For the half-year to 30 June 2014, the IPKat's regular team is supplemented by contributions from guest bloggers Alberto Bellan, Darren Meale and Nadia Zegze.

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Monday, 21 May 2012

When unity creates division: A Kat patent recap

The unitary patent's countdown clock
has the same face as Big Ben....coincidence?
The AmeriKat cannot say whether the hands on the unitary patent clock that are ticking away as she types are counting down to an expected implementation of the patent proposals that have preoccupied the patent community for the past year or to yet another legislative death when the proposals for the Utopian ideal of a unified European patent system fail to bring fruit. Nor does she know when the time on the clock will run out: Will it be on 30 May when the Competitiveness Council is scheduled to meet again to discuss the package? Will it be sometime in June when EU leaders called for a final agreement on the EU patent package? Or will it be after that, as suggested earlier this year by Baroness Wilcox?

President Van Rompuy's message to
the Competitiveness Council:
"Don't make me come back there...."
Indeed, even the President of the European Council, Herman Van Rompuy in a letter written three weeks ago to members of the European Council did not seem quite sure when the actual deadline for agreement was. He wrote:
"I really appeal to each of you to instruct your Ministers responsible for these files to show the necessary sense of compromise to help the Presidency achieve results on what are key elements for growth in Europe. I would like to say a particular word on the Unitary Patent. This important file has been discussed for many years and we are now very close to a final deal, albeit only at 25. This deal is needed now, because this is an issue of crucial importance for innovation and growth. I very much hope that the last outstanding issue will be sorted out at the May Competitiveness Council. If not, I will take it up at the June European Council."
But the questions of "if" and "when" are not new. If anything, they have become familiar friends during the unitary patent saga. With each passing day that the profession and industry know and are told nothing concrete about the status and future of the proposals in Brussels, these - the most important questions - are pushed to the sideline. Instead we trudge ahead with our ever maddening debates on the defects of the substantive provisions, feverish lobbying and letter writing by industry, and drafting Rules of Procedure for the yet-to-be (or never-to-be) Unified Patent Court.

As a welcome treat in our unitary patent proposal routine, a few weeks ago, after months of evidence from patent lawyers, judges, industry and Baroness Wilcox, the House of Commons Scrutiny Committee published their evidence on the unitary patent proposals (see IPKat post here). Although the Committee's report was mostly predictable given the lines of questioning and cross-examination taken by the MPs (see AmeriKat posts   hereherehereherehere and here  on the hearings), there did contain one surprise – that on the controversial Articles 6 to 8 of the Proposed Regulation. Although the Committee strongly agreed, as a matter of patent law, with the majority who oppose the inclusion of Articles 6 to 8 in the Regulation, they nevertheless recognized the "inevitability to their inclusion" as a matter of EU law despite the opinions of Sir Robin Jacob and Professor Kraßer. This, they said,
"calls into question whether incorporating a unitary patent regime within the EU will ever be practicable."
What the academic Utopia looks like where
CJEU referrals are fast, quick and cheap
Readers will be familiar with the two camps of thought in respect of whether the inclusion of Articles 6 to 8 in the Proposed Regulation which involves the Court of Justice of the European Union (CJEU) on matters of the interpretation of what constitutes patent infringement, is necessary under EU law (see arguments here). Recently proponents of the inclusion of Articles 6 to 8 in the Proposed Regulation could find solace in an article published last month by competition professor Hanns Ulrich entitled "Harmonizing Patent Law: The Untameable Union Patent" who convincingly argued that the inclusion was necessary – albeit convincing from a non-practising and purely academic viewpoint.  ["Spend some time in a CJEU trade mark referral", says Merpel, "and watch how much easier it is to argue the contrary position!"]. In this and many proponent's arguments, it seems that purely academic technicalities seem to outweigh the practical implications for the patent industry who require fast and certain protection and enforcement of their patents.  [Merpel also wonders what Professor Kraßer, the Intellectual Property Judges Association and Professor Sir Robin Jacob would make of Professor Ulrich's footnote 148 where he calls them a "lobby initiative"?  Any comments from these, our distinguished Kat friends?]

Not endorsing Dr. Tilmann's views
Professor Ulrich is not alone, of course. He joins the only other big named proponent of the inclusion of Articles 6 to 8 - Unified Patent Court's Rules of Procedure committee member, Dr. Winfried Tilmann. Readers may recall that Dr. Tilmann, who is an adviser to the German Ministry of Justice and is Of Counsel at Hogan Lovells, submitted this letter (scroll down) to the House of Commons Scrutiny Committee arguing that Article 118 TFEU demands that Articles 6 to 8 are included in the Proposed Regulation and that in respect of trade mark law, the CJEU's practice is "impressively good". With comments like these, it came as little surprise that on 12 April, after it was reported by the IPKat in February that Dr. Tilmann's letter referred to his position at Hogan Lovells, the firm wrote to the Chair of the House of Commons Scrutiny Committee making it clear that his letter contained
"his own personal views. The views he expresses are not those of the Hogan Lovells intellectual property practice and are not endorsed by us. It is regrettable that the presentation of his opinion did not make this clear."
Duck Tape - the quick fix solution to all of life's problems,
but perhaps not for the unitary patent proposals
For the proponents of the inclusion of Articles 6 to 8 and to answer the concluding concerns of the Scrutiny Committee, the quick fix solution for those who wish to have uniform substantive patent law part of EU legal order should be to limit the scope of unitary patent system only to the unitary patent and not to the current European patent.  Those users who wish to use the EU unitary patent system will then be subject to references to the CJEU while the rest of the users who chose not to partake in the system sit back and watch how many references are made and how long it takes.  Of course under the current proposed system, the transitional measures which allow owners of European patents or applications to opt-out within seven years is considered to be too short a transitional period given that most patent infringement suits are brought at the end of the life of a patent. After seven years, the Unified Patent Court assumes exclusive jurisdiction over unitary and European patents which is why many commentators have proposed permanent opt-out provisions or opt-in provisions and/or that the Unified Patent Court only have exclusive jurisdiction over unitary patents.  These types of proposals were mooted by patent professionals, namely CIPA, during the House of Commons Scrutiny Committee hearings, and as the AmeriKat understands were recently proposed, together with the deletion of Articles 6 to 8 of the Regulation, by sections of German industry to the German Justice Department.

The AmeriKat does not think she is overstating this when she says, despite the industry's tireless efforts in raising these serious problems of the proposals with their respective national and European governmental ministers, that the profession and industry is worried that it may still nevertheless be bounced into a situation like the one they experienced last December. The AmeriKat fears that next week when the Competitiveness Council meets will she again be watching press conferences of European officials boasting that "everything has been agreed" as various gob-smacked professional patent organizations scramble to figure out who has and what has been agreed.  She hopes this is not the case, but one thing that has been consistent throughout this process is the lack of transparency and certainty as to exactly what is going on at the national and European level in respect of the patent proposals. ["If anything, the slogan for the European legislative process should be "Surprise!", says the AmeriKat]

The Unitary Fairy's wand - with one
flick all of the unitary patent's problems
are fixed and we we are finally
unified....
But before the Competitiveness Council meets, the AmeriKat wonders if the unitary patent fairy could grant her and the patent profession three wishes:
(1) Can we please finally see the unredacted version of the Opinion of the Legal Service (document here) on the compatibility of the draft agreement with the CJEU's Opinion 1/09? The AmeriKat notes that someone who shares her insistence on this filed a request for the document in December.  The request was rejected by the Council in January with the excuse that issue was too "complex" and "sensitive".  Then the same individual - whose identity the AmeriKat has deduced - requested a confirmatory application under Regulation 1049/2001 (see chain of correspondence curiously, or not, found on the Austrian Parliament's website here) No word if that request has been responded to...
(2)  Can we have some news of Italy and Spain's cases regarding the enhanced cooperation procedure?  ["If it is taking this long to get a judgment from the CJEU on these, surely basic, procedural European law questions, it doesn't bode well for any substantive patent referrals", says the AmeriKat.
(3)  Although publishing a beautiful and thorough report, can the UK's Scrutiny Committee make sure that after this they do not fail to exercise their powers to ensure that the voices of UK industry are not disregarded by UK negotiators in Brussels next week?  
And on that note, the AmeriKat lays her head down to sleep wishing that when she awakes the unitary patent fairy will have paid her and the patent profession a visit....

10 comments:

Anonymous said...

"This deal is needed now, because..."

Because the European Union is in an utter mess and it needs to be able to claim a victory, even if it is to show off a new skyscraper, filled with the European innovative business community, that is built on foundations of sand.

Such a parcel of jokers in a cherished federation.

Tim Roberts said...

We can agree with Mr van Rompuy about one thing. This is "an issue of crucial importance for innovation and growth". That is why it must not be agreed in its present form.

MaxDrei said...

Ask yourselves what might have happened in two high value cases of recent years, had there been bifurcation and a Central Division on the mainland.

First take DSS v ECB. This is the one in which DSS asserted that every Euro banknote was an infringement. The patent owner saw off a nullity suit brought by the ECB in Munich. It was left to London (first and second instances) to find the right line, and thereby bring closure in Europe.

But it is not as if London is anti-patent or anti-troll. See its recent decisions (again, first and second instances in quick succession) in IPCom v Nokia, finding the patent valid and infringed. The EPO OD has now revoked the troublesome patent but who amongst you is confident that the EPO second instance will leave the EPO's first instance decision undisturbed? When the TBA finally gets round to judging the oposition, what will it decide? Who knows? And how long will we have to wait for that decision, I wonder.

Anonymous said...

MaxDrei,
I'm not sure what point you are trying to make here. The only advantage in hearing validity and infringement together is the squeeze this puts on the patent owner. If a court holds a patent valid and infringed, bifurcation would not make any difference. From a vague recollectoin of the DSS case, I must admit that my sympathies were with the German decision - a case decided by technical experts rather than legal practitioners.

MaxDrei said...

Well thanks for that, anon. Even if the squeeze were the only advantage, it is actually the crux of the matter. Take for example a claim that includes a simple requirement that A and B be "coupled". Competitor C has prior art which shows A and B coupled, but other than as taught in the patent. C proposes a device which includes an "A" and a "B", also coupled other than as taught by the patent.

In Duesseldorf, the patent owner will say the accused embodiment has A and B coupled (literally or under a Doctrine of Equivalents) and will prevail. In Munich he will say that his coupling is not that of the prior art device, and will prevail.

In London though, he will have to narrow his claim to escape the squeeze, the competitor will survive and justice will be done.

In the DSS case, track back to the TBA Decision, on appeal from the ED. You will not be able to find any sign that when the Board considered the amendment filed during the DG3 oral proceedings it thought at all about Art 123(2) EPC. If the Board had done its job, and considered 123(2) at that stage, the inventor would not have got to issue, and a whole lot of litigation would not have happened.

Anonymous said...

Although publishing a beautiful and thorough report, can the UK's Scrutiny Committee make sure that after this they do not fail to exercise their powers to ensure that the voices of UK industry are not disregarded by UK negotiators in Brussels next week?

Well, did the Scrutiny Committee really listen to the "voices of UK industry"? I just reread your own account of the hearings, and I can't find a single intervention by a representative of the UK industry...

Anonymous said...

Yet another attempt to validate software patents in Europe.

Time to wake up.

Tim Jackson said...

The IP Federation’s contributions are mentioned ten times in the report of the House of Commons European Scrutiny Committee just published entitled "The Unified Patent Court: help or hindrance?"

http://www.ipfederation.com/activities.php?news_id=49

Anonymous said...

Is that Gibus or his chum sneaking in again at 12:09?

Anonymous said...

The Government's response to the Scrutiny Committee report is due two months after the publication of that report - early July. That is, after the end of the Danish presidency, by which time the whole thing is supposed to be settled, one way or the other.

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