Guest Post: One EU Patent, 27 Courts

Guest post by Gwilym Roberts of the UK firm Kilburn & Strode

In a flurry of decisions last week the EU confirmed the viability of a unitary EU patent but rejected any tenable form of a unitary court for enforcing it.

The enhanced cooperation process by which a subset of countries agree to a common procedure was agreed in terms of arriving at a language regime although this could still be opposed by Italy and Spain. Hence the path to a unitary patent, granted as an EU designation within the EPO framework, appears permissible. However the European Court of Justice (ECJ) in a separate decision rejected the idea of any unitary patent court system which the ECJ itself was not part of. Most users of the system are extremely nervous about using the ECJ as a possible forum for a unitary court simply because of the lack of experience there and so this seems insurmountable.

As a result in due course it will be possible to get an EU patent but it will still be necessary to enforce it country by country. Given that it is likely to take years to see the paperwork through to obtain a unitary patent in any event, therefore, little or no progress has been made and the benefits of a unitary patent without a unitary court go no further than a potential slight saving in translation costs. As a reasonable framework is being developed for translation savings via the London Agreement, which is already in place, it seems that it may make more sense to pay attention to increasing the number of countries party to the savings available by this alternative route.

In summary, therefore, there has been very little progress despite the excitement over the last few months in relation to an EU patent and the only question is whether, after 40 years of failure, anyone other than the Politicians is really very surprised?

15 thoughts on “Guest Post: One EU Patent, 27 Courts

  1. I’m not surprised, especially since the EU is still pretty new, and strong feelings of national sovereignty also remain (as we have seen, for example, in the actions of Italy and Spain). It’s not comparable to establishing a patent court in the US. Just imagine how people would start screaming if we attempted to establish a pan-American patent court that included Mexico, Venezuela, Nicaragua, Canada, and the US. Looks like the EU’s great notion may be stalled for a while yet.

  2. “As a result in due course it will be possible to get an EU patent but it will still be necessary to enforce it country by country”
    What really is the difference then with the current system under the EPC?
    Without a court that can determine injunctions and validity for the whole (maybe somewhat limited) European territory, a pan-European patent will be menaingless.

  3. Just not sure that “the EU is trying to be like the US” really is “The fact of the matter”. Can Anti-M cite evidence that would tend to establish this “fact”? Or is it just puff, “obvious” for all to see, that is a comfort to Anti-M?

    The EPO has quite enough work to do, these days, without getting a stream from the most “sophisticated” operators in the US, including Anti-M. So, readers at the most sophisticated level, do please go on advising to your clients against filing in Europe. It will leave the field clear for others to exploit. Good for the European public, I think.

    We don’t suffer quite so much from the NPE/Troll problem in Europe. Curse or blessing?

  4. The ECJ, I think, ruled (or insinuated) that a unitary court system that IS part of the ECJ would be permissible … so it’s really a constitutional issue that just will require some reshuffling in order to comply with the ECJ ruling – the concept of a unitary court hasn’t been nixed however. And the poster says that no one would ever use this mechanism (i.e., with the ECJ having jurisdiction) because it is new? Wouldn’t any unitary patent court system would be new? It might take a bit longer, but the unitary court system will be installed eventually, under the ECJ, right? And US patent suits are filed in non-patent specialist federal circuit courts, so starting in the ECJ would be analagous to US procedure, so long as a dedicated patent appeals court could be established within the ECJ (please correct me if I’m wrong, European law is not my strong suit).

    Anyway, presently, becase validity issues are handled by the Technical Board of Appeals, really only damages issues are litigated on a state-by-state basis (sometimes national courts do invalitidy proceedings, but usually handled by TBoA), at least invalidity issues are pretty much unitary already. And doesn’t state law in the US affect damages issues too? So it’s analagous to US procedure again (keeping in mind that the average costs of patent litigations in Europe are usually 10-15% of those in the US [anybody have a cite or better statistics?]).

    In any case, it’s clear that the EPO, with or without a Europe-wide enforcing system, provides obvious benefits and can hardly be considered to be a failure. and all this while really providing excellent searching and examination proceedures with very well-qualified examiners. I much prefer prosecuting before the EPO becuase European examiners generally cite all relevant references at once and provide rational legal reasoning … in the US it seems like a contest the to see how many office actions the Examiners can squeeze out of you by citing one non-analagous reference at a time and making ridiculous assertions about the prior art (i.e., I am currently responding to an Examiner who asserts that a bolt is a resilient damping element in a final OA). I certinaly would always recommend to my clients to start prosecution in Europe rather than in the US, so we’ll see if Europe can come up with a better court system too, sooner or later…

    (I prosecute before the USPTO and the EPO)

  5. “As a result in due course it will be possible to get an EU patent but it will still be necessary to enforce it country by country” … which is why any sophisticated patent counsel advises against filing counterpart patent applications in the EU — very little bang for the buck. You get much more value for your IP dollar by filing in the US.

    “But when did any heterogenous conglomerate of 40-odd countries ever reach a unanimous view on anything?”
    We’ve got 50 states — some of them with economies larger than most countries in the EU. What’s the problem?

    The fact of the matter is that the EU is trying to be like the US. Unfortunately for them, they have too many problems to overcome before they can achieve the success we have.

  6. You scorn Europe for “failing” to enact law

    Um, no.

    Maxie, I scorn you for your irrelevant boasting.

    Europe is fine for Europe. Just stop mixing up Europe and the US, m’k?

  7. Confused you with 6, ping. Tip: go to the IPKat blog, to see how successful (or otherwise) the “European system” is.

    My reference to Mexico is to point up the difficulty of agreeing to give the courts of other countries jurisdiction to shut down factories and put people in your own jurisdiction out of work. You scorn Europe for “failing” to enact law which you would never even dream about in your country. “Europe” does not know what it wants, true. But when did any heterogenous conglomerate of 40-odd countries ever reach a unanimous view on anything?

    I champion the substantive law of the European patent Convention of 1973. I do not see that as a European “system”. “System” is a vague word, beloved of patent attorneys because it can mean anything they want it to mean. ping, what do you mean by the European “system”. Oh, I forgot, you don’t do answers, do you.

  8. Maxie,

    Aint sure why ya be addressin 6, 6 aint have any comments here.

    As to your question abouts US and Mexico – helloooo non-sequitur city. The point bein that you crow all the time abouts how successful the EP system is. It aint. And the US system aint never included Mexico – no one ever even hinted at such.

    Deal.

  9. 6: Gwilym Roberts is right. 40 years of failure it is. But so what? To whom does it matter? The English law firms that specialise in patent litigation? Some European politicians? The European Commission in Brussels? You. Anybody else?

    When is the US Congress going to pass a law that gives a court in Mexico jurisdiction to enjoin a plant operator in the USA? Any time soon?

  10. I’ve been involved with patents since 1984, first in the UK, and then in the US. The Community Patent, as it used to be referred to, was always something that would happen “soon”, but never quite arrived. That it should arrive defanged and that even the name for it should change before it ever came about, is no surprise. That it it should ever actually happen, in any form, will be a big surprise.

  11. after 40 years of failure

    Now Maxi, here all along ya been crowing only aboouts the good things – what of this monumental failure that is now 40 years old?

    Let me guess – put the lipstick on the pig and call it a honey.

    And you have the gall to throw around comments on US law? For shame.

  12. Does Mr Roberts think that the degree of co-operation and mutual respect, between the specialist patents courts of Germany, Netherlands and UK does more to advance patent law and legal certainty in Europe than a pan-European ECJ patent appeal court could ever achieve? Does he see any parallels between the decisions of the 24 EPO Technical Boards of Appeal and those national courts I mention above.

    In short, does he think the political impasse he describes is actually a GOOD THING?

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