The Community patent and the patent system in Europe, with evidence / House of Lords, Select committee on the European Communities.

  • Great Britain. Parliment. House of Lords. Select Committee on the European Communities.
Date:
1998
Catalogue details

Licence: Open Government Licence

Credit: The Community patent and the patent system in Europe, with evidence / House of Lords, Select committee on the European Communities. Source: Wellcome Collection.

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    language or a limited number of languages would become more difficult to maintain (Q 162). The Patent Office thought that market forces might come into play here. The applicant States would face a hard choice if they wanted to encourage technology transfer. If translations were required parties using, for example, the EPO regime, might not designate the new State. As a result those States would lose the not inconsiderable fee income generated on renewals and would not get the technology transfer (Q 266). (b) Judicial Arrangements 41. Jacob and Laddie JJ considered the existing arrangements for the litigation of patents in Europe to be unsatisfactory for three reasons. First, there was no central unified system. The need for parallel suits in a number of jurisdictions with the possibilities of different and conflicting results in different countries was a problem. Second, the courts of some Member States (notably the Netherlands but also Germany and France) were asserting cross-border jurisdiction. This had already given rise to practical difficulties. Third, the position under the 1968 Brussels Convention on jurisdiction and enforcement of judgments was unsatisfactory. In particular, the main rule that a plaintiff must sue in the defendant's home State was subverted by the possibility of suing any seller of infringing goods, thus in practice giving the plaintiff a wide choice of jurisdiction. Potential defendants also had opportunities to forum shop, by starting actions for declarations for non-infringement and revocation suits in a court of their choice (where the proceedings might be protracted) and then relying on Article 21 of the Brussels Convention ( which requires a court to decline jurisdiction when the same action is pending before the court of another Member State) to say that the court of their choice is first seised of the dispute. This tactic has become known as “the Italian torpedo”’(p 53, QQ 208-9). 42. Under the Luxembourg Convention infringement and validity questions would be separated, the former being for national courts to determine while the latter were to be dealt with by a special revocation division within the EPO with appeals to a revocation board. That regime was amended by the 1989 Agreement. Certain national courts with appropriate experience would be deemed Community patent courts in order to hear claims for infringement of a Community patent and counterclaims for its revocation. Separate proceedings to revoke the patent might still be brought before a revocation division of the EPO. Superimposed on these national courts and EPO there was to be a new court, the Common Appeal Court (COPAC), constituted by judges experienced in patent law from each Member State. Appeals from a national court of first instance would go to a national court of second instance which would be obliged to refer to COPAC all questions concerning the effect of the patent (i.e. the substantive question of whether it had been infringed) and its validity. COPAC's decisions on these matters would be final. The national court of second instance would be left to apply the COPAC decision but would itself determine any question on available remedies, the persons liable, enforcement, limitation periods and so on. As regards the relationship with the European Court of Justice, COPAC could request the Court of Justice to give a preliminary ruling where there was a risk of inconsistent interpretation between the CPC and the EC Treaty. The Commission or a Member State would, where it considered there was such an inconsistency following a decision of COPAC, also be able to seek a ruling from the Court of Justice. 43. Most witnesses considered the judicial arrangements under the Luxembourg Convention to be unsatisfactory. Judge Brinkhof said: “they are the fruits of too many compromises and reflect a certain distrust vis-a-vis national courts ... the arrangements are neither fish, flesh, nor a good red herring!” (p 52). For CIPA, Mr Gold drew attention to the lack of harmonisation of enforcement procedures in the national courts (Q 71). But not all witnesses condemned the Luxembourg Convention. IPLA considered the concerns expressed about the judicial arrangements in enforcement proceedings might be exaggerated given the check of a Community Patents Court of Appeal: “in fact in practice the less sophisticated local jurisdictions are likely, in our experience, to be more favourable to the plaintiff patentee on the question of validity than are those that are less impressed by the mere fact that a patent has been prosecuted to grant” (p 103). That concerned Sir Hugh Laddie: “ the bee in my bonnet is that if you do not know enough about patents you could