Patent Dispute Forum Shopping in the European Union...But Will It Last?

Profiting From Inconsistency: Patent Dispute Forum Shopping in the European Union … But Will It Last?

 “There must be consistency in direction.” - W. Edwards Deming

There is “flagrant inconsistency” when the competition policy authority can regulate the entire European economy whereas intellectual property rights are determined by EU member states.[1] In the European Commission's own words, the failure to create a single, harmonized European Patent Court renders the patent system “incomplete.”[2] 

To date, no single European community patent exists that is enforceable throughout the EU’s twenty-seven member states.  While the idea of a Community Patent dates back to the 1960's,[3] the European Patent Office (EPO) still can only grant a collection of national patents throughout Europe.  The improperly titled[4] European patent is misleading as it only provides national protection in member states that are party to the European Patent Convention (EPC). This protection is by no means uniform amongst member states and even though the EPO grants a "European" patent, the rights that are conferred are by no means European. 

Patents are member state specific, where each member state has independent, nationally enforceable patents. As a result, patent rights are not enforceable on a European Union (EU) level and patent holders and their competitors must turn to EU member state national courts for protection.[5]    

While patent litigation systems in EU Member States have evolved over several decades, different jurisdictions continue to develop their own characteristics and features.[6]  The longer the European Union waits to create a single, harmonized court, the more difficult it will become to de-fragment the increasingly heterogeneous interpretations of the EPC.

Fragmented litigation in the European Union leads to legal uncertainty, lower quality of patents, and high costs (presently the EU patent system is the most expensive in the world).  Fragmented patent rules on validity and infringement are harmful to patent holders and EU member states

Incomplete, fragmented patent litigation may present opportunities for patent holders if a proper jurisdiction is chosen, that is, one that is favorable to the patent holder. However, if a case is initiated too slowly or in an unfavorable jurisdiction, alleged patent infringers may instead reap the benefits of Europe’s inconsistent system. In a race to patent court, parties must, therefore, choose the jurisdiction most favorable to their case.  Unless and until the EU creates a uniform European Patent Court, parties can, and indeed should, engage in forum shopping in EU member states.

In a recent study conducted on the pharmaceutical sector, all stakeholders strongly supported the urgent creation of a single Community patent and a unified and specialized patent litigation system in Europe.[7] Rulings by the unified litigation system should be swift, of high quality and cost-effective. The results of the inquiry confirm that the Community patent and unified litigation system would create significant cost and efficiency improvements, in particular by reducing the costs associated with multiple filings, by eliminating essentially parallel court cases between the same parties in different Member States and by enhancing legal certainty through the avoidance of conflicting rulings. The Commission claims to be making all efforts that would lead to the rapid adoption of these instruments[8].

While patent dispute forum shopping amongst EU jurisdictions remains a current issue for patent holders (I) harmonization projects are underway to create a unified patent system in the EU (II).

I.  Forum Shopping When Enforcing Patent Rights in the EU

As mentioned, there is no single EU patent court and patent rights must be enforced before individual member states.  Despite a first level litigation system for validity questions has been established, as parties may commence opposition and appeal proceedings before the EPO,[9] patent validity may still be challenged before member state courts. 

Using the EPO procedure is attractive for opponents because the decision on patent validity is effective in all the states where the European patent is to be enforced; in theory, an EPO decision to revoke a European patent is supposedly final and the patent is deemed not to have had any effects from the outset in all states designated in the European Patent.[10]  However, a decision to uphold a European patent (i.e., maintain the patent as granted or in an amended form) leaves open the possibility of further validity challenges before national courts, which may render decisions as to the validity of the patent.

There are, thus, twenty-seven member state jurisdictions in the EU from which parties may choose. Given the important differences ( or, more negatively, “inconsistencies") between the European Courts, choosing the proper forum when enforcing patent rights in the EU is essential for both the plaintiff patentee and the alleged patent infringer. If the patent holder or the alleged infringer are too slow in enforcing their rights, they risk harming their case.  In the race to find the proper forum, both parties must consider which jurisdictions are available to commence litigation proceedings.

1.  The Great Race to the Courthouse: Relevant Jurisdictions for Patent Actions Under EU Laws

The EU’s lack of a unified and integrated patent litigation system directs parties litigating patent claims to rely on the rules of private international law to determine which court has jurisdiction.  The main EU regulation on the subject is the Brussels Regulation.[11] 

Under the Regulation, the general rule is that jurisdiction is determined on the basis of the defendant's domicile.[12]  However, the courts of each member state have exclusive jurisdiction, regardless of domicile, in proceedings concerned with the registration or validity of any European patent granted for that State and in any state in which the deposit or registration has been applied for or taken place.[13]  The Brussels Regulation, however, lists a host of exceptions to the general rules.

One of the exceptions applies to parties seeking provisional or protective measures, "as may be available under the law of that State, even if, under this Regulation, the courts of another Contracting State have jurisdiction as to the substance of the matter".[14]  This is often the case in patent disputes because plaintiffs frequently seek immediate protective measures to prevent further infringement.[15]

Another exception applies in matters relating to tort, delict or quasi-delict where the jurisdiction is the court in the place where the harmful event occurred or may occur.[16]  In the context of patent disputes, determining where the harmful event occurred can become quite convoluted.  While some argue that the harmful event occurs when the infringed object is placed on the market, at what moment is the good actually placed on the market?  When a purchase of the infringing product is conducted online, is the good placed on the market?  Or is it the actual receipt of the good in the mail?  If the purchase is made in Italy, but the good is to be delivered in France, do the Italian or French courts have jurisdiction?  Since these questions are resolved with respect to one of the twenty-seven individual member state rules, multiple courts often claim that they have proper jurisdiction.

Given that a patent granted by the EPO is validated in an average of 5-6 countries[17] and the host of exceptions under the Brussels Regulation, there are often several courts that may exercise jurisdiction.  Patent holders must therefore determine which member state's jurisdiction is likely to yield the most favorable results. 

Alleged patent infringers may also benefit from multiple member states exercising jurisdiction.  In cases involving the same cause of action and between the same parties that are brought in the courts of different member states, member state courts apply lis pendens, according to which, "any court other than the court first seized shall of its own motion stay its proceedings until such time as the jurisdiction of the court first seized is established."[18]  Alleged patent infringers may seek a declaration of non-infringement in a member state jurisdiction that is more favorable to their cause and/or a jurisdiction in which the proceedings are typically quite slow in order to prevent-or delay-a patent suit in a member state that is more efficient and/or generally favors patent holders.

The result:  a race to the courthouse. 

2.  Forum Shopping & the Getting the Best Bang for a Patentee's Buck

With a wide range of jurisdictions from which parties may choose to litigate, it is important to evaluate the factors involved in patent litigation and the qualities of each member state's jurisdiction.  Among these factors, three of the most important that are frequently cited by patent holders include the quality of decisions rendered, the swiftness in preventing the infringement, and the cost of litigation,[19] but the check-list of factors which may influence the patent holders when choosing the proper forum is wider.

Composition of Courts & Competence of Judges

Patentees wishing to bring weak cases should avoid Germany and the United Kingdom's jurisdiction, as judges, particularly in England, are reputed as some of the most qualified and have vast experience with patent disputes.[20]

Although, there is a specialized IP chamber at the District Court in The Hague, Dutch judges are not technically qualified.[21]  However, they are well-respected and generally known for their rigorous scrutiny tests in validity actions.[22] 

In France, there are seven First Instance Courts ("Tribunaux de Grande Instance") having jurisdiction ratione materiae concerning cases involving patents.  The Paris Tribunal of Grand Instance hears the majority of patent claims,[23] rendering an average of twenty decisions on infringement actions per year.[24]  Patent judges have general legal background but they subsequently receive specific IP training.[25] There are generally no technical judges in France, but the judge or the parties can designate a consultant (engineer or researcher) who is actively involved in the proceedings but does not participate in the judges' deliberations.[26]  The overall opinion is that there is a relative lack of technical expertise in French courts,[27] and some argue that there are no technically qualified judges whatsoever in France.[28]

Germany, which is the preferred venue, attracting between 50-70% of all patent litigation activity in Europe,[29] has the highest number of legally and technically qualified judges.[30]  Germany is one of the few jurisdictions which has a dual patent court system. That is, invalidity and infringement actions are heard separately; the Mannheim/Düsseldorf jurisdiction only hears infringement claims, whereas the Munich court hears validity actions.[31]  Overall, there are twelve district courts that hear infringement claims and one federal patent court that determines validity.  While German judges are technically qualified in invalidity cases, judges hearing infringement claims normally do not have a technical background, but they exclusively hear patent matters.[32]  Specialized panels implemented at district courts hear patent infringement cases whereby the patent panel consists of three judges, one presiding judge and two assisting judges.[33]

In Italy, there are twelve tribunals that specialize in IP litigation since the 27 June 2003 statute whose competence covers patents.[34] Italian courts generally rely on expert opinion, whereby a person who is both knowledgeable in patents and a scientist is hired to answer questions posed by court.[35]  That is, Italian judges tend to be more inquisitorial than adversarial.[36]

In Spain, the Juzgados de lo Mercantil have exclusive jurisdiction in IP litigation.  There is generally no availability of expertise with respect to patent disputes.[37]

Discovery & Evidence

The only jurisdiction that has automatic document disclosure is the UK.  Depending on party goals, the English Common Law discovery system may operate as a "two-edged sword," since discovery may help the patentee prove infringement on the one hand, but on the other, such disclosure may help the defendant establish the invalidity of the patent.[38]

In France, infringement is a question of fact and may generally be proved by any available means.[39]  In general, the most effective evidence-gathering tool with respect to infringement disputes in France is the seizure ("saisie-contrefaçon"), which is used in approximately 80% of infringement actions.  600 seizures are ordered per year by the Paris First Instance Court.[40]  The seizure allows evidence gathering in infringement actions and is granted ex-parte, whereby a bailiff who is assisted by experts that are chosen by the claimant, enters any premises where proof of infringement might be found to perform authorized investigations.  The bailiff issues a report to the claimant and this report is later admitted into evidence. It should be noted that the seizure is a protective measure in the meaning of Article 31 of the Brussels Regulation, which provides that "Application may be made to the courts of a Member State for such provisional, including protective, measures as may be available under the law of that State, even if, under this Regulation, the courts of another Member State have jurisdiction as to the substance of the matter". In other words, the rules set out in the Brussels I Regulation do not apply to actions seeking provisional measures. Therefore, provided that a seizure or the like exists under the laws of a Contracting State, such seizure may be used in order to prove infringement of a patent in another Contracting State. For example, Belgian Courts authorized that seizures be carried out in Belgium in order to prove infringement in France[41].

Contrary to the evidentiary process in the UK, there is no discovery procedure for infringement actions before the Mannheim/Düsseldorf court.[42]  Since 2002, however, German case law has appeared to develop evidentiary standards that require the alleged infringer to submit evidence when such evidence is indispensable to the determination of the infringement and prejudice.[43]  On 1 September 2008, Germany's Act of Parliament[44], which constituted the implementation of Directive 2004/48/EC on IP Enforcement, finally took effect.  Now, claims for information have become much broader and now includes third parties.[45]  In addition, there is a new claim for submission of documents and inspection, which may enable the patent holder to collect evidence to establish infringement.[46]  This runs contrary to the general principle that existed in German law whereby the defendant is generally under no obligation to disclose evidence to its disadvantage and where German civil procedure law does not know a specific procedure such as a seizure in France or a search order in the UK.

There is no seizure available in the Netherlands, and in Abbot v. Medtronic, the court held that seized material cannot be used by the patentee until a decision on the merits has found that the patent was infringed. The most common method of obtaining evidence is to enjoin the alleged infringer to produce information that is precise and certified, which is requested in the demand.[47]  Since 2002, the Netherlands has adopted a procedure whereby an expert may, in accordance with an order of evidence production, enter the premises of an infringer.[48] 

Under Article 256 of Spanish Civil Procedure Rules Act 1/2000, of January 7, a patent holder can request information about the origin and the distribution chain of the infringer's goods, and request (i) an examination of the suspected infringer, and (ii) the display of any banking, financial, commercial, and/or customs documents owned by the suspected infringer. In addition, Article 129 of the Spanish Patents Act 11/1986 of March 20, allows patent holders to request pre-trial that confirm whether infringement has occurred.[49]

Protective Measures

In general, the rules governing the application of the provisional and interim measures are determined by individual member states procedural laws.[50] Given that one of the main goals of a plaintiff is to contain patent infringement as soon as possible, the availability and expediency of provisional measures in member states should be taken seriously into account when forum shopping.[51]     

In Germany, the Netherlands, and the UK, parties have 1-2 months to act in order to obtain a preliminary injunction, whereas in France, a preliminary injunction may be sought at anytime.[52]

With respect to the issuance of such injunctions, Germany, the Netherlands and the UK seem to issue preliminary injunctions more rapidly than France, as such injunction may be issued in 20-40 days (and in 2-5 days without an oral hearing), 2-6 weeks, and 1-4 weeks respectively, whereas in France, such injunctions may take up to 2-3 months.[53]

In Germany, preliminary relief is available in the form of injunctions that enjoin the infringer from manufacturing, selling, offering or distributing infringing goods as well as a claim for information regarding the origin and distribution channels of the infringing product in the case of an obvious infringement.[54]  Urgency is a major indicator of whether of not preliminary relief will be granted.[55]

Preliminary injunctions in France may be available on an ex-parte basis and there is even a possibility of obtaining such injunctions before infringement is actually committed if the party can establish that there is an imminent threat of infringement.[56]

In the Netherlands, as in the UK, preliminary injunctions are generally quite speedy, while in the UK, there is a high risk of cross-undertaking.[57]  In an October 2008 decision in the UK, Les Laboratoires Servier v. Apotex H.C., the court gave detailed consideration of the compensation due to a generic in circumstances where the generic has been kept off the market by an injunction granted on the basis of a patent later held to be invalid.[58]

Stay of National Proceedings Pending EPO Opposition

In France, national proceedings are generally only stayed pending an EPO opposition in the event that opposition is serious and has chances of success.[59] 

With respect to infringement proceedings in Germany, proceedings will only be stayed if revocation or a declaration of nullity are probable.  Courts hearing validity claims will not commence proceedings unless and until the EPO opposition period has concluded.

In the Netherlands, stays are often granted subject to discretion in urgent cases.

In keeping with its generally principles of efficiency and swiftness, the UK will only stay national proceedings if the EPO opposition procedure is likely to be concluded quickly.  The UK, however, has recently had a "softening attitude"[60] with respect to the EPO.[61]

Swiftness of Final Decisions

Presently, the UK Courts are the fastest in the EU, where decisions are rendered in an average of 6-12 months,[62] and follow strict timetables.[63]  German courts general render decisions within 8-15 months, but may take longer depending on the level of expert evidence needed.[64]  In the Netherlands, decisions generally take 12-24 months.  French jurisdictions generally take the longest amount of time to render judgments on the merits, spending 16-24 months from the date the action is initially filed.  While on its face, a swift decision may appear ideal, depending on the goals of each party, engaging in lengthy proceedings may actually prove beneficial, particularly for alleged patent infringers, as discussed below.

Italian Torpedoes

While in Belgium, France and to a certain extent in Germany, the courts have refused to stay proceedings in the case of abuse,[65] both the ECJ and member state jurisdictions[66] continue to uphold the lis pendens doctrine discussed above, noting that a court second seized (whose jurisdiction has been claimed under an agreement conferring jurisdiction) must nevertheless stay proceedings until the court first seized has declared that it has no jurisdiction.  There is no exception to this rule, even in jurisdictions where the courts first seized have excessively long proceedings.[67]  Therefore, alleged patent infringers may greatly benefit by seeking a declaration of non-infringement in a slow-moving jurisdiction because patent holders will be much more inclined to settle in order to more quickly remove the infringing goods off the market.

Costs

Similarly, high costs may encourage the parties to more quickly reach an out of court settlement, as parties will wish to put an end to litigation as quickly as possible.

Costs vary depending on the type of dispute, its complexity, technical aspects, and the jurisdiction in which the dispute is being heard.[68]  In general, while German, French, and Dutch courts generally have similar costs, the UK is far more expensive than the other three jurisdictions and is nearly as expensive as all three jurisdictions combined.[69]  Not only are UK expenses quite high, but the UK, like France, adheres to the loser pays principle; thus, parties may find themselves covering the exorbitant litigation costs for the other party as well.  The high costs in the UK, however, translate into a settlement in the vast majority (80-90% of cases).[70]  Moreover, a study on pharmaceutical sector indicated that originator companies concluded more than 200 settlement agreements with generic companies in the EU, in which they agreed on the terms for ending an ongoing litigation or dispute.[71]

In a study on patent litigation costs and occurrence in four EPC member states, first instance proceedings for patent litigation where the amount in dispute of approximately €1 million were as follows: Germany €50,000-250,000, France €50,000-200,000, The Netherlands €60,000-200,000, The United Kingdom €150,000-1,500,000 and second instance proceedings for the same amount in dispute were as follows: Germany €90,000-190,000, France €40,000-150,000, The Netherlands €40,000-150,000, UK €150,000-1,000,000.[72] 

While a case with a value of EUR 250,000 may cost each party in first instance proceedings EUR 50,000 in Germany (and, as mentioned, similar amounts in France and the Netherlands), the costs of litigation can range between EUR 150,000 and EUR 1,150,000 in the United Kingdom.[73] 

Remedies

The method of calculating damages is an important factor when forum shopping, as methods vary amongst member states. 

According to the EU's Enforcement of Intellectual Property Rights Directive, all EU Member States must provide "effective, dissuasive, and proportionate" remedies and penalties against those engaged in counterfeiting and piracy.[74]  The implementation of this Directive, however, varies between member states.

Before 2007, patent holders seeking large damage awards should have avoided France altogether.  According to a study by the Ministry of Economics and Finance, 100% of business surveyed stated that they were dissatisfied by the amount of damages awarded in patent litigation.[75]  The study also determined that in 2/3 of the cases, the damages awarded represented only 25% of the amounts claimed. While the method of calculation may vary depending on the situation surrounding the patent dispute, the principle of "reparation must cover all the damage suffered, but nothing but the damage", remained common practice. After the 2007 reform whereby France implemented the Directive 2004/48/EC on IP Enforcement, French courts are beginning to provide remedies that are more adequately cover the damage suffered by patent holders. 

Unlike in France, 80% of parties involved in patent litigation in Germany stated that they were "very satisfied" with the damages awarded.[76]  In accordance with the 2008 German Patent Act discussed supra[77], damages may comprise lost profits, any unfair profits, and in appropriate cases, at least the amount of royalties which would have been due; these damage calculation methods, however already existed in German courts.[78]  Although a claim for destruction of the counterfeiting goods already existed in Germany, patent holders may now request a definitive removal from the channels of commerce.[79]

In the UK, damages may be awarded either in the form of the patentee's lost profits or disgorgement of the infringer's profits from the infringement (according to a formula proposed by the patent holder, under the strict analysis of the Court).[80] 

In the Netherlands, there are two types of damages available: (i) judicial procedure for the fixation of damages (generally quite complex and costly)and (ii) the estimation of profits of the infringer.[81] 

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Among this patchwork of specificities, the Courts of the different European countries have to render decisions in patent matters. A general rule, the effects of those decisions are confined in the jurisdiction of the court which rendered the decision. However, in some instances, the effects of the decisions may extend beyond this jurisdiction. Such decisions, known as "cross border decisions" would be an efficient way to make the European patent system more "European".

3. Cross border decisions: a way to open the borders of the European patent system

Pan European remedies remain an issue in the framework of the European Patent system. The question is to know whether the courts of a European country with jurisdiction to rule on infringement of the national part of a European Patent in this country can render decisions extending beyond this jurisdiction. The underlying issue behind such pan European remedy is the interconnection between jurisdiction and applicable law in patent matters. The basic principle is that jurisdiction of the courts is independent from the applicable law. For example, an Italian company can sue a French company in France for infringement, in Italy, of the Italian part of a European Patent and for infringement, in France, of the French part of the European Patent. In such a case, French courts would have jurisdiction for both claims based on article 2 of the Brussels Regulation as the defendant is a French company. The applicable law would be lex loci protectionis, namely Italian law for infringement of the Italian patent and French law for infringement of the French patent. Therefore, the French judge would have to apply Italian law to the infringement claim relating to the Italian patent[82] and French  law to the infringement claim relating to the French patent. Based on the principles set out in the Fiona Shevill ECJ decision,[83] he would have jurisdiction to award damages or issue injunctions for the harm caused both in France and in Italy.

However, based on the GAT v. LuK ECJ decision notably, it is now established that, if the defendant raises that the patent is invalid, either as a defense or as a counterclaim, the seized court, in the example the French court, loses its jurisdiction concerning the validity of the foreign patent[84]. Therefore, in the example, the French court would lose its jurisdiction concerning infringement in Italy and it would not be able rule on such infringement and grant damages for such infringement in Italy. As invalidity of the patent is, in practice, always raised at least as a defense in inter partes proceedings, many commentators argued that the GAT v. LuK decisions was the end of pan European remedies and cross-border injunctions.

But legal means to overcome the restrictions of the GAT v. LuK decision and obtain cross-border decisions may exist.

Firstly, in cases on the merits, the fact that the judge is not able to assess infringement of a foreign patent (if the defendant claims that this foreign patent is invalid) does not mean that the he cannot not render decisions having effects beyond its jurisdiction. In this respect, Rome II Regulation[85] on the law applicable to non-contractual obligations enshrines the conflict-of-law rule according to which the law applicable to infringement of a patent is the law of the country for which protection is claimed[86], i.e the principle of the lex loci protectionis, but leaves it to the national law to determine "the measures which a court may take to prevent or terminate injury or damage or to ensure the provision of compensation".[87] Therefore, based on the principles set out in the Rome II Regulation, a French court appears to be able issue to a cross-border injunction having effects in Italy in order to prevent or remedy a damage in France resulting from infringement of a French patent in France. Based on the Rome II Regulation, it should thus be emphasized that the question of cross border decisions is not only a matter of jurisdiction, but is also a matter of powers of the national courts to terminate the damage in their countries.

For example, let's imagine a company which manufactures products in Italy and sells 100 % of its production in France. Now, if a French company owns a European Patent covering said products with effect in France but with no effect in Italy, the company can only engage an action in France for infringement of the French part of the European Patent. As indicated above, the measures to be taken to ensure that infringement stops in France are determined by the lex fori, namely French law. But in this case, it appears reasonable to consider that these measures should have effect in Italy, and, for example, French Courts may order that the products stored in the premises of the Italian company be destroyed at the expense of the infringer.[88] Such decision would definitely be a cross border decision.

Secondly, the GAT v. LuK decision appears to be limited to actions on the merits and may not be extended to actions brought in order to obtain provisional measures. In fact, as Article 31 of the Brussels Regulation provides that "Application may be made to the courts of a Member State for such provisional, including protective, measures as may be available under the law of that State, even if, under this Regulation, the courts of another Member State have jurisdiction as to the substance of the matter", the rules set out in the Brussels Regulation do not apply to actions seeking interim relief. This means that the Fiona Shevill decision, which is based on Article 5(3) of the Brussels Regulation or the GAT v. Luk decision, which is based on Article 22(4) of the Brussels Regulation, may not apply to actions seeking only provisional measures. In this respect, it should be noted that, in France, interim injunctions may be granted in inter partes summary proceedings based on reasonably available evidence if the Judge is satisfied with a sufficient degree of certainty that the patent holder's right is being infringed, or that such infringement is imminent[89]. Of course, attacks on the validity of the patent may influence this "degree of certainty" of the infringement and in recent decisions, French Judges took into consideration the possible nullification of the patent claims in subsequent proceedings on the merits in order to assess the "degree of certainty" of the infringement and dismissed actions seeking preliminary injunctions where they had doubts on the validity of the patent.[90] However, the requirement concerning the "degree of certainty" of the infringement does not appear to be discussed in the GAT v. LuK decision which is limited to cases where the question of validity of the patent is raised "by way of an action or a plea in objection".

The ECJ held that the granting of this type of provisional measures requires the existence of a "real connecting link between the subject-matter of the measures sought and the territorial jurisdiction of the court before which the measures are sought"[91]. Now, is there a real connecting link between the French part of a European Patent and the Italian part of the same European Patent ? The existence of a "connecting link" between actions based on different national parts of the same European patent was addressed in the context of Article 6(1) of the Brussels Regulation in Roche v. Primus[92] where the ECJ held that the connection required for Article 6(1) of the Brussels Regulation cannot be established between patent infringement actions based on the national parts of the same European Patent in respect of acts committed by companies established in various contracting states, thereby putting an end to the "spider-in-the-web doctrine". However, nothing in the reasoning of the ECJ indicates that this principle can be equally applied to actions seeking provisional measures based on Article 31 of the Brussels Regulation. Therefore, our opinion is that the French Courts may consider that they have jurisdiction to grant interim injunctions enjoining a party from infringing a foreign patent based on article 31 of the Brussels Regulation.

Finally, it should be noted that the defendants may not always have the opportunity to raise invalidity of the foreign patent. In this respect, the Directive 2004/48/EC on the enforcement of intellectual property rights[93] provides that "provisional measures (…) may, in appropriate cases, be taken without the defendant having been heard, in particular where any delay would cause irreparable harm to the rightholder". Such provision was implemented under French Law in Article L. 615-3 of the Intellectual Property Code and, according to this Article, any provisional measures, and notably interim injunctions can be ordered in ex parte proceedings. The French courts recently issued such an ex parte order enjoining Chinese companies from marketing a product in France.[94] Of course, the invalidity of the patents cannot be raised by the defendants in ex parte proceedings and the GAT v. LuK decision should not apply in those proceedings. Therefore, our opinion is that nothing prevents a French judge from issuing an ex parte cross-border injunction.

In view of the foregoing, it appears possible to obtain decisions with cross-border effects in patent matters but we have to admit that, except for the Dutch Courts in kort geding proceedings, the European Courts are reluctant to issue such decisions. Is it because the Judges and attorneys are shy?[95] Or because they have not yet realized that Europe extends beyond their borders ?

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In order to have real cross-border decisions and to abolish the inconsistencies of the European decisions in patent matters, harmonization appears as a long-felt need. To date, however, none of the projects ensuring a fully harmonized European patent system have been implemented in Europe.

II.  Harmonization Projects

Fragmentation in the EU patent systems “implies additional costs for businesses and ultimately for governments, and overlapping jurisdiction between the European and national levels results in legal uncertainty, potentially yet more costs and de facto lower quality.”[96]  Indeed, the European patent system “remains the most expensive in the world.”[97] Organizations, such as the European Patent Lawyers Association, agree and support the proposal of a Community Patent related court system that is of “high quality,” “reasonably swift,” and which “achieves its results with reasonable costs for both parties concerned.”[98]

Since 25 June 1999, European Patent Convention member states have made strides to create a European Patent Litigation Agreement (EPLA).[99]  However, to date, there does not exist a single EU Patent Court that has unified jurisdiction over all parties to the EPC.  The Commission notes that the "current fragmented patent system is therefore seen as a major impediment to innovation in Europe and to the EU's global competitiveness."[100]

A unified European Patent Court would put and end to forum shopping by harmonizing the interpretation and application of patent laws and “effectively eliminat[ing] the need for engaging in litigation regarding the same legal matter in multiple jurisdictions.”[101]  Further, a patent court would also lower litigation costs.[102]  Studies and EU politicians agree: a harmonized patent court is not only in line with EU policy, but it is also an efficient and cost effective approach to putting an end to forum shopping in patent disputes in the European Union.

Stakeholders express strong support for the urgent creation of a single Community patent and a unified and specialized patent litigation system.[103]  A pharmaceutical inquiry recently conducted by the Commission came to the same conclusion of numerous additional studies, holding that "the Community patent and unified litigation system would create significant cost and efficiency improvements, in particular by reducing the costs associated with multiple filings, by eliminating essentially parallel court cases between the same parties in different Member States and by enhancing legal certainty through the avoidance of conflicting rulings."[104]

It is therefore widely admitted that present harmonization is insufficient.

1. The insufficiencies of the present Harmonization

European Patent Convention : Validity

While French courts have generally recognized the validity of patents granted by the EPO, the Paris First Instance Court recently nullified a patent that was upheld by the Board of Appeal of the EPO - a first for French jurisdictions.[105] 

The judges of the patents Court and the House of Lords in the UK constantly refer to EPO decisions, emphasising a consistency of approach with that of the EPO.  This was put quite colorfully in a recent case concerning the patentability of a Swiss claims whose novelty depended on a new treatment by a different dosage regime: "Now, you cannot have 34 [the current number of EPC members] ships steering in the same convoy unless there is something like a commodore. That is why Mustill LJ in Genentech Inc's Patent [1989] RPC 147, 266 referred to the Board of Appeal of the European Patent Office as "the central decision making body of the European patent system" [which] must be hearkened to with particular attention (…)In saying our courts would and should normally follow the settled jurisprudence of the EPO it should be understood, of course, that they are not bound do so. In the unlikely event that we are convinced that the commodore is steering the convoy towards the rocks we can steer our ship away. Technically we are not in the same position as we are in the case of decisions of the European Court of Justice (…). And of course if there is no clear message from the commodore or he gives mixed messages we must decide our own course anyway."[106] The great influence of the case law of the EPO in the UK is also exemplified in the same case by the fact that Lord Justice Jacob extended the time for leave to appeal the decision to the House of Lords until after Enlarged Board renders a decision in a related case.[107]

European Patent Convention : Infringement

Article 69(1) of the EPC defines the extent of protection conferred by a European patent and the Protocol on the Interpretation of Article 69 attempts to provide guidance on member states' interpretation of article 69[108]. Despite efforts to harmonize the EPC, the "drafters [of the Protocol] badly underestimated the power of legal cultures to incorporate new ideas within their own patent system framework."[109]  Differing interpretations of the EPC have led to directly conflicting decisions by EU member states' national courts in identical affairs.[110]  Thus, while there are thirty-six signatory states and in theory, the interpretation of infringement actions under the EPC should be consistent, the reality is that interpretation varies greatly between jurisdictions.

IP Enforcement Directive

In an effort to ensure a “high equivalent and homogenous level of protection” in EU member states, the EU adopted the directive on the harmonization of IP enforcement mechanisms.[111]  Under the EU’s Enforcement of Intellectual Property Rights Directive, enforcement is a Member State issue.  The Directive, however, requires that Member States provide fair and equitable measures, procedures and remedies that ensure the enforcement of IP rights.  All EU Member States must, therefore, provide “effective, dissuasive, and proportionate” remedies and penalties against those engaged in counterfeiting and piracy.[112] 

The abovementioned Directive has led many states to adopt national provisions on civil sanctions and remedies more closely in line with “best practices” standards.  These standards include procedural protection, which covers evidence and protection of evidence, and provisional measures such as injunctions and seizure.  There is also a “right of information” that allows judges to gain access to names and addresses of those involved in distributing the illegal goods, and the details about the amount of goods involved and the prices.  Remedies include the infringing invention’s destruction, recall of illegal material, and permanent removal of that invention from the EU market.  The legitimate patent holder may be entitled to damage rewards, and/or injunctions.  The Directive does not provide for any criminal remedies. 

While minimum requirements regarding enforcement issues are set forth in the Directive, the EU has failed to resolve the differences between member state legal systems and the forum shopping issues discussed above.  In any case, while member states must implement the directive, their interpretation of the language of the rules varies immensely.

 

 

*

*           *

The aforementioned inconsistencies between the EU Member states thus result from these insufficiencies of the present harmonization of the European patent system, such that an in-depth reform of the system in envisaged.

2.  The envisaged Harmonization Projects

Modifications to the Brussels Regulation

The Brussels Regulation discussed above that governs private international law sets forth the basic guidelines on an EU level for determining which national court has jurisdiction.  While the Brussels Regulation sets forth the basic rules in determining the proper jurisdiction, the reality is that with the many exceptions listed under the regulation (discussed in section I supra), member states have considerable flexibility in applying their own rules to the dispute, giving rise to the various forum shopping issues.

In a Green Paper,[113] the Commission analyzed some of the shortcomings in the current system of patent regulation under Regulation 44/2001 and the solutions that may be appropriate in order to enhance the enforcement of industrial property rights for patent holders to enforce and defend rights and the position of claimants seeking to challenge their rights in the context of the Brussels Regulation. 

The European Patent Lawyers Association (EPLAW) has commented on the problems that arise in the context of 44/2001, supporting the exclusion of the lis pendens in a case of a negative declaratory action started before a (positive) infringement action in another member state.  EPLAW's suggestion, if adopted, would put an end to the Italian Torpedo problem.[114]  In addition, EPLAW proposes an amendment to Article 5 of the Brussels Regulation in order to reintroduce the "spider-in-the web doctrine" which was set aside by the aforementioned Roche v. Primus ECJ decision. It also suggests to amend Article 22(4) of the Regulation in order to set aside the aforementioned GAT v. LuK ECJ decision. Amending the Brussels Regulation would in fact be an efficient way to reduce parallel litigation in EU member countries. However, it would not, as such, put an end to the considerable differences between the Member States in patent infringement cases.

The European Patent Litigation Agreement (EPLA)

The EPO recognizes the "urgent need to remedy the shortcomings of the present purely national litigation system for European patents, with its well-known problems arising from multiple patent litigation which involves high costs, legal uncertainty, cross-border litigation and forum shopping: the co-existence of a multiplicity of patent enforcement authorities in Europe leads to a fragmented and inefficient market for ideas."[115]  

At the Paris Intergovernmental Conference on 25 June 1999, the Contracting States of the European Patent Organisation set up a Working Party on Litigation which mandated to present "a draft text for an optional protocol to the European Patent Convention which ... would commit its signatory states to an integrated judicial system, including uniform rules of procedure and a common appeal court". In this view, an "Agreement on the establishment of a European patent litigation system", also called the "European Patent Litigation Agreement" (EPLA) was drafted.[116]  

The intention of the EPLA is to create a unified system for litigation on European patents for the EPC contracting states that wish to join the system. The EPLA proposal would create a single judiciary that maintained uniform procedural rules and a single, harmonized appellate court.  If a European Patent Court was created under the EPLA, it would have exclusive jurisdiction in nullity actions and nullity cross actions, actions for damages or compensation arising from provisional protection conferred by a published European patent application and actions for infringement, threat of infringement, or declaration of non-infringement of a European patent.[117]  During a seven-year transitory period, member states would retain “parallel jurisdiction” to the European Patent Court.[118] To encourage state sovereignty (and EPLA approval) national courts would retain jurisdiction with respect to provision and precautionary measures, attachment proceedings, compensation, fees, and other proceedings.[119]  

For almost four years, the EPLA has awaited submission to an intergovernmental conference of EPC signatories,[120] but the project did not find sufficient support in the Council or among member states.  In fact, the main problem of the EPLA is that it is developed outside the Community context and only deals with European patent litigation. This would mean that a separate jurisdiction for "future" Community patents would be required[121]. Once again, the EU member states were thus “bipolarized”, some favoring the EPLA on the basis of the EPC, others favoring the establishment of a community patent, with a harmonized judicial system designed to settle both litigation involving European and EU patents.

The Commission tried to find a compromise to take these opposing views into account.

The Uniform Patent Litigation System (UPLS)

Given the EPLA's insufficient support, policy discussions concerning a unified European and Community Patents Court, have been revived under a different title: the Uniform Patent Litigation System (UPLS). The UPLS would ostensibly establish a court that would assert jurisdiction over validity and infringement actions concerning European patents and for “future” Community patents. 

As late as 9 July 2009, the Commission has been developing a Working Paper on the draft Rules of Procedure relating to the UPLS.[122]

The main features of the UPLS would be as follows: a largely decentralized court of first instance, a single appeal instance and a role of the European Court of Justice aimed at providing a consistent interpretation and application of European Community law.[123]  This non-community jurisdiction, created by an international treaty in which the European Community, member states, and others party to the EPC would participate if they desired.[124]

The substantive patent law would be closely linked to the provisions set forth in the 1989 Agreement relating to Community patents[125], concerning for example the definition of infringing acts or the reversal of the burden of proof, and while national courts would retain jurisdiction to order provisional or protective measures and concerning the seizure of goods as security for any damages, compensation, costs or other payment resulting from proceedings before the patent court, the Brussels Regulation would be dealt with in the Agreement.  The language would be based on the time-honored language regime of the EPO's three official languages as adapted to the post-grant litigation, modeled after the London Agreement on the application of Art. 65 of the EPC. Representation before the EPC will be compulsory and entrusted to persons registered as European patent counsel, who may be assisted by professional representatives.[126]

The European Communities allege that if the UPLS is adopted, it would standardize the European patent system by creating an autonomous community patent that would provide unitary title and be uniformly valid throughout the EU.[127]  While, while the UPLS appears to be a respectable effort to harmonize patent litigation, there is an inherent problem with creating a future court structure that will assert jurisdiction over "future" community patents when member states presently reach such sharply conflicting conclusions in the same affairs.    

In a communication of May 2009[128], the French Senate asked the French Government to act according to the recommendation of the Commission for the creation of a unified patent litigation system. Interestingly, the communication indicates that "As a matter of principles, the Ministry of Justice is opposed to the creation of any supranational and specific court that could appear as a break up of the judicial system's unity" and that, by refusing a non-community jurisdiction in patent matters, "France appears to be very isolated within the Council". Such a statement exemplifies the political issues that remain unsolved concerning the UPLS.

Until a community patent is created or unified system is set up, forum shopping among European jurisdictions will remain common practice in Europe and the stakeholders should learn how to make to most of it.

 

[1] Bruno van Pottelsberghe de la Potterie and Malwina Mejer, Economic Incongruities in the European Patent System, Bruegel Working Paper(2009).

[2] COMMUNICATION FROM THE COMMISSION TO THE EUROPEAN PARLIAMENT AND THE COUNCIL - Enhancing the patent system in Europe -, COMMISSION OF THE EUROPEAN COMMUNITIES, Brussels, 3.4.2007 COM(2007) 165 final.

[3] Kara M. Bonitatibus, The Community Patent System Proposal and Patent Infringement Proceedings: An Eye Towards Greater Harmonization in European Intellectual Property Law 22 PACELR 201, 221 (2001) citing Commission of the European Communities, Proposal for Council Regulation on the Community Patent 4.

[4] Javier Aparicio Salom, Industrial Property Rights: Understanding Community and Spanish IP Practices, Aspatore at 3 (2009).

[5] Javier Aparicio Salom, Industrial Property Rights: Understanding Community and Spanish IP Practices, Aspatore at 6 (2009).

[6] Prof. Dietmar Harhoff, Ph.D., Ludwig-Maximilians-Universität (LMU) München, Institute for Innovation Research, Technology Management and Entrepreneurship (INNO-tec), Economic Cost-Benefit Analysis of a Unified and Integrated European Patent Litigation System, Final Report, Tender No. MARKT/2008/06/D at pg. 12 (26 February 2009).

[7] European Commission, DG Competition, Commission Staff Working Document (Technical annex to the Commission Communication) at pg. 461 (8 July 2009).

[8] See "Recommendation from the Commission to the Council to authorize the Commission to open negotiations for the adoption of an agreement creating a Unified Patent Litigation System" SEC (2009) 330 final, Brussels 20.3.2009

[9] Prof. Dietmar Harhoff, Ph.D., Ludwig-Maximilians-Universität (LMU) München, Institute for Innovation Research, Technology Management and Entrepreneurship (INNO-tec), Economic Cost-Benefit Analysis of a Unified and Integrated European Patent Litigation System, Final Report, Tender No. MARKT/2008/06/D at pg. 7 (26 February 2009).

[10] Article 68 EPC

[11] Council Regulation (EC) No 44/2001 of 22 December 2000 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters (formerly the 1968 Brussels Convention).  The Lugano Convention (Convention on jurisdiction and the enforcement of judgements in civil and commercial matters done at Lugano on 16 September 1988) is also relevant with respect to the European Free Trade Association States, but is not the focus of this article.

[12] Council Regulation (EC) No 44/2001 of 22 December 2000 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters at art. 2.  Domicile is determined by the laws of the state of the national court, that is the EU member state court which is initially considering the matter.  Courts may assume jurisdiction based on domicile even in cases in which the patent is not granted in that state.

[13] Council Regulation (EC) No 44/2001 at art. 22(4).  

[14] Council Regulation (EC) No 44/2001 at art. 31.

[15] See David Perkins and Garry Mills, Patent Infringement and Forum Shopping in the European Union, 20 Fordham Int'l L.J. 552.

[16] Council Regulation (EC) No 44/2001 at art. 5(3)

[17] Bruno van Pottelsberghe, Lost Property : The European patent system and why it doesn’t work, Bruegel Blueprint Series at pg. 8 (2009).

[18] Council Regulation (EC) No 44/2001 at art. 27(1).  Moreover, under article 27(2), where "the jurisdiction of the court first seized is established, any court other than the court first seised shall decline jurisdiction in favour of that court." Further, in the event that a "court of a Member State is seized of a claim which is principally concerned with a matter over which the courts of another Member State have exclusive jurisdiction by virtue of Article 22, it shall declare of its own motion that it has no jurisdiction." Id. at art. 25.

[19] Isabelle Leroux and Frédéric Bourguet, Bird & Bird, Litiges de contrefaçon de brevets – Une étude comparative des systèmes juridictionnels, La Documentation française – Paris (2006) at pg. 72. 

[20] The United Kingdom is composed of three separate jurisdictions in England and Wales, Scotland, and Northern Ireland.  The two courts in England with the jurisdiction to try patent disputes are the Patents Court (generally reserved for larger sized businesses) and the Patents County Court (established in 1990 to provide a forum for small to medium sized businesses concerning patent disputes involving lower-grade/older technology). See David Perkins and Garry Mills, Patent Infringement and Forum Shopping in the European Union, 20 Fordham Int'l L.J. at 564.

[21] Bruno van Pottelsberghe de la Potterie and Malwina Mejer, Economic Incroguities in the European Patent System, Bruegel Working Paper at pg. 7 (2009).

[22] Nicola Dagg and Laëtitia Benard, Partners London and Paris, Adjusting your patent strategy in the light of key pharma patent cases in UK and Europe, Allen & Overy (2009).

[23] Kara M. Bonitatibus, The Community Patent System Proposal and Patent Infringement Proceedings: An Eye Towards Greater Harmonization in European Intellectual Property Law 22 PACELR 201, 218 (2001) citing http:// www.ladas.com/GUIDES/PATENT/ForeignPatLit/France_Patent_Lit.html.

[24] Average figures calculated for the years between 1990-2007. See Pierre Véron, Réparation du préjudice cause par la contrefaçon de brevet d'invention au Tribunal de grande instance de Paris, Données chiffrées 2000-2007 at pg. 2 (2008).

[25] Council Working Document 11622/07 Towards an Enhanced Patent Litigation System and a Community Patent-How to Take Discussions Further at pg. 31 12 July 2007 available at  http://register.consilium.europa.eu/pdf/en/07/st11/st11622.en07.pdf.

[26] Article L. 615-20 of the French Intellectual Property Code, Council Working Document 11622/07 Towards an Enhanced Patent Litigation System and a Community Patent-How to Take Discussions Further at pg. 31 12 July 2007 available at  http://register.consilium.europa.eu/pdf/en/07/st11/st11622.en07.pdf.

[27] Prof. Dietmar Harhoff, Ph.D., Ludwig-Maximilians-Universität (LMU) München, Economic Cost-Benefit Analysis of a Unified and Integrated European Patent Litigation System, Institute for Innovation Research, Technology Management and Entrepreneurship (INNO-tec), Final Report, 26 February 2009, Tender No. MARKT/2008/06/D at pg. 14.

[28] Bruno van Pottelsberghe de la Potterie and Malwina Mejer, Economic Incroguities in the European Patent System, Bruegel Working Paper at pg. 7 (2009).

[29] Prof. Dietmar Harhoff, Ph.D., Ludwig-Maximilians-Universität (LMU) München, Institute for Innovation Research, Technology Management and Entrepreneurship (INNO-tec), Economic Cost-Benefit Analysis of a Unified and Integrated European Patent Litigation System, Final Report, 26 February 2009, Tender No. MARKT/2008/06/D at pg. 13.

[30] Bruno van Pottelsberghe de la Potterie and Malwina Mejer, Economic Incroguities in the European Patent System, Bruegel Working Paper at pg. 7 (2009).

[31] That is to say, German courts do not recognize invalidity as a defence to infringement claims.

[32] Wolfgang von Meibom and Boris Kreye, Patent Litigation in Europe – Focus on Germany, available at http://www.twobirds.com/Spanish/News/Articles/Paginas/Patent_litigation_in_Europe_focus_on_Germany.aspx 30 September 2004 (last visited September 3, 2009); Council of the European Union, 11622/07 Towards an Enhanced Patent Litigation System and a Community Patent – How to Take Discussions Further 12 July 2007.

[33] Wolfgang von Meibom and Boris Kreye, Patent Litigation in Europe – Focus on Germany, available at http://www.twobirds.com/Spanish/News/Articles/Paginas/Patent_litigation_in_Europe_focus_on_Germany.aspx 30 September 2004 (last visited September 3, 2009).

[34] Council Working Document 11622/07 Towards an Enhanced Patent Litigation System and a Community Patent-How to Take Discussions Further at pg. 31 12 July 2007 available at http://register.consilium.europa.eu/pdf/en/07/st11/st11622.en07.pdf

[35] Kara M. Bonitatibus, The Community Patent System Proposal and Patent Infringement Proceedings: An Eye Towards Greater Harmonization in European Intellectual Property Law 22 PACELR 201, 221 (2001).

[36] Kara M. Bonitatibus, The Community Patent System Proposal and Patent Infringement Proceedings: An Eye Towards Greater Harmonization in European Intellectual Property Law 22 PACELR 201, 221 (2001).

[37] No technical judges without legal qualification. Judges need to demonstrate specific knowledge. Parties may present an expert's opinion or ask the courts to designate an expert with specific knowledge of the matter discussed in the case. The expert's opinion is non binding. Available at http://register.consilium.europa.eu/pdf/en/07/st11/st11622.en07.pdf

[38] David Perkins and Garry Mills, Patent Infringement and Forum Shopping in the European Union, 20 Fordham Int'l L.J. at 564 citing the Rules of the Supreme Court, The Supreme Court Practice, Vol. 1, Pt. 1, Order 104, Rule 11(2)(b) (1997) that hold that the patentee must provide discovery of non-privileged documents for a period of two years before and after the priority date for claims involving lack of an inventive step.

[39] French Intellectual Property Code Art. L. 615-5 (2009).

[40] Pierre Véron, The French "saisie-contrefaçon" – FORUM conference The Practice of Multi-jurisdictional patent litigation, Munich 9 January 2009.

[41] José Ancel "Point de vue d'un juge français sur les injonctions transfrontières et la Convention de Bruxelles", RDPI, Octobre 1998, ETUDE, n° 92,

[42] Nicola Dagg and Laëtitia Benard, Partners London and Paris, Adjusting your patent strategy in the light of key pharma patent cases in UK and Europe, Allen & Overy (2009).

[43] Isabelle Leroux and Frédéric Bourguet, Bird & Bird, Litiges de contrefaçon de brevets – Une étude comparative des systèmes juridictionnels, La Documentation française – Paris (2006) at pg. 26. 

[44] Patentgesetz [Patent Act], Dec. 16, 1980 BGBl. 1981 I at 1, § 140c as amended on 7 July 2008 BGBl. I at 1191 (F.R.G.).

[45] Thomas Mayer, Maiwald Patentanwalts GmbH, November 2008 Germany: Enforcement of IP rights improved 01 November 2008.

[46] Thomas Mayer, Maiwald Patentanwalts GmbH, November 2008 Germany: Enforcement of IP rights improved 01 November 2008.

[47] Isabelle Leroux and Frédéric Bourguet, Bird & Bird, Litiges de contrefaçon de brevets – Une étude comparative des systèmes juridictionnels, La Documentation française – Paris (2006) at pg. 27.  

[48] Isabelle Leroux and Frédéric Bourguet, Bird & Bird, Litiges de contrefaçon de brevets – Une étude comparative des systèmes juridictionnels, La Documentation française – Paris (2006) at pg. 27. 

[49] 2009 WL 2510878, 16 (2009).

[50] Article 31 of the Brussels Regulation.

[51] Aurelio Lopez-Tarruella Martinet and Fabrizio Miazzetto, The Community Trademark and Design Court of Alicante and Forum Shopping Regarding European Community Intellectual Property Rights Litigation, 95 Trademark Rep. 1308, 1319 (2005).

[52] Nicola Dagg and Laëtitia Benard, Partners London and Paris, Adjusting your patent strategy in the light of key pharma patent cases in UK and Europe, Allen & Overy (2009).

[53] Nicola Dagg and Laëtitia Benard, Partners London and Paris, Adjusting your patent strategy in the light of key pharma patent cases in UK and Europe, Allen & Overy (2009).

[54] Wolfgang von Meibom and Boris Kreye, Patent Litigation in Europe – Focus on Germany, available at http://www.twobirds.com/Spanish/News/Articles/Paginas/Patent_litigation_in_Europe_focus_on_Germany.aspx 30 September 2004 (last visited September 3, 2009) citingSection 140B para. 1 and 3 of the German Patent Act.

[55] Nicola Dagg and Laëtitia Benard, Partners London and Paris, Adjusting your patent strategy in the light of key pharma patent cases in UK and Europe, Allen & Overy (2009).

[56] Article L. 615-3 of the French Intellectual Property Code.

[57] Nicola Dagg and Laëtitia Benard, Partners London and Paris, Adjusting your patent strategy in the light of key pharma patent cases in UK and Europe, Allen & Overy (2009).

[58] Nicola Dagg and Laëtitia Benard, Partners London and Paris, Adjusting your patent strategy in the light of key pharma patent cases in UK and Europe, Allen & Overy (2009).

[59] Nicola Dagg and Laëtitia Benard, Partners London and Paris, Adjusting your patent strategy in the light of key pharma patent cases in UK and Europe, Allen & Overy (2009).

[60] Recent English cases have consistently emphasised the importance of conformity with EPO decisions. In the case of Eli Lilly v. Human Genome Sciences, for example, the Court raised noted the importance of co-operating with the EPO when there are parallel proceedings. Later, the court in Jacob stated that in the future parties who are litigating before the EPO and the courts in the UK should inform both the EPO and our court of the position as early as possible – and should where possible ask the appropriate tribunal (either the EPO or the English Court) to speed things up so as to avoid duplication of proceedings. See Nicola Dagg and Laëtitia Benard, Partners London and Paris, Adjusting your patent strategy in the light of key pharma patent cases in UK and Europe, Allen & Overy (2009).

[61] Nicola Dagg and Laëtitia Benard, Partners London and Paris, Adjusting your patent strategy in the light of key pharma patent cases in UK and Europe, Allen & Overy (2009).

[62] Nicola Dagg and Laëtitia Benard, Partners London and Paris, Adjusting your patent strategy in the light of key pharma patent cases in UK and Europe, Allen & Overy (2009).

[63] Prof. Dietmar Harhoff, Ph.D., Ludwig-Maximilians-Universität (LMU) München, Institute for Innovation Research, Technology Management and Entrepreneurship (INNO-tec), Economic Cost-Benefit Analysis of a Unified and Integrated European Patent Litigation System, Final Report, 26 February 2009, Tender No. MARKT/2008/06/D at pg. 14.

[64] Nicola Dagg and Laëtitia Benard, Partners London and Paris, Adjusting your patent strategy in the light of key pharma patent cases in UK and Europe, Allen & Overy (2009).

[65] See Dr. Klaus Grabinski, Presiding Judge, Dusseldorf District Court, The Brussels I Regulation (Council Regulation 44/2001) in Patent Infringement Litigation, presentation at the IP Enforcement Week 13 November 2007.

[66] See Research in Motion v Visto C.A. 6/03/08 whereby the English Court of Appeal refused to condemn the Italian torpedo, holding that parties are entitled to “jockey” for the more strategic position.

[67] Gasser v. MISAT 9/12/03 (C-116/02) ECJ; see also Dr. Klaus Grabinski, Presiding Judge, Dusseldorf District Court, The Brussels I Regulation (Council Regulation 44/2001) in Patent Infringement Litigation, presentation at the IP Enforcement Week 13 November 2007 citing Turner ECJ C-158/02 holding that even if a party is acting with a bad faith attempt to frustrate existing proceedings, Member State jurisdictions are prohibited from precluding the grant of an injunction. 

[68] Prof. Dietmar Harhoff, Ph.D., Ludwig-Maximilians-Universität (LMU) München, Institute for Innovation Research, Technology Management and Entrepreneurship (INNO-tec), Economic Cost-Benefit Analysis of a Unified and Integrated European Patent Litigation System, Final Report, 26 February 2009, Tender No. MARKT/2008/06/D at pg. 12.

[69] Bruno van Pottelsberghe de la Potterie and Malwina Mejer, Economic Incroguities in the European Patent System, Bruegel Working Paper at pg. 4 (2009).

[70] Isabelle Leroux and Frédéric Bourguet, Bird & Bird, Litiges de contrefaçon de brevets – Une étude comparative des systèmes juridictionnels, La Documentation française – Paris (2006) at pg. 31. 

[71] Moreover, " Because the content of patent settlements is often confidential, in particular when done outside the court room, there is also a risk that problematic settlements are not detected, neither by competition authorities nor by public or private health insurers." European Commission, DG Competition, Commission Staff Working Document (Technical annex to the Commission Communication) at para. 1343 (8 July 2009).

[72] Bruno van Pottelsberghe, Lost Property : The European patent system and why it doesn’t work, Bruegel Blueprint Series at pg. 14 (2009).

[73] Prof. Dietmar Harhoff, Ph.D., Ludwig-Maximilians-Universität (LMU) München, Institute for Innovation Research, Technology Management and Entrepreneurship (INNO-tec), Economic Cost-Benefit Analysis of a Unified and Integrated European Patent Litigation System, Final Report, 26 February 2009, Tender No. MARKT/2008/06/D at pg. 12. The study also notes that as procedures differ across countries, the potential for eocnomies of scale in duplicated proceedings is limited.

[74] The abovementioned Directive has led many states to adopt national provisions on civil sanctions and remedies more closely in line with “best practices” standards.  These standards include procedural protection, which covers evidence and protection of evidence, and provisional measures such as injunctions and seizure.  There is also a “right of information” that allows judges to gain access to names and addresses of those involved in distributing the illegal goods, and the details about the amount of goods involved and the prices.  Remedies include the infringing invention’s destruction, recall of illegal material, and permanent removal of that invention from the EU market.  The legitimate patent holder may be entitled to damage rewards, and/or injunctions.  Under the EU Regulation concerning customs action against goods suspected of infringing certain IP rights, the right-holder may file a written complaint with the relevant customs authorities. Such an application for action must include accurate and detailed descriptions of the invention in question, information about the nature of the fraud, and the patent holder’s contact information. The law applicable when deciding whether an intellectual property right has been infringed is that of the Member State where the invention was discovered. Member States may also enable the customs authorities to have the infringing invention destroyed. See Leila R. Golchehreh, Toolkit for Intellectual Property Rights in the European Union, Department of Commerce Library at pg. 11 (2007) available at http://www.buyusa.gov/europeanunion/iprtoolkit.pdf (summarizing IP protection in the European Union).

[75] Isabelle Leroux and Frédéric Bourguet, Bird & Bird, Litiges de contrefaçon de brevets – Une étude comparative des systèmes juridictionnels, La Documentation française – Paris (2006) at pg. 70 citing Ministère de l'Économie et des Finances, mai 2000, Propriété industrielle, Le cout des litiges – Etude comparée entre la France, l'Allemagne, l'Angleterre, les Etats-Unis, l'Espagne et les Pays-Bas, DIGITIP, sous la direction de maitre Grégoire Triet, avocat, en collaboration avec M. Luc Santarelli, conseil en propriété industrielle at pg. 30. 

[76] Isabelle Leroux and Frédéric Bourguet, Bird & Bird, Litiges de contrefaçon de brevets – Une étude comparative des systèmes juridictionnels, La Documentation française – Paris (2006) at pg. 24. 

[77] Patentgesetz [Patent Act], Dec. 16, 1980 BGBl. 1981 I at 1, § 140c as amended on 7 July 2008 BGBl. I at 1191 (F.R.G.).

[78] Thomas Mayer, Maiwald Patentanwalts GmbH, November 2008 Germany: Enforcement of IP rights improved 01 November 2008.

[79] Thomas Mayer, Maiwald Patentanwalts GmbH, November 2008 Germany: Enforcement of IP rights improved 01 November 2008.

[80] Patents Act, 1977, c. 37, § 61(1)(c)-(d) (Eng.); Isabelle Leroux and Frédéric Bourguet, Bird & Bird, Litiges de contrefaçon de brevets – Une étude comparative des systèmes juridictionnels, La Documentation française – Paris (2006) at pg. 35.

[81] Isabelle Leroux and Frédéric Bourguet, Bird & Bird, Litiges de contrefaçon de brevets – Une étude comparative des systèmes juridictionnels, La Documentation française – Paris (2006) at pg. 30.

[82] The French judge, who acknowledges that the foreign law is applicable, has to search, either of his own motion, or at the request of the party who relies upon it, the contents of this foreign law, with the help of the parties or personally if needed and he has to rule on the litigious question according to the foreign law (see French Supreme Court, 28 June 2005, Docket No. 00-15734

[83] See Fiona Shevill v. Presse Alliance S.A, ECJ, 7 March 1995, C-68/93

[84] Article 22(4) of the Brussels Regulation, 16(4) of the Brussels Convention and GAT v. LuK ECJ, 16 July 2006, C-4/03

[85] Regulation EC No. 864/2007 of 11 July 2007 on the law applicable to non-contractual obligations, OJEU 31 July 2007, L199

[86] Article 8 of the Regulation EC No. 864/2007

[87] Article 15 of the Regulation EC No. 864/2007

[88] Such a measure is allowed under French Law according to Article L. 615-7-1 of the Intellectual Property Code

[89] Article L. 615-3 of the Intellectual Property Code.

[90] See recently,  Paris Court of Appeals, 16 January 2009, Seba v. Nissan, Paris First Instance Court, 20 January 2009, Mundipharma, Lyon First Instance Court, 8 September 2009, Mylan

[91] ECJ 17 November 1998, Van Uden v. Deco-Line, C-391/95

[92] ECJ Roche v. Primus 13 July 2006, C-539/03

[93] Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights, OJEU, 30 April 2004, L 157

[94] Paris First Instance Court, ex parte order dated 17 December 2008 and interim order dated 8 July 2009 withdrawing the ex parte order, Docket No. 09/08704, Zhejiang Huakang Pharmaceutical v. Roquette Frères

[95] Avv. Prof. Mario Franzosi "Cross border patent decisions", available at http://www.franzosi.com/english/article/legals50.pdf

[96] Bruno van Pottelsberghe, Lost Property: The European patent system and why it doesn’t work, Bruegel Blueprint Series at pg. 6 (2009).

[97] Bruno van Pottelsberghe, Lost Property : The European patent system and why it doesn’t work, Bruegel Blueprint Series at pg. 12 (2009).

[98] European Patent Lawyers Association, Resolution on a Central European Patent Court, at para. 1, Brussels, 8 November 2004.

[99] Javier Aparicio Salom, Industrial Property Rights: Understanding Community and Spanish IP Practices, Aspatore at 6 (2009).

[100] European Commission, DG Competition, Commission Staff Working Document (Technical annex to the Commission Communication) at para. 1293 (8 July 2009).

[101] Prof. Dietmar Harhoff, Ph.D., Ludwig-Maximilians-Universität (LMU) München, Economic Cost-Benefit Analysis of a Unified and Integrated European Patent Litigation System, Institute for Innovation Research, Technology Management and Entrepreneurship (INNO-tec), Final Report, 26 February 2009, Tender No. MARKT/2008/06/D at pg. 22.

[102] Prof. Dietmar Harhoff, Ph.D., Ludwig-Maximilians-Universität (LMU) München, Economic Cost-Benefit Analysis of a Unified and Integrated European Patent Litigation System, Institute for Innovation Research, Technology Management and Entrepreneurship (INNO-tec), Final Report, 26 February 2009, Tender No. MARKT/2008/06/D at pg. 22.

[103] COMMUNICATION FROM THE COMMISSION, Executive Summary of the Pharmaceutical Sector Inquiry Report at para. 4.2 available at http://ec.europa.eu/competition/sectors/pharmaceuticals/inquiry/communication_en.pdf (last visited September 9, 2009).

[104] COMMUNICATION FROM THE COMMISSION, Executive Summary of the Pharmaceutical Sector Inquiry Report at para. 4.2 available at http://ec.europa.eu/competition/sectors/pharmaceuticals/inquiry/communication_en.pdf (last visited September 9, 2009).

[105] Abbott v. Evysio 14 January 2009.

[106] Court of Appeals 21 May 2008, Actavis v. Merck, [2008] EWCA Civ 444

[107] Court of Appeals 21 May 2008, Actavis v. Merck, [2008] EWCA Civ 444, point 131, referring to the in the Kos case G 2/08

[108] According to the Protocol on the Interpretation of Article 69 EPC: "Article 69 should not be interpreted as meaning that the extent of the protection conferred by a European patent is to be understood as that defined by the strict, literal meaning of the wording used in the claims, the description and drawings being employed only for the purpose of resolving an ambiguity found in the claims. Nor should it be taken to mean that the claims serve only as a guideline and that the actual protection conferred may extend to what, from a consideration of the description and drawings by a person skilled in the art, the patent proprietor has contemplated. On the contrary, it is to be interpreted as defining a position between these extremes which combines a fair protection for the patent proprietor with a reasonable degree of legal certainty for third parties.  For the purpose of determining the extent of protection conferred by a European patent, due account shall be taken of any element which is equivalent to an element specified in the claims"

[109] David L Cohen, Article 69 and European Patent Integration 92 Nw. U. L. Rev. 1082, 1091 (1998).

[110] See e.g., David Perkins and Garry Mills, Patent Infringement and Forum Shopping in the European Union, 20 Fordham Int'l L.J. 549, 549-550 (1995) citing Improver Corp. v. Remington Consumer Prods. Ltd., [1990] F.S.R. 181 (Eng. Ch. 1989) whereby the courts in Austria, France and the UK held that there was no infringement of the Epilady patent, while Italy, the Netherlands, Belgium, and Germany held that the patent had indeed been infringed.  These directly conflicting decisions, despite both jurisdictions interpreting the language of article 69 of the EPC with respect to an EPO granted patent.  See also Muller v. Hilti where the Germany and French courts held that there was no infringement, but the Swiss courts held that there was infringement.  Moreover, in Angiotech v. Conor, the Dutch court held that the stent patent was valid and indeed infringed whereas the UK court invalidated the patent.  In March of 2007 in the Document Security Systems v. European Central Bank, the English High Court held that the patent was invalid on the 26th of the same month while the very next day, the German Bundespatentgericht court held that the patent was valid.

[111] Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004.

[112] Council Regulation (EC) No 1383/2003 at art. 18.

[113] Green Paper on the Review of Council Regulation (EC) No 44/2001 on Jurisdiction and the Recognition and Enforcement of Judgements in Civil and Commercial Matters.

[114] European Patent Lawyers Assocation (EPLAW), Comments on the Green Paper on the Review of Council Regulation (EC) No 44/2001 on Jurisdiction and the Recognition and Enforcement of Judgements in Civil and Commercial Matters at para. 3 (29 June 2009).

[115] European Patent Office, EPLA - European Patent Litigation Agreement available at http://www.epo.org/patents/law/legislative-initiatives/epla.html (last visited 8 September 2009).

[116] http://www.epo.org/patents/law/legislative-initiatives/epla.html

[117] Prof. Dietmar Harhoff, Ph.D., Ludwig-Maximilians-Universität (LMU) München, Economic Cost-Benefit Analysis of a Unified and Integrated European Patent Litigation System, Institute for Innovation Research, Technology Management and Entrepreneurship (INNO-tec), Final Report, 26 February 2009, Tender No. MARKT/2008/06/D at pg. 22.

[118] Xavier Buffet-Delmas, Laura Morelli , Modifications to the European Patent System, 20 NO. 8 Intell. Prop. & Tech. L.J. 18, 21-22 (2008).

[119] Xavier Buffet-Delmas, Laura Morelli , Modifications to the European Patent System, 20 NO. 8 Intell. Prop. & Tech. L.J. 18, 21-22 (2008).

[120] Xavier Buffet-Delmas, Laura Morelli , Modifications to the European Patent System, 20 NO. 8 Intell. Prop. & Tech. L.J. 18, 21 (2008).

[121] COMMUNICATION FROM THE COMMISSION TO THE EUROPEAN PARLIAMENT AND THE COUNCIL - Enhancing the patent system in Europe -, COMMISSION OF THE EUROPEAN COMMUNITIES, Brussels, 3.4.2007 COM(2007) 165 final.

[122] Working Document 11813/09, Draft Agreement on the European and Community Patents Court and Draft Statute (9 July 2009).

[123] Recommendation from the Commission to the Council To authorise the Commission to open negotiations for the adoption of an Agreement creating a Unified Patent Litigation System, Brussels, 20.3.2009 SEC (2009) 330 final at pg. 3.

[124] Xavier Buffet-Delmas, Laura Morelli , Modifications to the European Patent System, 20 NO. 8 Intell. Prop. & Tech. L.J. 18, 22 (2008).

[125] "1989 Agreement relating to Community Patents" 89/695/EEC

[126] European Patent Office, EPLA - European Patent Litigation Agreement available at http://www.epo.org/patents/law/legislative-initiatives/epla.html (last visited 8 September 2009)

[127] Patents: Commission sets out next steps for creation of unified patent litigation system Brussels, 24 March 2009, available at http://europa.eu/rapid/pressReleasesAction.do?reference=IP/09/460&format=HTML&aged=0&language=EN&guiLanguage=en (last visited September 7, 2009); Xavier Buffet-Delmas, Laura Morelli , Modifications to the European Patent System, 20 NO. 8 Intell. Prop. & Tech. L.J. 18, 21-22 (2008).

[128] French Senate, Report No. 414 "Proposal for a European Resolution"