Uniform patent litigation in the European Union: an analysis of the viability of recent proposals aimed at unifying the European patent litigation system.

• Published date: 01 January 2012
• Author: Coyle, Patrick
• Date: 01 January 2012

The European patent system has undergone many significant changes (1) since international intellectual property rights were first recognized among European countries in 1883. (2) While many of these changes have reduced the costs associated with obtaining patent rights throughout Europe, (3) none of the changes have successfully addressed one of the biggest problems still plaguing the European patent system today: inefficient and fragmented patent litigation. (4) In recent years, the European Union and the European Patent Organization have made several proposals to resolve these issues. (5) None of these proposals, however, have been successful, (6) and recent opinions expressed by the Advocates General of the Court of Justice of the European Union and the Court of Justice of the European Union suggest that these proposals, in their current form, are destined to fail. (7) This Note assesses the viability of the recent proposals to reform the patent system aimed at unifying patent litigation throughout Europe and suggests that an agreement between the members of the European Patent Organization is the most efficient solution.

I. HISTORY OF THE EUROPEAN PATENT SYSTEM

To understand the nature of the current problems with patent litigation in the European Union, one must first understand the historical framework of the European patent system. The Paris Convention of 18838 was one of the earliest international agreements on intellectual property rights. (9) Although patent law was not the main focus of the Paris Convention, (10) the resulting international relationships set the stage for future cooperation in developing a European patent system. (11)

Aside from international cooperation, two notable results grew out of the Paris Convention of 1883. First, the Paris Convention introduced the principle of national treatment: citizens of a signatory state would receive the same protection in a foreign country as the foreign country's citizens. (12) Second, the Paris Convention presented the notion of "priority application"--where an applicant can use the application date in one country to establish priority in other signatory states to the Paris Convention if the applicant files in the other countries within a specified time period. (13) These two principles were seen as imperative to reliable international intellectual property protection. (14)

The Paris Convention of 1883 has been amended six times since its inception, (15) granting more protection with each revision. (16) However, the Paris Convention has not been revised since 1967. (17) In the late 1960s and early 1970s (and even as early as 1959), (18) various countries and international communities discussed several new international agreements on intellectual property rights. (19) These new discussions generated new international agreements, making amendments to the Paris Convention unnecessary.

The first treaty resulting from these talks was the Strasbourg Convention on the Unification of Certain Points of Substantive Law on Patents for Invention ("Strasbourg Convention"), signed in 1963. (20) The Strasbourg Convention was the result of discussions within the Council of Europe. (21) The main purpose of the Strasbourg Convention was to create uniform procedural and substantive requirements for obtaining patent rights throughout Europe, (22) which were to be applied by the national courts of the Convention's member states. (23)

At the conclusion of the Strasbourg Convention, European nations were also discussing the possibility of not only a uniform procedure for granting patents, but also a centralized granting procedure for all European nations. (24) The Council of Europe recommended the creation of a European Patent Office, a centralized body with a unitary procedure for acquiring patent rights throughout Europe. (25) To achieve this objective, the Convention on the Grant of European Patents ("European Patent Convention"), (26) took place between September 5 and October 5, 1973. (27) The main purpose of the European Patent Convention was to establish a single, centralized procedure for the granting of patents throughout Europe. (28) The European Patent Convention established the European Patent Office, (29) which became the executive body and "operating arm" (30) of the European Patent Organization. (31)

The European Patent Organization is not an "organ" of, nor is it legally bound by, the European Union. (32) Rather, it is a stand-alone organization governed by an administrative body consisting of representatives of the European Patent Convention member states. (33) The task of the European Patent Organization is to grant "European patents," (34) which are carried out by the European Patent Office. (35) A European patent has the same effect in each member country as it would if it were a national patent granted by that country. (36) Thus, the European Patent Convention provided a "unitary application and examination procedure resulting in the grant of a bundle of national patents valid in countries selected by the patentee." (37) Because European patents issued by the European Patent Office are treated as domestic patents in any member states, only the courts of the individual countries have the authority to enforce the rights of the patent holder. (38) The European Patent Office has no authority to hear infringement actions or enforce a patent-holder's rights in any country. (39)

As the conclusion of the European Patent Convention drew near, the then nine members of the European Union (40) were aware of the European Patent Office's limited ability to enforce patent-holders' rights. (41) The members of the European Union began discussing potential solutions to the problem, and one of the main topics of discussion was a community patent system for members of the European Union (42)--the same goal as the proposals currently under consideration in the European Union. (43) The discussions culminated in the signing of the Convention for the European Patent and Common Market ("Community Patent Convention") at the Luxembourg Conference in 1975. (44) Many practitioners at that time believed that the Community Patent Convention, combined with the European Patent Convention, would establish a unified patent system for both the granting of patents and the enforcement of patent-holders' rights throughout the European Union, (45) although this proposition is questionable. (46) Even though the Community Patent Convention was a product of, and restricted to, members of the European Union, (47) the Community Patent Convention was based on the European Patent Convention and only members of the European Patent Convention could be parties to the Community Patent Convention. (48) Thus, only countries that were members of both the European Patent Convention and the European Union could accede to the Community Patent Convention.

The Community Patent Convention called for patents granted by the European Patent Office to be "unitary." (49) This concept means a patent granted by the European Patent Office would receive the same treatment throughout the entire European Union. (50) For example, if the patent were revoked or invalidated in one country, it would be revoked or invalidated with respect to all European Union countries. (51) Additionally, the translation costs required by the Community Patent Convention likely would have been prohibitively costly. (52)

Ten years later, in 1985, after it was apparent the Community Patent Convention would not get unanimously ratified, the member states of the European Union met again in Luxembourg to attempt to implement the community patent system. (53) This conference was essentially an attempt to revive the earlier Community Patent Convention, which the European Union failed to ratify. (54) Although the new convention, the Agreement Relating to Community Patents, (55) was supported and signed by all the European Union members, (56) it never came into effect because it was not ratified by all the member states. (57) Despite this failure, the Luxembourg conference set the stage for the judicial system necessary for the community patent. (58)

II. NATURE OF THE PROBLEM: THE BRUSSELS I REGULATION

As previously discussed, patents issued by the European Patent Office are issued as a "bundle of national patents." (59) While this "bundle" in theory provides protection for the patent holder throughout Europe, such protection is meaningless without the ability to enforce the rights that come with a patent.

The Brussels Regulation (60) governs a patent holder's ability to enforce his or her rights under the European patent granted by the European Patent Office. (61) Under the Brussels Regulation, the principal basis of jurisdiction is the defendant's domicile. (62) Thus, under Article 2(1) of the Brussels Regulation, if a defendant domiciled in France infringes a European patent in another European Union country, the patent holder must bring his patent infringement claim in France. (63)

Article 5(3) of the Brussels Regulation provides an additional forum for jurisdiction, allowing an infringement suit to be brought in the country where the infringement occurred. (64) Thus, if the defendant in the above example infringed the patent in Germany, the patent holder could bring an infringement claim in either Germany or France. A national court exercising jurisdiction under Article 5(3), however, is limited to passing judgment only on acts of infringement that have occurred or are likely to occur within the country in which that court sits. (65) Thus, if the patent holder from the above example were to bring his infringement suit in Germany, he could only sue for acts of infringement that took place within Germany. If the defendant had infringed that patent in more than one European Union country, the patent holder would have to sue in multiple countries if jurisdiction is based on Article 5(3).

...