article 98 EPLA, would prima facie constitute a breach of Article 292 of the EC Treaty ("Member States undertake not to submit a dispute concerning the interpretation or application of the Treaties to any method of settlement other than those provided for therein") and took into account that member states of the EU had not competence where the EU already had legislated and that the European Union already had legislated in the field of Intellectual Property. As a result, the European Community's competence would be exclusive for the matters governed by EPLA and Member States therefore would not be entitled on their own to conclude that Agreement. [7]

Earlier, on 30 January 2007, Sir Nicholas Pumfrey, a British judge supporting the EPLA, is reported to have told the audience at a seminar in London that it appeared that the EPLA had "finally died". "It is a minor but quite important disaster. We thought we had done it", he added. [18]

Thus, it became apparent in 2006-2007 that the countries which are members of the European Union did not have the competence to institute such a system, as long as it fell completely outside the European Union's legal framework. [7] Later, in 2011, the Court of Justice of the EU eventually issued its Opinion 1/09 that the envisaged court system was not compatible with EU law. [19]

Content

The 2003 draft agreement provided the creation of a "European Patent Judiciary" (EPJ), comprising:

The EPJ would have made current national patent courts obsolete. However, the EPJ could have set up regional chambers. [ citation needed ]

Name

The agreement was called "European Patent Litigation Protocol" (EPLP) before being renamed "European Patent Litigation Agreement" (EPLA) for reasons of international law. [20]

See also

Related Research Articles

Unitary patent Potential EU patent law

The European patent with unitary effect, also known as the unitary patent, is a European patent which will benefit from unitary effect in the participating member states of the European Union. Unitary effect may be requested by the proprietor within one month of grant of a European patent, replacing validation of the European patent in the individual countries concerned. Infringement and revocation proceedings will be conducted in front of the Unified Patent Court (UPC), which decisions will have a uniform effect for the unitary patent for the participating member states as a whole rather than for each country individually. The unitary patent may be only limited, transferred or revoked, or lapse, in respect of all the participating Member States. Licensing is however to remain possible for part of the unitary territory. The unitary patent may coexist with nationally enforceable patents in the non-participating states. The unitary patent's stated aims are to make access to the patent system "easier, less costly and legally secure within the European Union" and "the creation of uniform patent protection throughout the Union".

A software patent is a patent on a piece of software, such as a computer program, libraries, user interface, or algorithm.

European Patent Office One of the two organs of the European Patent Organisation

The European Patent Office (EPO) is one of the two organs of the European Patent Organisation (EPOrg), the other being the Administrative Council. The EPO acts as executive body for the organisation while the Administrative Council acts as its supervisory body as well as, to a limited extent, its legislative body. The actual legislative power to revise the European Patent Convention lies with the Contracting States themselves when meeting at a Conference of the Contracting States.

The Proposal for a Directive of the European Parliament and of the Council on the patentability of computer-implemented inventions, procedure number 2002/0047 (COD) was a proposal for a European Union (EU) directive aimed to harmonise national patent laws and practices concerning the granting of patents for computer-implemented inventions, provided they meet certain criteria.

A patent attorney is an attorney who has the specialized qualifications necessary for representing clients in obtaining patents and acting in all matters and procedures relating to patent law and practice, such as filing patent applications and oppositions to granted patents. The term is used differently in different countries, and thus may or may not require the same legal qualifications as a general legal practitioner.

Directive on the legal protection of biotechnological inventions European Union directive in the field of patent law

Directive 98/44/EC of the European Parliament and of the Council of 6 July 1998 on the legal protection of biotechnological inventions is a European Union directive in the field of patent law, made under the internal market provisions of the Treaty of Rome. It was intended to harmonise the laws of Member States regarding the patentability of biotechnological inventions, including plant varieties and human genes.

London Agreement (2000)

The London Agreement, formally the Agreement on the application of Article 65 of the Convention on the Grant of European Patents and sometimes referred to as the London Protocol, is a patent law agreement concluded in London on 17 October 2000 and aimed at reducing the translation costs of European patents granted under the European Patent Convention (EPC). The London Agreement is an agreement between some member states of the European Patent Organisation, and has not altered other language requirements applying to European patent applications prior to grant.

European patent law covers a range of legislations including national patent laws, the Strasbourg Convention of 1963, the European Patent Convention of 1973, and a number of European Union directives and regulations. For some states in Eastern Europe, the Eurasian Patent Convention applies.

Brussels Regime Rules regulating jurisdiction of courts

The Brussels Regime is a set of rules regulating which courts have jurisdiction in legal disputes of a civil or commercial nature between individuals resident in different member states of the European Union (EU) and the European Free Trade Association (EFTA). It has detailed rules assigning jurisdiction for the dispute to be heard and governs the recognition and enforcement of foreign judgments.

This is a list of legal terms relating to patents. A patent is not a right to practice or use the invention, but a territorial right to exclude others from commercially exploiting the invention, granted to an inventor or his successor in rights in exchange to a public disclosure of the invention.

European Union patent law is a subset of European patent law. It also serves as the superset of the patent laws of the individual member states of the European Union (EU). The most recent (proposed) addition to the range of measures currently in place is the Directive on criminal measures aimed at ensuring the enforcement of intellectual property rights. The most recent directive relating specifically to patents is Directive on the patentability of biotechnological inventions. Patents are probably the least harmonised area of intellectual property laws of the European Union insofar as harmonisation through EU Directives and Regulations is concerned. However, patentability criteria have been substantially harmonized by the European Patent Convention.

The Gowers Review of Intellectual Property was an independent review of UK intellectual property (IP) focusing on UK copyright law that was published in December 2006. The then Chancellor of the Exchequer Gordon Brown commissioned Andrew Gowers to lead the review in December 2005. The Review was published on 6 December 2006 as part of the Chancellor's annual pre-budget report. The review concludes that the UK's intellectual property system is fundamentally strong but made 54 recommendations for improvements.

The European Patent Lawyers Association is a professional association of patent lawyers, with a registered office in Brussels, Belgium. Its claimed object is "the promotion of efficient and fair handling of patent litigation in Europe and the strengthening of ties between well established patent lawyers in Europe."

European patents are granted by the European Patent Office (EPO) under the legal provisions of the European Patent Convention (EPC). However, European patents are enforced at a national level, i.e. on a per-country basis. Under Article 64(3) EPC, "any infringement of a European patent shall be dealt with by national law," with the European Patent Office having no legal competence to deal with and to decide on patent infringements in the Contracting States to the EPC. A few, limited aspects relating to the infringement of European patents are however prescribed in the EPC.

Enhanced cooperation

In the European Union (EU), enhanced cooperation is a procedure where a minimum of nine EU member states are allowed to establish advanced integration or cooperation in an area within EU structures but without the other members being involved. As of October 2017, this procedure is being used in the fields of the Schengen acquis, divorce law, patents, property regimes of international couples, and European Public Prosecutor and is approved for the field of a financial transaction tax.

Unified Patent Court

The Unified Patent Court (UPC) is a common patent court open for participation of all member states of the European Union, and created by the "Agreement on a Unified Patent Court", which is provisionally applicable since January 19, 2022. Once the UPC Agreement will be fully in force, the UPC will hear cases regarding infringement and revocation proceedings of European patents that are valid in the participating member states. A single court ruling will be directly applicable in the member states that have ratified the UPC Agreement. The UPC Agreement was signed as an intergovernmental treaty in February 2013 by 25 states. It will enter into force on the first day of the fourth month after meeting three predefined conditions. Provisional application of the UPC Agreement was triggered on 19 January 2022 to enable preparation for the proper functioning of the court after entry into force. While the UK originally ratified the agreement, it withdrew from the UPC following Brexit.

FTC v. Actavis, Inc., 570 U.S. 136 (2013), was a United States Supreme Court decision in which the Court held that the FTC could make an antitrust challenge under the rule of reason against a so-called pay-for-delay agreement, also referred to as a reverse payment patent settlement. Such an agreement is one in which a drug patentee pays another company, ordinarily a generic drug manufacturer, to stay out of the market, thus avoiding generic competition and a challenge to patent validity. The FTC sought to establish a rule that such agreements were presumptively illegal, but the Court ruled only that the FTC could bring a case under more general antitrust principles permitting a defendant to assert justifications for its actions under the rule of reason.

The Anti Monopoly Law of China is the People's Republic of China's major legal statute on the subject of competition law. It was passed by the National People’s Congress in 2007 and came into effect on 1 August 2008.

The unitary patent for Switzerland and Liechtenstein is a patent having a unitary character over the territories of Switzerland and Liechtenstein. It can either be a national patent, or a European patent granted under the European Patent Convention (EPC) and having a unitary character pursuant to Article 142(1) EPC. The unitary patent "may only be granted, transferred, annulled or lapse in respect of the whole territory of protection," i.e. for both Switzerland and Liechtenstein.

Treaties of the European Union Survey of the topic

The Treaties of the European Union are a set of international treaties between the European Union (EU) member states which sets out the EU's constitutional basis. They establish the various EU institutions together with their remit, procedures and objectives. The EU can only act within the competences granted to it through these treaties and amendment to the treaties requires the agreement and ratification of every single signatory.

References

  1. European Patent Office microsite, "Legislative Initiatives in European patent law", EPLA - European Patent Litigation Agreement, retrieved on July 11, 2006 (archived version)
  2. (in German) Benkard, Europäisches Patentübereinkommen, 2. Auflage 2012; section "Vor Präambel", III.2, Rn 39-43: "2. Bemühungen der EPO-Mitgliedstaaten außerhalb des gemeinschaftsrechtlichen Rahmens; European Patent Litigation Agreement (EPLA)"
  3. 1 2 Pagenberg, Jochen (2006). "Industry, Legal Profession and Patent Judges Press for Adoption of the European Patent Litigation Agreement (EPLA)". IIC . Max Planck Institute for Intellectual Property, Competition and Tax Law: 46.
  4. Oser, Andreas (2006). "The European Patent Litigation Agreement - Admissibility and Future of a Dispute Resolution for Europe". IIC. Max Planck Institute for Intellectual Property, Competition and Tax Law: 520. However, the Commission regards the negotiations on the EPLA as unlawful, arguing that the Member States are prevented from pursuing this work for legal reasons because the Regulation 44/2001 has already created Community law in the field of regulation, with the consequence that to this extent legislative power lies exclusively with the Community.
  5. "Europe's top judges start campaign for a single court to hear patent cases", Financial Times (4 Nov. 2005), cited in Pagenberg, 2006.
  6. Dixon, Allen N. (12 July 2006). "Jurisdiction, Remarks of Allen N. Dixon, International Intellectual Property Counsel, London, European Commission Public Hearing on Future Patent Policy in Europe" (PDF). European Commission. Archived from the original (PDF) on 24 October 2012. Retrieved March 2, 2013. It is supported widely by national patent judges(...)
  7. 1 2 3 IPEG, Negative Opinion on powers of EU member states to agree individually on EPLA, February 10, 2007, posting a document dated February 1, 2007 (SJ-0844/06 D(2006)65117 "Interim Legal Opinion"), which does not appear on the European Parliament web site and which apparently was not meant to be published (the status of the document is unclear).
  8. Article 64(3) EPC
  9. Research In Motion UK Ltd v Visto Corporation [2008] EWCA Civ 153 at para. 5(6 March 2008)
  10. Research In Motion UK Ltd v Visto Corporation [2008] EWCA Civ 153 at para. 3(6 March 2008)
  11. Luginbühl, Stefan (2004). "Streitregelungsübereinkommen vs. Gemeinschaftspatent?" [Disputes settlement agreement vs. Community patent?]. GRUR Int (in German). 5: 357.
  12. "Industrial property: Commission proposes establishing Community Patent Court".
  13. European Commission, DG Internal Market and Services, Consultation and public hearing on future patent policy in Europe Archived 2006-09-21 at the Wayback Machine , Retrieved on September 6, 2006.
  14. European Commission, DG Internal Market and Services, Consultation on future patent policy in Europe: Public hearing: Speeches and PPT presentations Archived 2007-02-10 at the Wayback Machine , Retrieved on September 6, 2006.
  15. Charlie McCreevy, European Commissioner for Internal Market and Services, Closing remarks at public hearing on future patent policy, Public Discussion on Future Patent Policy in Europe, Brussels, 12 July 2006. Retrieved on August 30, 2006.
  16. European Parliament Public Register of Documents, European Parliament resolution on future patent policy in Europe, October 12, 2006.
  17. IPEG, European Patent Judges agree on rules and procedures for new EU Patent Court, Tuesday, November 7, 2006.
  18. Cited in Managing Intellectual Property News, Germany urges action on European patent reform , February 1, 2007. The seminar appears to have been the MIP Gowers Review Discussion held at Lovells, in London, on January 30, 2007. About the seminar, see also Managing Intellectual Property, Gowers debate highlights reform concerns, March 2007.
  19. "PRESS RELEASE No 17/11, Opinion 1/09, The draft agreement on the creation of a European and Community Patent Court is not compatible with European Union law" (PDF). europa.eu. Luxembourg: Court of Justice of the European Union. 8 March 2011. Retrieved 17 July 2022.
  20. Swiss Federal Institute of Intellectual Property, European Patent Litigation Agreement (EPLA), November 18, 2002. Retrieved on July 11, 2006 (archived version)