EUROPEAN PATENT: A VARIABLE GEOMETRY RIGHY?

Transcription

1 EUROPEAN PATENT: A VARIABLE GEOMETRY RIGHY? Presentation Milano 27 June 2014 Jan Brinkhof Introductory remarks Is a European patent a variable geometry right? That is the puzzling theme of this course. To help us there is an addition: Limitation and Amendments of claims during litigation. Before trying to give an answer to the question I would like to tell something about the nature of a European patent. It is often said that a European patent is a bundle of national patents. This is a somewhat misleading description. As if after grant of a European patent each national patent out of the bundle is only subject to national law. In the very short preamble of the European Patent Convention it is said that this Convention also contains certain standard rules governing patents so granted. This means that after grant there are standard rules in the European Patent Convention, which govern the national patents out of the bundle. The same is expressed in Article 2(2) European Paten Convention: 1

2 The European patent shall, in each of the Contracting States for which it is granted, have the effect of and be subject to the same conditions as a national patent granted by that State, unless this Convention provides otherwise. The last five words unless this Convention provides otherwise are often overlooked. Even by the European Court of Justice. Stauder wrote: The appended subordinate clause is actually the main rule, as the Convention results in a highly autonomous European system of law governing European patents. 1 So, the effect of the European Patent Convention stretches past the grant. For example: according to Article 69 EPC and the Protocol on its interpretation the scope of protection should be determined on an exclusive European basis a European patent can in national proceedings be revoked only on the grounds mentioned in Article 138 EPC National judges deal with infringement and revocation proceedings. It goes without saying that the interpretation and the application of the European provisions by the courts should be uniform in all the Contracting States. It also goes without saying that as to the requirements for patentability the boards of appeal and the courts should have identical views. Since 1980 conferences of European patent judges have been organised every two years. The aim of these conferences is to make the judges aware of the common task to interpret the European Patent Convention and to 1 Singer/Stauder, European Patent Convention, A Commentary, Third edition (2003), Article 2, Note 7 e.v. 2

3 apply the provisions in an identical way. The national patent judges and the judges of the Boards of Appeal of the European Patent Office have to realise that they belong to a virtual European judiciary. In this light it is clear that for the national judges the national tradition cannot be the only point of orientation. The perspective of the national judges should change. It is no longer sufficient to look back to the national tradition. Instead, the national judges have to look to the left and the right side, that is to say: to read and to study the decisions made by judges abroad and judges of the boards of appeal of the European Patent Office. I can assure you that this could be very inspiring. Speaking for myself, I have learned a lot from studying decisions of the Bundesgerichtshof (German Federal Court of Justice) and the House of Lords/Supreme Court of the UK. I was pleasantly surprised by the open attitude of the judges and the discussions in the decisions. In their decisions the judges refer to decisions made by judges abroad. In contrast, the judges of the Supreme Courts in for instance France and in the Netherlands used to reason in a rather abstract way. There is hardly any discussion. No attention is given to decisions of foreign courts. That reduces the persuasiveness of the opinions. Some observations and findings Patent law has been Europeanised by treaties. Conventions do not always have a direct effect. Often the effects depend on the implementation in national legislation. And more in particular the effects depend on the willingness of national judges to interpret and apply the national provisions in which the provisions of the Conventions are implemented, according to the spirit of these Conventions. In this respect it is crucial that the judges are aware of their task as organs of the Contracting States to implement 3

4 the purposes of the conventions. Finally, it is crucial that the supreme court judges watch this and set an example themselves to the lower judges. The German Federal Court and the UK Supreme Court show how this should be done. I am afraid that judges in other Contracting States do not take much notice of the case law in other Contracting States. The European Patent Convention is a success. The judges of the Boards of Appeal and the Enlarged Board of Appeal of the European Patent Office show that they are able to develop consistent case law despite the different national backgrounds of the judges. The weak links in the European Patent Convention system are the national judges. Undoubtedly, the conferences of European patent judges have improved the level of consciousness. But the speed is not impressive. The lack of a court in Europe, which speaks the last word in patent cases, is not compensated sufficiently. In the Netherlands, especially the lower judges do their best to be in step with the German and UK judges. So far, the role of the Dutch Supreme Court has been too modest. In the light of what I have said you will understand that I praise the organisers of this course for inviting speakers from various European countries to discuss European patent law issues. Back to the theme And now back to the theme of this course. 4

5 In proceedings before the competent national court or authority relating to the validity of a European patent, the proprietor of the patent has the right to limit the patent by amending the claims. This is said in Article 138(3) EPC. If the thus limited patent survives the revocation proceedings, we have a European patent with a variable geometry: a limited patent in the Contracting State where the patent was limited and an unlimited patent in the other designated states. By the way: this is not a unique situation. There are other situations where the text of a European patent is not uniform for all designated Contracting States. See Singer/Stauder, EPC, 3 rd edition, Article 118. [(a) Where prior European patent applications are identified as socalled prior European rights pursuant to Art. 54(3) and (4) during the examination proceedings, R 87 permits the filing of different claims; (b) National rights of earlier date (Art. 139(2)) have the same effect if the Office is notified of them (R 87) (c) If the person actually entitled to the grant prosecutes the European patent application as his own application for particular countries pursuant to Art. 61(1)(a), he may submit claims, descriptions and drawings for these countries which deviate from those submitted fro the remaining countries.] It seems questionable whether the patentee whose patent is limited in Contracting State A, could enforce his unlimited patent in Contracting State B. I am inclined to answer that this is not possible. Personally, as a judge I never dealt with limitations of patents (if my memory is correct). I can imagine that it will not always be simple to deal 5

6 with requests for limitation. Maybe the judge could in complicated matters request the European Patent Office to give a technical opinion on the basis of Article 25 EPC. [Fee 3860] Maybe there is an alternative. The court could stay the proceedings and order the patentee to file a request for limitation with the European Patent Office pursuant Articles 105a-c EPC. An advantage of this alternative is that the patent will be limited for all the designated countries. Answer to the question A European patent can be a variable geometry right as a result of a limitation. Normally, a European patent will be uniform in all the designated States. In other words: Malevich Black Square is the normal geometry and Mondriaan s Victory Boogie Woogie the exceptional geometry. 6