Transcript Slide 1

The European Patent: Current
prospects and alternatives
- some personal thoughts
David Rosenberg
GlaxoSmithKline
Fordham Conference, 27 April 2011
The importance of the reforms
“Enhancing the patent system in Europe is a necessary prerequisite
for boosting growth through innovation and for helping European
business, in particular SMEs, face the economic crisis and
international competition”
– Competitiveness Council, December 2009
“The introduction of an EU patent and a unified patent litigation system
is of the utmost importance to stimulate European competitiveness
and boost research and innovation in Europe by reducing costs and
complexity of obtaining and enforcing the relevant rights throughout
Europe”
– “Towards a Single Market Act” Commission Communication, 27 Oct
2010, COM (2010) 608 Final
To industry – creation of rights enforceable in a single action covering
the (second?) biggest market in the world
– Patent owners
– Third parties
Objectives to be achieved
Reduce forum shopping
Speedy resolution
Cost efficiency for parties
Quality
How to achieve this balance especially in view of the increased
commercial importance of decisions
– Should not expect replication of processes and procedures which
are appropriate for much smaller markets
Factors influencing quality of the system
Quality of substantive law
– Good progress
– Role of the ECJ
Quality of judges and panels
Quality of procedures and consistency of their application
The role of the CJEU in interpreting substantive
patent law
Should be as limited as is consistent with EU requirements i.e. should
interpret the Community acquis like the Biotech Directive but no more
International agreement setting up Court is a means of keeping
substantive law outside the Community acquis
Draft Regulation creating unitary patent right has substantive
provisions e.g. on infringement and defences (but not validity). These
should be removed to the international agreement
Need preamble to the effect that Regulation neither expands nor
restricts CJEU competence over patent issues
The patent court – structure and judicial
qualifications
Central, regional and local divisions
Revocation and declaration of non-infringement cases in central
division
Infringement cases in local or regional divisions
Split jurisdiction possible – revocation goes to central
Composition of panels for 6 years or
approximately 2000 cases (Competitiveness Council,
December 2009)
Central – 3 judges - 2 legal, one technical (potential for single judge if
parties agree) – “multinational”
Regional divisions – 3 judges - 2 nationals from the region, one from
pool
Local
– Member States with at least 50 cases p.a. started for 3 years divisions have 2 legally qualified judges from that country and
1legally qualified judge from another country appointed on a long
term basis from the pool
– Member States where at least 50 cases p.a. not started for 3 years
- either join a regional division where at least 50 cases p.a. have
been started or have panel with 1 national legal judge and 2 legal
judges allocated from the pool on a case by case basis
In regional and local divisions if there is a revocation counterclaim (or
request by one party) add a 4th technically qualified judge
Court of Appeal - 3 legal, 2 technical, multinational
Quality of procedures
Key to
– quality of decisions
– consistency in dealing with cases as between divisions
How to reconcile different traditions on key issues e.g.
–
–
–
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Discovery
Pre-action discovery and preservation orders
Cross-examination at trial
Pre-trial injunctions
Current approach
– Presumption of 1 day trial
– Court has many powers but little guidance as to how they will be exercised
The likely consequence in light of the panel composition rules
– Judges will exercise their powers in the way they are used to doing – no EU
consistency
– Forum shopping
The solution – rules must guide exercise of judicial discretion as to
how powers should be exercised
A guide to likely costs - EPO assessment of first
instance costs of EPLA
(WPL/11/05, 1 December 2005)
Minimum costs in EUR of a small to
medium-scale patent case
Maximum costs in EUR of a small
to medium-scale patent case
140,000
800,000
120,000
700,000
600,000
100,000
500,000
80,000
400,000
60,000
300,000
40,000
200,000
20,000
100,000
0
0
DE/GB/NL
DE/FR/NL
EP Court
DE/GB/NL
DE/FR/NL
EP Court
A guide to likely costs - EPO assessment of
appeal costs of EPLA
(WPL/11/05, 1 December 2005)
Minimum costs in EUR of a small to
medium-scale patent case
120,000
Maximum costs in EUR of a small
to medium-scale patent case
400,000
350,000
100,000
300,000
80,000
250,000
60,000
200,000
150,000
40,000
100,000
20,000
50,000
0
0
DE/GB/NL
DE/FR/NL
EP Court
DE/GB/NL
DE/FR/NL
EP Court
What does this analysis show?
The 1st instance costs of a small/medium scale case before the EP
Court will be lower than litigating in three national Courts (though not
much lower than DE+ FR + NL)
The costs of a small/medium scale patent case will be higher than the
costs before national Courts other than GB
– Twice the cost of litigation in DE or FR
– Substantially more than the cost of litigation in NL
Some comments
If significant numbers of cases are litigated in only 1 jurisdiction (other
than the UK), to force EP owners to litigate in the EP Court will
increase the costs for large numbers of patent owners
How many cases are litigated in more than 1 jurisdiction?
– “Parallel litigation may account for no more than 5-10%”
(WPL/4/03e)
So large numbers of cases will be more expensive than they are now
Under current proposals, patentee can opt out of new Court for
patents and applications existing at time new system comes into force.
All EP’s applied for thereafter must be litigated in new court
What is the justification for making the system mandatory when it will
be more expensive for the vast majority of cases?
Questions which arise if the new court is
cheaper for some cases
Panels of 3, 4 or 5 judges at first instance and on appeal (not all
speaking the same language)
Judges shall have “highest standards of competence and proven
experience in the field of patent law” Legally qualified judges must be
qualified to be national judge. Technical judges must have degree
and proven experience in a technical field plus knowledge of civil law
and procedure
If costs are lower, will demand go up?
Where are judges with the required expertise to cope?
If they’re not there, speed of resolution and/or quality will be reduced
Thank you