How to overcome the challenges facing the European IPR system?

How to overcome the challenges facing the European IPR system?

Victor Rodriguez, Ph.D.ESOF2012 Dublin

Outline• Relevance of costs for John Smith• Patent enforcement for John Smith• Costs• Uncertainty • European patents with unitary effect• Unified Patent Court• John Smith options• Conclusions


Relevance of costs for John Smith


SCELLATO ET AL. (2011)

Patent enforcement for John Smith


SCELLATO ET AL. (2011)

Costs

• the initial costs of a patent application to the EPO covering 12 MS and CH may be 20 times higher than in the US

• the costs of maintaining a patent protection in the 27 MS may be 60 times higher than in the US


EUROPEAN COMMISSION (2008)

Costs (continued)

• A case with €1 million in dispute for both validity and infringement may have a cumulative maximum cost both in first and second instances in multiple parallel litigations across DE, FR, NL, UK 9 times higher than in the US


VAN POTTELSBERGHE (2009)

Uncertainty

• Contradictory national court decisions• Contradictory national court and

European decisions• Contradictory administrative decisions• Specialised patent courts• Bifurcation


RODRIGUEZ (2012)

Abridged History


1973 Member States signed the Convention on the Community Patent

1989 The ratification of an amended CPC in 1989 failed again

2000 The European Commission proposed that the Community Patent Regulation deals with Community patent, common judicial system, and translation

2002 The European Parliament called on the Commission to alter its proposal

2003 A common political approach emerged to tackle centralised jurisdiction and the language problem

2004 The Council acknowledged the agreement on the directive on strengthening the enforcement of IP rights

2007 The Commission released the Communication “Enhancing the patent system in Europe”

2009 The Swedish Presidency of the EU achieved a political agreement on a unified patent litigation system and a unitary legal instrument for granting patents

2011 Under the Hungarian presidency of the EU, the European Commission proposed a “suggested solution” for a unitary patent court in the EU, which addressed objections raised by the CJEU

2011 Under the Polish presidency of the EU, there was an agreement on the package comprising two regulations establishing the unitary patent and the language regime

2012 Under the Danish presidency of the EU, there was an agreement on the location and competence of the judiciary plus a suggestion to delete Arts. 6 to 8 of enhanced cooperation regulation

European Patents with Unitary Effect

• Registered as such• Identical scope of protection• Unitary character• Uniform protection• Equal effect• Limited, licensed, transferred,

revoked or lapsed in all participating MS


EUROPEAN COMMISSION (2011)

Unified Patent Court• Paris headquarters; London disputes

over pharmaceuticals and life sciences; Munich disputes over mechanical engineering

• Choice of bringing an infringement action to the central division if the defendant is based outside the EU or if a revocation action is already pending before the central division


EUROPEAN COUNCIL (2012)

Unified Patent Court (continued)

• The unified patent court should not fail by being another source of contradictory decision

• The unified patent court should not fail by being a high-cost court

• There is still concern over the costs for for accessing the court and costs related to representation

• There is still concern over language


RODRIGUEZ (2012)

Case Study: John Smith options

• National patents vs. Unitary patent• A single EU patent would reduce patent costs

caused by fragmentation, translation, maintenance

• National courts vs. Central court• A centralised patent litigation system would

reduce costs caused by parallel litigation and ease the uncertainty generated by contradictory outcomes


Conclusions

• The fragmentation, high costs and uncertainty in the European Patent System could explain some of the difficulties that Europe has in moving towards a more knowledge-intensive economy in order to create jobs and economic growth


Sources• EUROPEAN COMMISSION (2008) A more research-

intensive and integrated European Research Area• EUROPEAN COMMISSION (2011) COM(2011)

215/3• EUROPEAN COUNCIL (2012) Conclusions 29 June

2012• RODRIGUEZ (2011) Constructing a Unitary Title

Regime for the European Patent System• RODRIGUEZ (2012) From National to Supranational

Enforcement in the European Patent System• SCELLATO ET AL. (2011) Study on the quality of the

patent system in Europe• VAN POTTELSBERGHE (2009) Lost property


Documents

How to overcome the challenges facing the European IPR system?