Category: Unified Patent Court

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Spain and Italy’s challenges to the Unitary Patent: From Spain’s initial action to the CJEU final judgment.

This post looks at the legal challenges that Spain and Italy brought against the Unitary patent and the EU legislation notably Regulation EU 1257/2012 and 1260/2012 which permitted its creation. On 5th May the Court of Justice of the European Union dismissed all actions against both regulations. So what were Italy and Spain’s pleas and the findings of the Court?

 

 

May 2011: Spain and Italy v Council of the European Union

 

I. In March 2011 the Council of the European Union issued a decision authorizing enhanced cooperation for the creation of a unitary patent protection. The enhanced co-operation mechanism is set out in the Lisbon Treaty and permits nine or more member states to use the EU’s processes and structures to make agreements that bind only those countries.

 

Spain and Italy applied before the Court of Justice of the European Union for the annulment of this decision on 30th and 31st May 2011 respectively.

They submitted four pleas:

  • Lack of competence of the Council to establish the enhanced cooperation
  • Misuse of powers
  • Breach of the condition that a decision authorising enhanced cooperation must be adopted as a last resort

 

II. The CJEU dismissed their actions on 16th April 2013 and found:

First, that the Council’s decision was within the boundaries of Article 118 TFEU as it is ‘[i]n the context of the establishment and functioning of the internal market’ that the first paragraph of Article 118 TFEU confers the competence to create European intellectual property rights and to set up, as regards those rights “centralised, Union-wide authorisation, coordination and supervision arrangements. (…) The competence, conferred by the second paragraph of Article 118 TFEU, to establish language arrangements for those rights is closely bound up with the introduction of the latter and of the centralised arrangements referred to in the first paragraph of that article. As a result, that competence too falls within the ambit of the functioning of the internal market.”

Second, that the decision to use the enhanced cooperation procedure had been taken as a last resort after multiple unsuccessful attempts and “having found that the unitary patent and its language arrangements could not be established by the Union as a whole within a reasonable period”. The Court also made clear that this cooperation contributes to the process of integration.

Finally, the Court rejected Spain and Italy’s argument about the Unitary Patent’s undermining the internal market through its uniform but non exhaustive protection, which applies in part only of the European Union. The Court in fact found that the creation of a framework only binding Members States who have cooperated is inherent to the procedure of enhanced cooperation.

 

 

 

May 2013: Spain v Council of the European Union

 

Following this judgment, Italy decided to sign the Unified Patent Court Agreement, whereas Spain filed in April 2013 actions against Regulation EU 1527/2012 on the creation of a Unitary Patent protection and Regulation EU 1260/2012 on translation arrangements which directly resulted from the use of the enhanced cooperation.

 

I. Spain’s claims (22nd March 2013):

 On 22nd March 2013, Spain lodged an application before the CJEU against the European Parliament and the Council of the European Union for two actions.  It asked:

 

First, to declare legally non-existent Regulation EU 1257/2012 of the European Parliament and of the Council of 17 December 2012 implementing enhanced cooperation in the area of the creation of unitary patent protection; in the alternative to annul Regulation EU 1257/2012 implementing enhanced cooperation in the area of the creation of unitary patent protection for lack of legal basis, and breach of the principle of autonomy and uniformity in the application of European Union law. Finally, if neither of these two options were chosen, to annul Article 9(1), Article 9(2), and Article 18(2), and all references in Regulation EU 1257/2012 to the Unified Patent Court as the judicial regime for the European patent with unitary effect and as the source of law for the EPUE.

The arguments put forward were the following (case 146/13):

  • Breach of the rule of law. Spain argued that the Regulation EU 1257/2012 was established on the basis of a right granted by the European Patent Office, whose acts are not subject to judicial review.
  • Regulation EU 1257/2012 does not introduce measures guaranteeing the uniform protection envisaged in Article 118 TFEU.
  • Use of enhanced cooperation for purposes other than those provided for in the Treaties.
  • Infringement of Article 291(2) TFEU and, in the alternative, misapplication of the Meroni case-law in the regulation of the system for setting renewal fees and for determining the ‘share of distribution’ of those fees.
  • Misapplication of the Meroni case-law in the delegation to the European Patent Office of certain administrative tasks relating to the European patent with unitary effect.
  • Breach of the principles of autonomy and uniformity in the application of European Union law, regarding the rules governing the entry into force of Regulation EU 1257/2012.

 

Second, to annul Regulation EU 1260/2012 implementing enhanced cooperation regarding translation arrangements for the Unitary Patent. Spain argues that the Regulation lacks legal basis and infringes the principles of non-discrimination, legal certainty, and autonomy.  Alternatively, Spain asked the CJEU to annul Articles 4, 5, 6(2), and 7(2) of Regulation EU 1260/2012 of 17 December 2012 implementing enhanced cooperation for the creation of unitary patent protection with regard to the applicable translation arrangements.

The arguments put forward regarding this second regulation were (case 147/13):

  • Infringement of the principle of non-discrimination due to a language arrangement prejudicial to individuals whose language is not one of the official languages (English, French and German) of the European Patent Office.
  • Lack of legal basis for Article 4.
  • Infringement of the principle of legal certainty.
  • Disregard of the Meroni case in the delegation of the administration of the compensation scheme (Article 5) and the publication of the translations (Article 6(2)) to the European Patent Office.
  • Infringement of the principle of the autonomy of European Union law due to the fact that the application of the Regulation relies on the entry into force of the Agreement on a Unified Patent Court. 

 

 

II. Advocate General Yves Bot’s Opinion (18th November 2014):

Opinion for case 146/13 can be found here.

Opinion for case 147/13 can be found here.

Press release can be found here.

 The Advocate General delivered his opinion on 18th November 2014 (see our post here). Yves Bot proposed that the Court of Justice of the European Union dismissed Spain’s challenge to Unitary Patent Regulations and argued that:

Regarding the creation of the Unitary Patent protection:

  • The Regulation EU 1257/2012  “only attributes to European patents an additional characteristic, namely the unitary protection, without affecting the procedure regulated by the Convention (on the grant of European Patent) The protection conferred is regulated by the uniform implementation provisions of the regulation. That protection brings real benefit in terms of uniformity and hence of integration compared with the situation resulting from the implementation of the rules laid down by the Convention”.
  • The EU Member States drafted the EU Regulation with the intention that the EU’s legislature would be shared with the Member States, enabling it to make references to national laws. The Unitary Patent will guarantee a uniform protection through national legislation applied to European Patent which will then be implemented “throughout the territory of the Member States participating in the enhanced cooperation.”

Regarding the renewal fees:

  • Yves Bot considers that the power to set the renewal level can only be exercised within a predetermined legislative framework “established and clarified by the EU legislature”.

Regarding Spain’s claim that the regulation provides for a specific judicial regime for the European Patent with Unitary Effect contained in the Agreement on a Unified Patent Court:

  • The Advocate General takes the view that the Court does not have jurisdiction to review the content of the Agreement on a Unified Patent Court in an action for annulment of the regulation.
  • The Agreement on a Unified Patent Court does not fall within any of the categories of acts the lawfulness of which is subject to judicial review by the European Court of Justice. In fact it is an intergovernmental agreement negotiated and signed only by certain Member States on the basis of international law and the Regulation EU 1257/2012 does not approve an international agreement but is intended to implement enhanced cooperation in the area of creation of unitary patent protection.

Regarding Spain’s claim that “the application of the regulation is absolutely dependent on the entry into force of the Agreement on a Unified Patent Court, and that the effectiveness of the power exercised by the European Union through the contested regulation thus depends on the will of the Member States which are party to the Agreement on a Unified Patent Court”:

  • The Advocate General highlights that it will be the role of the Unified Patent Court to ensure “the proper functioning of the European patent with unitary effect, consistency of case-law and hence legal certainty”. Regulation EU 1257/2012 is thus not at the mercy of willing Member States. 

Regarding Spain’s refusal to ratify the Unified Patent Court Agreement:

  • The Advocate General is keen to emphasize that it is an infringement of the principle of sincere cooperation.  By not ratifying the UPCA, Member States are “jeopardising the attainment of the Union’s harmonisation and uniform protection objectives”
  • Yves Bot also notes that “the principle of sincere cooperation requires the participating Member States to take all appropriate measures to implement enhanced cooperation, including ratification of the Agreement on a Unified Patent Court, as such ratification is necessary for its implementation.”

 Regarding the language arrangements and the alleged breach of equality:

  • There is no principle of equality of language, therefore the choice of the English, French and German language “pursues a legitimate objective and is appropriate and proportionate”. Hence, if “the language arrangements chosen do certainly entail a curtailment of the use of languages, they pursue a legitimate objective of reducing translation costs.”
  • The purpose of having only three official languages derives from the fact that “the system introduced is aimed at ensuring unitary patent protection throughout the territory of the participating Member States whilst avoiding excessively high costs by establishing the language arrangements” thus allowing a reduction in translation costs.
  • Having only three languages acknowledges the realities of the patent sector, both in terms of research (“most scientific papers are published in German, English or French”) and economic reality (“those languages are spoken in the Member States from which most of the patent applications in the EU originate”). Moreover, it also “ensures a certain stability for economic operators and professionals in the patent sector”.

Regarding the principles of legal certainty and proportionality:

  • Finally the Advocate General looks at these two principles and concludes that neither of them is breached as the language requirements will in fact act as safeguards for legal certainty and a compensation scheme for translation cost will be created.

 

III. CJEU judgment (5th May 2015):

 The CJEU dismissed both cases on 05th May 2015. The Court findings are explained below:

First, regarding Regulation EU 1257/2012:

  • Concerning the issue raised about judicial review: The Court rejected Spain’s argument by pointing out that the regulation is in no way intended to delimit, even partially, the conditions for granting European patents – which are exclusively governed by the EPC – and that it does not incorporate the procedure for granting European patents laid down by the EPC into EU law. The Court stated that the regulation merely “(i) establishes the conditions under which a European patent previously granted by the European Patent Office pursuant to the provisions of the EPC may, at the request of the patent proprietor, benefit from unitary effect and (ii) provides a definition of that unitary effect”.
  • Concerning Article 118 TFEU and uniform protection: The Court pointed out that unitary patent protection is apt to prevent divergences in terms of patent protection in the participating Member States and, accordingly, provides uniform protection of intellectual property rights in the territory of those States.
  • Concerning the Infringement of Article 291(2) TFEU: The Court observed that the EU legislature did not delegate any implementing powers which are exclusively its own under EU law to the participating Member States or the European Patent Office. Hence, in that regard that, according to the TFEU, it is for the Member States to adopt all measures of national law necessary to implement legally binding Union acts.

 

Second, regarding Regulation EU 1260/2012:

  • Concerning the breach of the principle of non-discrimination: The Court emphasised that “the regulation has a legitimate objective, namely the creation of a uniform and simple translation regime for the EPUE so as to facilitate access to patent protection, particularly for small and medium-sized enterprises”. The language arrangements established by the regulation is as a whole “easier, less costly and legally more secure”.
  • Concerning the disregard of the Meroni case law: The Court held that if that the EPO is given additional tasks, it is “a consequence of the fact that the participating Member States, as contracting parties to the EPC, entered into a special agreement within the meaning of Article 142 of the EPC”. The Court thus added that “since the Council did not, contrary to what is asserted by the Kingdom of Spain, delegate to the participating Member States or to the EPO implementing powers which are uniquely its own under EU law, the principles set out by the Court in the judgment in Meroni v High Authority (9/56, EU:C:1958:7)” cannot apply.
  • Concerning the lack of a legal basis for Article 4 of the contested regulation: “the second paragraph of Article 118 TFEU does not preclude, when the language arrangements for European intellectual property rights are being determined, reference being made to the language arrangements of the organisation of which the body responsible for issuing the intellectual property right to which unitary effect will be attributed forms part. It is moreover of no relevance that the contested regulation does not establish an exhaustive body of rules for the language arrangements applicable to the EPUE (European Platform of Universities engaged in Energy Research, Education and training).  The second paragraph of Article 118 TFEU imposes no requirement on the Council to approximate all aspects of the language arrangements for intellectual property rights established on the basis of the first paragraph of Article 118 TFEU. As regard Article 4 of the contested regulation, it is clear that this provision is directly part of the language arrangements for the EPUE, since it sets out the special rules governing the translation of the EPUE in the specific context of a dispute. Since the language arrangements for the EPUE are defined by all the provisions of the contested regulation and more specifically Articles 3, 4 and 6, which are intended to apply to different situations, Article 4 of the regulation cannot be detached, with respect to the legal basis, from the remainder of the provisions of the regulation.” In the light of these arguments, the Court rejected the argument that article 4 must be rejected.
  • Concerning the infringement of the principle of legal certainty the Court looked at:
  • The alleged absence of costs ceiling or method of establishing the compensation scheme, the court followed the opinion of the Advocate General, and found that, under Article 9(2) and Article 9(1) of Regulation No 1257/2012 a decision on the costs ceiling or the method of establishing the compensation scheme are matters which fall through a select committee of the Administration Council of the European Patent Organisation to the participating Member States, as Contracting States to the EPC.
  • The fact that it is only the patent in the language in which it has been issued which produces legal effects and not the translation and concluded that “does not create any legal uncertainty, since it enables the operators involved to know with certainty which language is authentic in order to assess the extent of the protection conferred by the EPUE”.
  • Whether the omission to indicate the specific consequences of the possibility that an alleged patent infringer acted in good faith infringe the principle of legal certainty. It decided that it did not as the court has jurisdiction (as stated in recital 9) to undertake a case-by-case basis analysis by examining, inter alia, whether the alleged patent infringer is a small or medium-sized enterprise operating only at local level and taking into account the language of the proceedings before the EPO and, during the transitional period, the translation submitted together with the request for unitary effect.
  • At the alleged lack of a guarantee that the machine translation system, and the uncertainty as to whether it will function properly. The Court, it must be observed that the EU legislature provided for a transitional period of 12 years for the introduction of the component of the language arrangements which involves machine translation of patent applications and specifications into all the official languages of the European Union. The Court added that there is no sufficient ground for the annulment of the contested regulation since no guarantee that that system, which is to be operational at the end of a transitional period, will function properly was given.
  • Concerning the infringement of the principle of the autonomy of EU law: the direct application of a regulation, laid down in the second paragraph of Article 288 TFEU, means that its entry into force and its application in favour of or against those subject to it are independent of any measure of reception into national law, unless the regulation in question leaves it to the Member States themselves to adopt the necessary legislative, regulatory, administrative and financial measures to ensure the effective application of the provisions of that regulation

 

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A new challenge to the Unitary Patent Agreement before Belgium’s Constitutional Court

The IPCopy blog highlights a new challenge to the Unitary Patent Agreement brought by the European Software Market Association, a non-for-profit organisation which presents itself as “the voice of independent IT firms, professionals, and consumers”. The ESMA filed a suit before Belgium’s Constitutional Court at the beginning of April.

The ESMA argues that the Unitary Patent violates the Belgian Constitution by “deny(ing) Belgians equality before the law, discriminat(ing) on basis of language, violat(ing) the separation of powers, and (being) an illegal politician manoeuvre by the European Patent Office.”

As Belgium ratified the UPCA in June 2014, it is highly unlikely that this challenge will have any impact on the UPCA or its entry into force. However at a time where all governments should be considering a quick ratification, let’s hope that this does not incite new judicial challenges.

We would love to hear from our readers if they know any other organisation/individuals challenging the UPCA before the Courts.

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UPC Mock Trial 2: 3 Abrasive v La Toilemeri

UPC Judges recruitment 2019

 On Friday 2nd April 2015 as announced on the UPC Blog, the « Union pour la Juridiction Unifiée des Brevets » organised a second mock trial replicating the Unified Patent Court. (Find here our post on the first UPC mock trial organised by the UJUB). It was with great pleasure that the UPC Blog editorial team attended this mock, which once more offered a remarkable insight into the functioning of the UPC and gave substance to its rules of procedure and to the UPCA.

The afternoon was divided into three sessions:

  • Hearing on request to preserve evidence and inspection of the premises
  • Hearing on the application for provisional measures
  • Court delivered its judgment

I. The Facts:

This second mock trial opposed a US company “3 Abrasive” (the Claimant) and a French company “La Toilemeri” (the Defendant) over an infringement action of a European patent for “flexible abrasive”.

The patented invention was described in details as “a method for manufacturing an abrasive member comprising a flexible sheet with a multitude of discrete metal protuberance wherein a multitude of copper protuberance are formed on the flexible sheet, nickel protuberances are electrodeposited over the copper protuberances in the presence of particulate abrasive material so that the particulate abrasive material becomes embedded in the nickel deposits and wherein the voids between the protuberances are at least partially filled with resin material, the resin material being selected so as to reduce lateral movement of the nickel deposits.”

This patent is “valid and in force in the Contracting States designated by the Patent, including France, Germany, The Netherlands, United Kingdom and Sweden. All the Designated Contracting States of the Patent have ratified and implemented the UPC Agreement.”

The patent was also the subject of an opposition proceeding in the European Patent Office. In a decision dated 3 September 2014, the opposition division however had rejected the opposition and decided that the patent be maintained as granted. At the time of the mock trial, an appeal was pending before a Board of Appeal.

3 Abrasive alleged that La Toilemeri, the Defendant advertised a product on its website whose characteristics could only be obtained with the method developed in 3 Abrasive’s patent. La Toilemeri, in fact marketed a product described as “an excellent lateral bearing of the abrasive patches, a reinforced securing of the abrasive patches onto the support.”

Following this discovery, 3 Abrasive decided to engage an infringement action before the UPC local division in Paris since no application for opt-out had been made and La Toilemeri is domiciled in France. The Statement of claim was filed on 13 October 2014 in English, which under Art 49(2) UPCA, is one of the official languages of the EPO that the Paris local division accepts.

La Toilemeri filed a defence on 18 December 2014 “challenging any evidence of infringement” and a counter claim for revocation of the Patent. Simultaneously, the Defendant filed an Intervention in the Appeal procedure, which had been initiated at the EPO on 21 November 2014 by a third party. The Defendant, also requested the Court that, under the provisions of Rule 298, the appeal procedure at the EPO be accelerated and to stay its proceedings pending the outcome of the EPO appeal.

The local division in Paris:

The Panel of the local division in Paris comprised three judges: Mr Paul Maier (FR), President, Mrs Sophie Canas (FR) and Mr Colin Birss (UK), who was also appointed in October 2014 as the Judge Rapporteur (following Rule 18).

According to Article 33 (3)(a) UPCA the Court then decided to keep the applications for infringement and revocation together and Mr Kim Finnilä (FI) was subsequently allocated to the panel as technically qualified judge.

 

II. Application for preserving evidence and inspection (The application can be seen here p 89 of the binder):

 

Following La Toilemeri’s statement of defence, in which it insisted that 3 Abrasive did not have any evidence of the alleged reproduction of 3 Abrasive’s method of manufacturing, 3 Abrasive decided to file on 29 December 2014 an application for preserving evidence (Rule 192) with a request of an order for inspection at the premises of La Toilemeri, near Paris.

3 Abrasive also requested the Court to issue this order without hearing the Defendant so as to avoid any risk of the evidence disappearing.

The inspection was granted (the decision of the court can be seen here at page 99 of the binder) and revealed that:

  • The fabrication process of nickel mixed with diamond powder was effectively electro deposited through a layer of non-woven fabric, which thus matched 3 Abrasive’s patent. This was confirmed by a test report.
  • A distribution agreement for the product in Europe with commercial indications.

III. Application for provisional measures (The application can be seen here at page 119 of the binder):

After 3 Abrasive spotted that La Toilemeri had announced on its website that it would launch its product at an international exhibition in Paris in May 2015, it applied under rule 206 for provisional measures. La Toilemeri filed observations against this application (which can be seen here at page 142 of the binder).

IV. Judgment of the Court:

While the Court was deliberating the participants were asked to vote, and by a large majority decided that 3 Abrasive should not be granted the provisional measures it was requesting against La Toilemeri. The Court however decided to grant 3 Abrasive the injunction it was requesting.

The slides explaining the technical elements of the case and the relevant UPC articles and rules can be found here.

The UJUB has dedicated a website to this second mock trial on which notably the video of the whole trial can viewed. This will give a great insight into the functioning of the UPC for those who could not attend or stream the trial. You will also find the whole synopsis and the presentation of the different “actors”.

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Spain v Council of the European Union: The Advocate General’s opinion

Spain v Council of the European Union against the European Regulations implementing enhanced cooperation in the area of the creation of Unitary Patent protection:

The Advocate General’s opinion 

In 2011 Spain and Italy, in a first attempt to challenge the Unitary Patent, had sought annulment of the Council’s decision of March 2011 which authorised enhanced cooperation and therefore allowed the creation of the Unitary Patent package. Both countries submitted that Article 118 Treaty on the Functioning of the European Union did not provide the appropriate legal basis for the Council’s decision. The CJEU dismissed their actions in April 2013. Following this judgment, Italy decided to sign the Unified Patent Court Agreement, whereas Spain filed in May 2013 actions against Regulation (EU) N° 1527/2012 on the creation of a Unitary Patent protection and Regulation N° 1260/2012 on translation arrangements which directly resulted from the use of the enhanced cooperation.

Spain sought an order declaring “legally non-existent Regulation (EU) N°1257/2012 of the European Parliament and if the Council of 17 December 2012 implementing enhanced cooperation in the area of the creation of unitary patent protection and in the alternative, annul that regulation in its entirety.” In case this request was rejected, Spain also asked the court to annul “Article 9(1) in its entirety, and article 9(2) (…) article 18(2) in its entirety and all references in Regulation N°1257/2012 to the Unified Patent Court as the judicial regime for the European Patent with Unitary Effect and as the source of law for the European Patent with Unitary Effect”.

Spain’s pleas were as follow:

“Breach of the values of the rule of law in so far as a regulation has been established on the basis of a right granted by the European Patent Office, whose acts are not subject to judicial review.

 

Non-existence of an act of the European Union and, in the alternative, lack of a legal basis for Regulation N°1527/2012 in that it does not introduce measures guaranteeing the uniform protection envisaged in article 118TFEU.

 

Misuse of power through the use of enhanced cooperation for purposes other than those provided for in the Treaties.

 

Infringement of Article 291(2) TFEU and, in the alternative, misapplication of the Meroni case law in the regulation of the system for setting renewal fees and for determining the “share of distribution” of those fees.

 

Misapplication of the Meroni case law in the delegation to the European Patent Office of certain administrative tasks relating to the European patent with unitary effect.

 

Breach of the principles of autonomy an uniformity in the application of the European Union law, as regards the rules governing the entry into force of Regulation N°1257/2012.”

The Advocate General responded to Spain on 18 November 2014 and proposed that the Court of Justice of the European Union dismisses Spain’s challenge to Unitary Patent Regulations. Yves Bot argues that:

Regarding the creation of the Unitary Patent protection:

  • The EU Regulation 1257/2012  “only attributes to European patents an additional characteristic, namely the unitary protection, without affecting the procedure regulated by the Convention (on the grant of European Patent) The protection conferred is regulated by the uniform implementation provisions of the regulation. That protection brings real benefit in terms of uniformity and hence of integration compared with the situation resulting from the implementation of the rules laid down by the Convention”.
  • The EU Member States drafted the EU Regulation with the intention that the EU’s legislature would be shared with the Member States, enabling it to make references to national laws. The Unitary Patent will guarantee a uniform protection through national legislation applied to European Patent which will then be implemented “throughout the territory of the Member States participating in the enhanced cooperation.”

Concerning the renewal fees:

  • Yves Bot considers that the power to set the renewal level can only be exercised within a predetermined legislative framework “established and clarified by the EU legislature”.

 

As regard Spain’s claim that the regulation provides for a specific judicial regime for the European Patent with Unitary Effect contained in the Agreement on a Unified Patent Court:

  • The Advocate General takes the view that the Court does not have jurisdiction to review the content of the Agreement on a Unified Patent Court in an action for annulment of the regulation.
  • The Agreement on a Unified Patent Court does not fall within any of the categories of acts the lawfulness of which is subject to judicial review by the European Court of Justice. In fact it is an intergovernmental agreement negotiated and signed only by certain Member States on the basis of international law and the EU Regulation 1257/2012 does not approve an international agreement but is intended to implement enhanced cooperation in the area of creation of unitary patent protection.

Regarding Spain’s claim that “the application of the regulation is absolutely dependent on the entry into force of the Agreement on a Unified Patent Court, and that the effectiveness of the power exercised by the European Union through the contested regulation thus depends on the will of the Member States which are party to the Agreement on a Unified Patent Court”:

  • The Advocate General highlights that it will be the role of the Unified Patent Court to ensure “the proper functioning of the European patent with unitary effect, consistency of case-law and hence legal certainty”. EU Regulation 1257/2012 is thus not at the mercy of willing Member States.

 Concerning Spain’s refusal to ratify the Unified Patent Court Agreement:

  • The Advocate General is keen to emphasize that it is an infringement of the principle of sincere cooperation.  By not ratifying the UPCA, Member States are “jeopardising the attainment of the Union’s harmonisation and uniform protection objectives”
  • Yves Bot also notes that “the principle of sincere cooperation requires the participating Member States to take all appropriate measures to implement enhanced cooperation, including ratification of the Agreement on a Unified Patent Court, as such ratification is necessary for its implementation.”

Language arrangements and Breach of equality:

  • There is no principle of equality of language, therefore the choice of the English, French and German language “pursues a legitimate objective and is appropriate and proportionate”. Hence, if “the language arrangements chosen do certainly entail a curtailment of the use of languages, they pursue a legitimate objective of reducing translation costs.”
  • The purpose of having only three official languages derives from the fact that “the system introduced is aimed at ensuring unitary patent protection throughout the territory of the participating Member States whilst avoiding excessively high costs by establishing the language arrangements” thus allowing a reduction in translation costs.
  • Having only three languages acknowledges the realities of the patent sector, both in terms of research (“most scientific papers are published in German, English or French”) and economic reality (“those languages are spoken in the Member States from which most of the patent applications in the EU originate”). Moreover, it also “ensures a certain stability for economic operators and professionals in the patent sector”.

Principles of legal certainty and proportionality:

  • Finally the Advocate General looks at these two principles and concludes that neither of them is breached as the language requirements will in fact act as safeguards for legal certainty and a compensation scheme for translation cost will be created.

You can find the CJEU press release No 152/14 here

The full text of the opinion in C-146/13 is published here

The full text of the opinion in C-147/13 shall be published here

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A consultation on the UPC court fees in Spring?

While the EPO is working on a fee structure for the renewal of the Unitary Patent (see our post), the UPC Preparatory Committee discussed at its 8th meeting on 27 February 2015 the court fee structure and consultation document.

According to its website, the UPC now anticipates that this consultation will launch in Spring 2015. The Chairman of the Preparatory Committee is in fact “keen to begin engaging with stakeholder and users and asked the relevant working group co-ordinators to prepare the text to meet this deadline”. The IPCopy reports that “the Fees Consultation Sub-group is working towards a redraft of the court fees consultation document to be released in May. There are apparently a number of inconclusive “key policy points” but there is recognition that they need to seek views as soon as possible.” To this effect, the comments of the Expert Panel -who advises the Chair and working group co-ordinators and met in February 2015- are now being considered by the relevant teams. Thus, if the Select Committee meets its deadline we should thus soon know more about the UPC fees…

 

 

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New Mock Trial UPC April 2nd 2015 Paris!

The UPC Blog would like to share this invitation to the second UPC Mock Trial organised by the UJUB (Union pour la Juridiction Unifiée des Brevets). We had attended the UJUB first mock trial – see our post here– which was a real success and highlighted the incredible challenge that the UPC represents. The UPC Blog will thus be delighted to be present to this new Mock Trial which should particularly address the means of evidence and the provisional measures. 
Mock Trial UPC April 2nd 2015 Paris – SAVE THE DATE
 
 
The date of entry into force of the European Unified Patent Court is 
not yet known. However after the Trier Oral Hearing on the 17th draft
of Rules of Practice we can test the proceedings so to be well prepared
at this date.
 
The Mock Trial that has been held last May by UJUB (the association of
most patent professionals in France) has been a great success.
 
UJUB is managing of a second one that will take place in Paris on
April the 2nd. 
This mock trial should particularly address the means of evidence and
the provisional measures.
 
We will provide you soon with further details.
 
Please save this date : Paris, April 2nd 1pm-6pm
 
 
Alain MICHELET
Union pour la Juridiction Unifiée des Brevets –  UJUB
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So what are the key dates for the UPC for 2014-2015

So what are the key dates for the UPC for 2014-2015?

 Here is a presentation with all the key dates for the UPC for 2014-2015:

[embeddoc url=”http://upcblog.amar.lawwp-content/uploads/2015/01/Key-dates-for-UPC.pdf”]

 

If you would like to share an update  or add a new key dates please contact us by email upcblog@lavoix.eu or by Twitter @UPCBlogLAVOIX !!

 

 

 

 

 

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Damages and the Unified Patent Court Agreement: how is it going to work?

Supplementary Protection Certificate

Here is a new presentation (in French) on Damages and the Unified Patent Court. It was given by Cyrille Amar for an AIPPI webinar on 19th January 2015.

[embeddoc url=”http://upcblog.amar.lawwp-content/uploads/2015/01/Presentation-Damages-pptx.pdf”]

 

And its English counterpart:

[embeddoc url=”http://upcblog.amar.lawwp-content/uploads/2015/01/Presentation-Damages-en.pdf”]

 

The UPC Blog would be happy to discuss any of the issues raised in the presentation! You can contact us either by email upcblog@lavoix.eu,  via the Comments section below or by Twitter @UPCBlogLAVOIX.

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Actavis v Eli Lilly: When the High Court of Justice rules across multiple jurisdictions… Isn’t the need for a Unified Patent Court becoming even more flagrant?

Actavis v Eli Lilly: when the High Court of Justice rules across multiple jurisdictions… Isn’t the need for a Unified Patent Court becoming even more flagrant?

 

Background of the case and Nature of the claim:

On 15 May 2014, the High Court of Justice in the Patents Court division handed down a significant judgment in Actavis v Eli Lilly, granting a declaration of non-infringement across multiple European jurisdictions in respect of the UK, French, Italian and Spanish designations of a European Patent. Actavis in fact sought a declaration that their proposed launch of a generic pemetrexed product to compete with Lilly’s cancer treatment product Alimta, would not infringe Lilly’s EP1313508 covering pemetrexed disodium. Actavis had indicated to Lilly that they would seek marketing approval for their competing product by reference to Alimta and were seeking to clear the path of any obstacles that would prevent this. Lilly counterclaimed for threatened infringement in relation to the UK designation of the patent.

Before going more in-depth into this decision it is important to look at the decisions for the same claim rendered on 27 November 2012 and 21 May 2013 by respectively the Patent Court and the Court of Appeal which laid the legal basis of the 2014 decision.

 

In 2012 Arnold J passed a judgment on three procedural issues relating to the service of the claim (§ 35) and the question of the exercise of the Court’s jurisdiction on the ground of forum conveniens. The question before the court was thus whether the UK Court could determine all five claims together, or whether they should be tried separately in their respective national courts.

It is important to highlight three essential points of that judgment.

  • First Lilly is not domiciled in an EU Member state. It followed that in accordance with article 4(1) of the Brussels I Regulation which states “If the defendant is not domiciled in a Member State, the jurisdiction of the courts of each Member State shall, subject to Articles 22 and 23, be determined by the law of that Member State” the jurisdiction of the court was a matter for English law.

 

  • Second, Actavis did not challenge the validity of the Patent (§ 29). This point is essential as in these circumstances “this Court was not required to decline jurisdiction by virtue of article 22(4) of the Brussels I Regulation, which confers exclusive jurisdiction over challenges to the validity of registered intellectual property rights on the Courts of the States where they are registered.” Arnold J considered that as the validity or registration of the patents at stake was not part of the litigation, national courts did not have exclusive jurisdiction over any litigation deriving from them in their respective registration State. A court in the United Kingdom applying English Law can therefore determine any issue of infringement of a foreign patent as long as its validity is not at stake.

 

  • Third, Arnold J points out that, in the light of Lucasfilm Ltd v Ainsworth, Lilly did not dispute the justiciability before the English Court of the claims raised with regard to the non-UK designations. The Supreme Court in Lucasfilm Ltd v Ainsworth in fact established that the infringement of foreign copyrights were justiciable before the English Courts. For Lord Walker and Lord Collins, the modern trend is in favour of the enforcement of foreign intellectual property rights: “First, article 22(4) of the Brussels I Regulation only assigns exclusive jurisdiction to the country where the right originates in cases which are concerned with registration or validity of rights which are “required to be deposited or registered” and does not apply to infringement actions in which there is no issue as to validity. This can rarely, if ever, apply to copyright. Second, the Rome II Regulation also plainly envisages the litigation of foreign intellectual property rights and, third, the professional and academic bodies which have considered the issue, the American Law Institute and the Max Planck Institute, clearly favour them, at any rate where issues of validity are not engaged”(see §109).

Whence, Arnold J states at paragraph 89 that “If (…) one considers the reasons given in Lucasfilm v Ainsworth at [104]-[110] by Lord Walker of Gestingthorpe JSC and Lord Collins of Mapesbury (…)  for holding that there is no subject matter limitation on jurisdiction, in my opinion they are equally relevant to the operation of the forum non conveniens doctrine.” Arnold J in fact considers that if patents are no different to copyrights for the purpose of justiciability, they should then be treated no differently for the purposes of forum non conveniens –when validity is not an issue.

The forum non conveniens doctrine allows a court to dismiss a civil action where an appropriate and more convenient alternative forum exists in which to try the action. The appropriate forum is the one in which the case may most suitably be tried in the interests of all the parties and the ends of justice. Permission to serve the proceedings outside the jurisdiction will then only be granted if the court is satisfied that the other jurisdiction is the proper place (or forum conveniens) in which to bring the claim.

Actavis argued of course that England was the appropriate place for a trial as “first, it would mean that the case would be conducted by one team of lawyers on each side using one set of factual and expert witnesses (although in the present case it appears unlikely that there will be any need for factual witnesses), thereby saving costs for both sides. Secondly, it would enable the case to be determined by reference to one law, namely English law, if Lilly chose not to raise any issue as to foreign law, thereby saving even more costs. Thirdly, even if different laws were applied, it would mean that one court (and one court on appeal) would determine all five claims, thereby eliminating the prospect of inconsistent decisions unless they really were mandated by the different national laws’ approaches to Article 69 EPC and the Protocol.” Arnold J found these arguments compelling, rejected Lilly’s position as to the cost of the defense (see §98) and declared that England was the proper forum to hear the five claims.

Following this decision Lilly lodged an appeal (which can be read here), dismissed by the Court of Appeal on 21 May 2013. It is nonetheless important to note that the Court only considered the issues of procedure and service of the claim. The substantial issue -whether “the judge ought to have granted a stay on the grounds of forum non conveniens”- was not looked into by the Court. Kitchin LJ in fact after upholding the first issue (whether the judge was right to hold that Lilly’s solicitors, Hogan Lovells, agreed to accept service of proceedings in the first action), formed the view that this conclusion was dispositive of the whole appeal.

The Judgment passed in May 2014 is  the last chapter -to date- of the Actavis v Lilly saga, and seems to bring a definite if unsatisfactory answer to the question of the justiciability of the infringement of the foreign counterparts of a European Patent.

The substantive issue and the claim for declaration of non-infringement:

Concerning the substantive issue, Arnold J found that “neither pemetrexed diacid nor pemetrexed dipotassium nor pemetrexed ditromethamine falls within the scope of the claims 1 to 12 of the UK, French, Italian, or Spanish designations of the patent”. These claims can be read here. Hence, the dealings in permetrexed diacid, dipotassium and ditromethamine by Actavis do not constitute direct or indirect infringement of the UK, French, Italian or Spanish designations of the Patent.

Arnold J then proceeded to the analysis of the law applicable to the declaration of non-infringement (“DNI”) claims. The Judge made an important difference between the law applicable to the question of whether Actavis’ proposed acts infringed each non-UK designation of the Patent and the law applicable to the DNI claim made by Actavis. Concerning the first question, or whether Actavis’ proposed acts infringed each non-UK designation of the Patent, Arnold J considered that lex loci protectionis, the substantive patent law of the relevant country, applied. As for the second question, i.e. which law should be applied to the DNI claim, the Judge had to decide between Actavis’ contention that lex fori -i.e. the law of the jurisdiction in which relief is pursued- should apply, and Lilly’s contention that on the contrary lex loci protectionis was relevant. Two interpretations of the nature of the rules governing the declaration of non-infringement were opposing each other. Actavis in fact contended that these rules should be considered as part of evidence and procedure and should thus be governed by article 1(3), which excludes these areas from the scope of the Rome II Regulations at the benefit of national jurisdictions. Article 1(3) hence states: “

“This Regulation shall not apply to evidence and procedure (…)”

Lilly on the contrary argued that a declaration of non-infringement is a remedy in the sense of article 15 (c) and as such should be within the scope of the Regulation. Article 15 (c) in fact states:

“The Law applicable to non-contractual obligations under this Regulation shall govern in particular:

(…)

(c) the existence, the nature and the assessment of damage or the remedy claimed”

 

After considering the interpretation of the Rome II Regulation Arnold J found that the law that applied to the DNI claim should follow lex fori. In fact he did not accept that a DNI is a remedy in the sense of article 15(c) and “even if a DNI is a remedy, and even if it is a remedy within Article 15(c), it seems to me that Article 15(c) should be interpreted as only having the effect that the question of principle as to whether a DNI is available at all is a matter for the law applicable to the non-contractual obligation.” The judge then concluded “the rules presently in issue (the rules for obtaining negative declaratory relief) are matters of procedure within article 1(3) and are not governed by the law applicable to non-contractual obligation in accordance with Article 15”. As a result the rules determining the obtaining of a DNI fall outside of the scope of the Rome II Regulation. Thus, as explained by Arnold J in paragraph 210 “it is common ground that if Actavis are right (…) the question of the applicable law is to be determined by English private international law and that under English private international law, the applicable law is the lex fori, because English law regards the rules for obtaining declaratory relief as being procedural”.  The rules governing the claim for a declaration of non-infringement thus follow English Law.

This in consequence explains why Arnold J considers that Actavis are entitled to a DNI in respect of the UK, and foreign designations of the European Patent.  The declaration of non-infringement irrelevantly of the Patent designation being in fact governed by the lex fori, or English Law.

 

Declaration of non-infringement in respect of the UK designation applying English Law:

Once the appropriate law applying to the DNI identified, Arnold J pursued by deciding if the grant of a DNI to Actavis would meet the necessary criteria identified by English Law.

Following Messier – Dowty, a DNI can only be granted if it serves a useful purpose. This criterion will be met if the “claimant has a real commercial interest in the negative declaratory relief sought or a real commercial reason for it to be granted”. Arnold J found that Actavis should be granted a DNI in respect of the UK Patent designation as “Lilly does not seriously dispute that, if Actavis establish that dealings in their products would not amount to an infringement of the UK designation of the Patent, then Actavis should be granted a DNI in respect of that designation pursuant to the inherent jurisdiction of the Court”.

 

DNI in respect of the French, Italian, and Spanish designations applying English Law:

After establishing that the law applicable to the question of whether Actavis were entitled to a DNI in respect of the French, Italian, and Spanish designations of the patent was English law, Arnold J found that Actavis should be granted declarations of non-infringement in respect of those designations pursuant to the jurisdiction of the High Court of Justice of England and Wales, Actavis having demonstrated that they have a real commercial interest in obtaining DNIs and that these declarations would serve a useful purpose .

 

DNI in respect of the French, Italian and Spanish designations applying respectively French, Italian, and Spanish laws:

Arnold J pursued his judgment by looking at the declarations of non-infringement in respect of the French, Italian, and Spanish designations applying French, Italian and Spanish law “in case (I am) is wrong about the applicable law” on “the assumption that the relevant law is the law applicable to the non-contractual obligation”.

Finally, Arnold J helped in his appreciation of foreign laws by experts’ opinions on the granting of DNI under these jurisdictions, decided that “even if French, Italian, and Spanish law is the applicable law respectively, Actavis are entitled to a DNI in respect of the French, Italian, and Spanish designations of the Patent”.

 

In Conclusion:

This decision is remarkable in many respects. First, it is a superb example of legal craftsmanship. Second , Arnold J  innovative reasoning could inspire litigants in the UK and in other EU countries, pending the entry into force of the Unitary Patent system.  We believe that although the reasoning applied to a situation where a party was seeking a declaration of non-infringement prior to marketing potentially infringing products, thus not risking a patent infringement counterclaim, it could nevertheless be extended to infringement claims in cases where nullity counterclaims are not available, such as in cases litigated before the German patent district courts (Landgericht).  Third, this decision is a good illustration of the inefficiency of the existing system. Of course the solution is elegant and sophisticated but in the end, this is merely a “patch” aimed at fixing, albeit imperfectly, an inherent error in the European Patent system.  It is time to move from error correction and bug fixes to a brand new release of the European patent system.  No doubt that the patent lawyers will find many new opportunities to demonstrate their creativity in this new system, for a better result.

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Want to lodge a statement of claim with the UPC? Try its case management system prototype…

The UPC has revealed the prototype of its case management system. It is based on the UPC draft rules of Procedure 13-28, allowing testers to file an infringement claim. Feedback from testers will be used over October and November 2014 to help the UPC to continue configuration of its case management system and evaluate its procurement process.

The purpose of the prototype is to test the viability of a cloud-based, configured system for the UPC, where data is stored by a supplier and can be accessed securely from any location.

This trial comes after workshops organized by the UPC with patent lawyers throughout Europe which highlighted three recurrent issues:

“Roles-Based Access – There are strict legal requirements for protecting access to certain patent information and Lawyers want to be able to control access.
Usability – Several Lawyers demonstrated current eFiling systems across Europe and highlighted usability issues; we want to use what is good from other systems and we don’t want to make the same mistakes.
Ease Document Management – Identifying documents and searching content were key to users’ working patterns; being able to quickly identify the type of document and current status.” (http://prototype.unified-patent-court.org/selfservice/web/index.html)

The prototype e-Filing/case management can be accessed here.

By registering to the website you will be able to lodge a fictitious statement of claim divided into the following twenty-four sections:

  1. Claimant Representative
  2. Claimant details
  3. Claimant Contact Details
  4. Individual Claimant Address Details
  5. Company Claimant Registered Office Details
  6. Company Claimant Contact Address Details
  7. Please enter your Patent Number
  8. Is the Claimant the proprietor of the Patent
  9. Are there any additional proprietors?
  10. Patent Proprietor
  11. Does your claim involve more than one patent?
  12. Does the claimant have the proprietors permission to submit this claim
  13. Please upload a document detailing permission(s) to proceed with this claim
  14. Add further Patents
  15. Pending proceedings
  16. Details of Claim
  17. Defendant
  18. Defendant Contact Details
  19. Individual Defendant Address Details
  20. Company Defendant Registered Address Details
  21. Do you know who is representing the Defendant?
  22. Case hearing
  23. Submit
  24. Payment

The prototype offers of course the opportunity to give feedback by clicking on the “Send Feedback” tab at the bottom of your statement of claim screen.

The UPC is planning a full, open procurement process, with publication of the procurement notice in the Official Journal of the European Union in November 2014 and contract award in summer 2015.