A new highest patent court for Europe? Not as long as the Court of Justice of the EU is here

This guest post is by Angelos Dimopoulos, Assistant Professor at Tilburg Law School and Petroula Vantsiouri, Doctoral Candidate at the University of Cambridge, Faculty of Law. I invited the pair to write this post to help explain how the new pan-European patent court might fit within the current EU structure (that already includes the EU Court of Justice. – DC

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Any practitioner who has been involved in patent litigation in the European Union (EU) is well aware of the inconsistencies in the Member States patent law and the differences among national litigation systems. Disturbingly often the same case is litigated in several jurisdictions, under different procedural and evidentiary rules with uncertain timing of outcomes. In that respect, it comes as no surprise that the recent initiatives regarding the creation of a European patent with unitary effect (EPUE) and a ‘Unified Patent Court‘ (UPC) are currently the hottest IP topics in Europe. In short, the EU intends to introduce a EU-law based patent right that will be valid throughout the territory of 25 of the 27 EU Member States (Italy and Spain remaining outside) and a single patent court at the European level with exclusive jurisdiction as regards infringement and revocation proceedings, covering the same territory.

The UK government and a number of patent holders are lobbying for limiting the role that the Court of Justice (CJEU), the highest court in the EU in matters of EU law, will play in patent litigation in Europe. In our view this is simply wrong. In our recent paper called “Of TRIPS and traps: The interpretative jurisdiction of Court of Justice of the EU over patent law“, we provide two main arguments in support of this claim. First, we argue that regardless of the final wording or the adoption of the proposed EU legislation, the Court of Justice can acquire a stronger role in the application of patent law by using its interpretative jurisdiction over the patent provisions of the TRIPS Agreement. Secondly, we argue that this role is a significant tool in the process of establishing a complete and uniform framework for patent protection in the EU.

So far the CJEU has been hesitant to apply and interpret the TRIPS patent provisions. In a series of cases concerning the TRIPS Agreement, as they were crystallised in Merck Genericos, the CJEU clarified that the interpretation of the substantive patent provisions of the TRIPS Agreement lie outside its jurisdiction. This means that up to now Member States can decide according to their national laws how to interpret the TRIPS provisions on patents. However, after the entry into force of the Lisbon Treaty (which amended the constitutional charter of the EU in 2009) Merck Genericos is no longer good law. Article 207 of the Treaty on the Functioning of the European Union (TFEU) vests the EU with exclusive competence over commercial aspects of IP and brings the TRIPS agreement within the scope of EU law. In that respect, the CJEU has now acquired significant powers to determine whether national (and in the future Union) patent rules are interpreted consistently with the TRIPS agreement.

This has significant implications for the development of patent rules in the EU. Currently, patent law in the EU is characterized by a lack of harmonization, although there are some uniform rules. All 27 Member States have acceded to the European Patent Convention (EPC), which established the European Patent Organisation (EPO) and a system of law for granting patents for inventions. Thus, national laws of EU Member States are de facto harmonized in the field of patentability and validity but only as regards the grant of patents. Issues of validity and infringement after the patent grant are matters for national law and national courts. But even in the fields covered by the EPC, uniformity is not always present. In many instances the EPO and national authorities interpret the EPC in diverging ways. Many national authorities do not take each other’s case law into consideration, and even if they do, differences in legal traditions, policy choices or practicalities can lead to different outcomes.

The proposed EU patent with unitary effect and the proposed Unified Patent Court cannot change all that. The proposed legislation does not guarantee the establishment of truly uniform rules. As the proposals now stand, substantive issues (prior user rights, assignments, voluntary and compulsory licensees and government use) are left outside the scope of the proposed Unitary Patent Protection. Moreover, if adopted, the proposals will lead to four different types of patents within the EU. Finally, with Spain and Italy not participating in these projects, the EU will be partitioned in three territories.    

So, how can the Court of Justice fix that?

First, although the TRIPS agreement is very broad as regards the subject matter of patent protection, it contains specific rules on prior users’ rights and exceptions, including in particular compulsory licenses, which are subject matters left outside the scope of the proposed regulation. Article 1 TRIPS requires that WTO members “give effect” to its provisions, which signifies that a WTO member should take all reasonable measures to ensure consistency between domestic law and the agreement. So, the CJEU can use its interpretative jurisdiction to establish common minimum rules with regard to the subject matters that could be left outside the scope of harmonization.

Secondly, the Court’s interpretative jurisdiction can result in the establishment of minimum, uniform standards of protection for the different types of patents. In its previous caselaw (Hermes and Dior) the Court held that “where a provision can apply both to situations falling within the scope of national law and to situations falling within the scope of [Union] law, it is clearly in the [Union] interest that, in order to forestall future differences of interpretation, that provision should be interpreted uniformly, whatever the circumstances in which it is to apply.” Considering that the regulation on European Patents with Unitary Effect will be part of Union law, the Court of Justice can employ the TRIPS agreement in order to determine the standards of protection under national and EPO-granted patents by reference to the standards of protection of European Patents with Unitary Effect, so as to ensure uniform implementation of the TRIPS agreement in the EU.

Thirdly, the interpretative jurisdiction of the Court can mitigate the danger that arises from the existence of parallel adjudication regimes for patent protection. By allowing the CJEU to determine whether national courts abide by the TRIPS when they adjudicate patent infringement cases, the CJEU can act as the single, ultimate judicial authority in the EU, ensuring coherence and consistency in the interpretation of the different regimes of patent infringement rules.

In short, although it cannot contribute to the reduction of litigation costs, at least initially, the CJEU’s interpretative jurisdiction over TRIPS provisions can promote legal certainty, and the establishment of uniform and comprehensive patent protection in the EU that would be attractive to the industry and conducive to technological progress. Nevertheless, the power to interpret the TRIPS is not a panacea. It does not result in the establishment of uniform substantive rules, as the TRIPS is a minimum standards agreement, while its success depends on the number and subject matter of the actual cases that will reach its jurisdiction under the preliminary reference procedure.

26 thoughts on “A new highest patent court for Europe? Not as long as the Court of Justice of the EU is here

  1. 26

    But surely if you have an EP (rather than a community patent) the decision of an EU court is only binding on certain EPO states, but not those outside the EU.

    Also, I’m not sure that the community patent is ever going to be anything more than a designation of country code EF on an EP?

  2. 24

    What patent? The EPO B publication? There is only one.

    What law? The substantive statutory law of patents of the EPC, identical over the 38 Member States. There is only one.

    The caselaw, in the national courts of the Member States? It’s converging.


  3. 23

    Now as then, however, after the patent issues, each jurisdiction does its own thing

    Therein lies the rub. Exactly what “patent” is issuing? The fact of the matter is that PCT provides no actual “patent.”

    In truth, it is a bit of semantics and a bit of misstatement on Alun’s part that is causing confusion.

  4. 22

    IB thanks. I appreciate the interest but still don’t see the problem. I will try again to get my thoughts across.

    The PCT offers (Chapter 1) a single filing and a single search, followed by (Chapter 2) optional examination of eligibility and patentability. Then there is, in the later pre-issue “national phase”, more examination of eligibility and patentability if that jurisdiction requires it. There is proposed a “PCT Chapter 3” in which Member States give full faith and credit to a single examination of patentability, whereby any examination of same after conclusion of the international phase has to happen after issue, in opposition proceedings.

    But some PCT Member States (those belonging to the EPO) got as far as Chapter 3 already in 1973.

    Now as then, however, after the patent issues, each jurisdiction does its own thing. What we have for 40 years been discussing in the EU is whether, post-issue, patents courts in other EU Member States will give full faith and credit to a decision of a patent court in just one of the Member States.

    These days, what with all the tensions of the Euro currency, relations between EU Member states are no easier than they ever were. Thus, a single EU patent court is not an easy question.

    Alun, I still don’t see your problem.

  5. 21


    Alun is trying to point out that there is a jurisdictional mismatch in and of the EU-EPO set only.

    Your PCT example is a bit of a strawman (kind of) in that it really does not address the point being raised. There is not a “court of PCT,” thus the delivery vehicle that is the PCT need not have a jurisdictional match.

    The EU situation as Alun paints it is quite different in that the EU is using an EP patent (per Alun; however, Alun is off-base, as the story here conserns the creation of the very thing of an EU patent, which would be copasetic jurisdictionally).

    As far as the author’s “Disturbingly often the same case is litigated in several jurisdictions, under different procedural and evidentiary rules with uncertain timing of outcomes“, I do not see how this is “disturbing” as the notion of sovereignty and national treatement have dictated this direction, well, since the earliest days of international accord.

  6. 20

    Ned, invoking “justice delayed is justice denied” is fine when you are talking criminal cases. In civil cases the court already has ample tools to do “justice” flexibly.

    Based on my knowledge of patent disputes in Europe, I do NOT accept that the Only way” is to “impose statutory limits”. There is a statutory limit on the USPTO to get examination reports out under the PCT. Sorry, but that’s a joke. I bet you: any statutory time limit on post-issue inter partes disputes at the USPTO will hinder by hamstringing judges and offering litigants more opportunities to game the system to their advantage.

  7. 19

    Max, we impose statutory limits on making a decision in several kinds of cases in the US.  One is the ITC.  1.5 years.  It works.
    Also, in US criminal cases, the accused has the right to a speedy trial.  This is normally waived by the accused, but he does not have to.
    The question is, just how much process is due?  After all, justice delayed is justice denied.  The defendants bar has an interest in delay and imposing costs on right holders.  This naturally forces litigation to be extended and expensive.  The only way to combat this is to impose statutory limits on them.


  8. 18

    Sorry, in my haste, I was too quick to send. In the above, I meant to type “reasonable” legal certainty, rather than “treasonable”.

    Consider Apple v Samsung in Europe. Samsung sought and got a declaration of non-Infringement. Read the UK Decision

    link to bailii.org:

    to see what’s wrong with the contrary, Apple-winning, preliminary Decision in Germany.

    Will the German Court of Appeal address the English Decision in its reasoning? We shall soon know.

  9. 17

    Why not “try” something new, Ned. Because democracy and that other new notion “universal suffrage” get in the way. You wouldn’t have it any other way though would you Ned?

    In any jurisdiction that defers to the Rule of Law, there is something that amounts to “due process”, even if it does not go by that name. I fondly suppose that old Europe today defers to the Rule of Law.

    The European Patent Convbention requires (Protocol on Art 69) courts to balance “fair” scope of protection to the patent owner with 2reasonable” legal certainty to the public. That is a very sophisticated balance to achieve, not achievable with your scheme Ned. I prefer the positive progress I see under Europe’s present system, where DE, NL and UK vie for the best patent litigation regime, and the cutomers decide.

  10. 16

    Don’t see the problem Alun. When filing PCT one designates regional Patent Offices. Once in one such, the EPO, one designates jurisdictions and validates in those of them still worthwhile at grant. What if one of them is the EU? That’s manageable, isn’t it?

  11. 15

    Also, I am reminded of the due process accord JC. He was arrested at midnight, tried at 3, has his appeal denied by 9, was nailed to cross by noon, died at 3 and buried before dusk.

    Where was the flaw there? The call to free Barabbas?

  12. 14

    There is a deep fundamental problem here, in that there are certain EPO member states that are not members of the EU, so no court set up by the EU can ever have jurisdiction in all the states that you might designate on an EP. This is why there needs to be a separate patent court that is not an EU body. Granted, that may be inconsistent with EU law, but that needs to be fixed somehow.

  13. 12

    How many ways does this violate the notion of due process (amongst other things)?

    Are you even a lawyer Ned Heller?

  14. 10

    Hey Max, why not try something new:

    1) Eliminate damages from patent cases; provide only for injunctions upon proof of liability.

    2) Limit cases to one claim of one patent.

    3) Provide that cases have to result final disposition 1 year from the date of notice of infringement, but not less than 3 months from filing. If an action is not filed within one year of notice, it is barred.

    4) Provide that injunctions granted automatically go into force 6 months after grant unless the finding of liability is reversed by a higher court.

    Total time maximum time, 1 year 9 months from notice of infringement to an injunction goes into force.

  15. 8

    The bubbles are in your system; feel free to decide what they are composed of, as you are in the kitchen as they continue to burst.

    And I would not trumpet that 40 year point too loudly, as that only points to you being entrenched in your banality.

  16. 7

    Bubbles my views are based on 40 years of swimming in the European sea of patent law, all the time being paid good money by US clients to advise them on it, in language they can understand. Have you ever got as far as dipping a toe in European waters? From your comment I can see what gas you use to blow your bubbles.

  17. 6

    Overnight, further thoughts:

    Wouldn’t it be nice if academics could bend their mind to thinking how parties in dispute in Europe over patent rights could litigate to a final decision in 3 years rather than 10. Instead of which, we get academics, frustrated by the drying up of interesting open questions of European patent law, urging that we invite the CJEU in, to tell us all how to settle patent disputes. That will surely provide a huge new source of work for the academics, while industry and investors wait an age for the court to hand down more gobbledgook.

  18. 5

    Lack of uniformity in the past means continued lack of uniformity into the future.

    I get the thought that a bubbling cauldron will allow the various shades of patent law to surface in independent cases, but any benefit of such is ephemeral as the benefit will pop with the next case which may (or may not) “hold” in the same manner.

    All you are doing is playing whimsy and without res judicata and binding effect, there is no steady march to a better, more understood and predictable law.

  19. 4

    Ned, as we have discussed, the two key issues in Europe are 1) CJEU as ultimate appeal instance Y/N and 2) bifurcation (of the issues of infringement and validity). Based on my UK experience, I can accept a court of general jurisdiction as the ultimate appeal instance. That gives the Decisions more natural authority and entitlement to respect. That’s how it is in the UK. But it works best when one of the appellate 5 is a promoted patents judge (Like Leonard Hoffmann in UK).

    In the tract above, I search in vain for signs that CJEU involvement in the vast bulk of cases (Infringe Y/N; Valid Y/N) will bring anything that will help innovation and industry. Instead we get waffle like:

    “…the Court’s interpretative jurisdiction can result in the establishment of minimum, uniform standards of protection for the different types of patents……”

    whatever that means.

    The authors seem to think that the hard bit about trying infringement cases is the question whether the court’s holdings are TRIPS-compliant. I must say, up till now I had not realised that.

    Still, at least the authors conclude with:

    “….the power to interpret the TRIPS is not a panacea. It does not result in the establishment of uniform substantive rules…..”


  20. 3

    Your notion of which court has buggered patent law is backwards. The Supremes are the culprits of interjecting much unnecessary confusion.

  21. 2

    Max, we discussed this before, but validity and infringement must be tried together.

    Secondly, whatever court is chosen as the highest court, it should be a court of general jurisdiction. One only has to observe the Federal Circuit to understand why specialized courts are wrong-headed.

  22. 1

    Academic alert readers. Ask them about the real world effects that the CJEU has had on trademark law in the EU. We don’t want more of that, thank you, in the law of patents.

    And ask whether the jurisprudence of the national patents courts is converging or diverging. Ask how, to take just one example, Germany doggedly ploughed its own national furrow on novelty for 30 years, supposing it to be only a matter of time before every other EU jurisdiction fell in line. At last though, it has now got in line with everybody else. Just like amongst the competing Boards of Appeal at the EPO, the best ones of the competing lines of legal logic have been slowly winning through, one by one, over the last 30 years. CJEU involvement will only mess things up.

    Ask whether Europe wants something like SCOTUS, to define its patent law. Nein Danke.

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