28 March 2011

San Francisco to Host INTA and ITechLaw Annual Meetings from 12 to 18 May 2011

Coming May, San Francisco will consecutively host two exceptional international law conventions: First, on 12 and 13 May, the World Technology Law Conference & Annual Meeting of ITechLaw, thereafter, from 14 to 18 May, INTA's 133rd Annual Meeting.

I am happy to have the opportunity to attend both the ITechLaw and the INTA meeting. So if you are also attending one of theses meetings, we may meet there for a coffee and discuss topics of mutual interest. In this case, please drop me a line. In case you seek professional support in German or European IP issues, myself and my partners offer all kinds of IP services and would be happy to assist you at our Munich-based IP boutique firm k/s/n/h.


ITechLaw is an international technology and IT law organisation, whose IP law committee's mission is to identify, debate an provide solutions for complex cross border intellectual property issues important for technology-creating and using developed and developing economies.

The IP Committee's projects range from enforceability of open source licences over the use of trade marks in internet search engine advertising to reviewing the worldwide developments on the patentability of computer software. For the G 3/08 referral to the Enlarged Board of Appeal of the EPO (see resources here and here), for example, ITechLaw's IP Committee took in an amicus curiae brief the balancing position that the related uncertainty, which extends beyond just the EPO to the national courts dealing with European patents, needs to be clarified:
Irrespective of on which side of the debate one stands, there is a definite need for the issue of software patentability to be clarified and provide certainty for all stakeholders. At present, prospective patentees lack certainty as to whether their invention will be patentable and if granted, will the patent withstand any validity challenge. Conversely, other parties [...] face the risk of infringement and uncertainty of whether they can mount a validity challenge to the patent. Of course, the uncertainty affects others such as potential investors who may be discouraged from investing if there is a lack of clarity as to what can or cannot be protected.

INTA is one of the largest and leading trademark related NGOs and its committees are involved in all kinds of political developments in the IP field around the world, e.g. concerning the European Union trademark system, the Anti-Counterfeiting Trade Agreement (ACTA), or the new generic top level domains.

For technology-savvy legal experts, INTA e.g. has an Internet Committee, whose work relates to domain name issues and use of trademarks and unfair competition on the Internet.

INTA is also a member of the OAMI Users' Group and closely follows relevant aspects of the Community trade mark and design systems as implemented by the EU Office for Harmonisation in the Internal Market (OHIM), e.g. President Campinos' plans to transform the registration office into a 'true IP office' (see earlier posting here, here, and here).

26 March 2011

Extention of Nuclar Policy Debate in German Bundestag to Twitter (Once Again) Shows Political Potential of Social Media

[Gov. Spokesman S Seibert]
Even though this blog is focussed on IP issues and not so much on nuclear politics and social media usage by politicians, I consider the somewhat exceptional parliamentary debate of March 24 in the German Bundestag worth noting, since it once more provides a preview on the future impact of social media on western democracies - which certainly should be an issue at least for legal and political bloggers.

After the severe problems of Fukushima's nuclear plant became evident, the German center-right government under Angela Merkel (Christian Democrats) initiated a nuclear moratorium, according to which the seven oldest nuclear power plants - two of which lying in center-right governed Baden-Württemberg where state elections are held this weekend - are shut down for at least three months, only about four months after the lifespan of nuclear power plants has been significantly extended by the government.

Assumptions of parts of the media and many citizens that the moratorium has been set up only for electoral tactical reasons have been unintentionally confirmed by talkative Economics Minster Rainer Brüderle (Liberals), who frankly disclosed to lobbyists of nuclear industry that "in view of the upcoming state elections pressure weighs heavily on politics, which is why decisions are not always rational". One can lively imagine that Chancellor Merkel was not amused to hear that her Economics Minister considers her politics "not rational". 

Now, during Thursday's parliamentary debate, we experienced an astonishing exchange of words between Government spokesman Steffen Seibert (@RegSprecher) and opposition politician Volker Beck (@Volker_Beck) of the Green Party - via twitter.

[Volker Beck]
Seibert tweeted during Merkel's government statement that "Chancellor Calls in Parliament: EU should decide today in Brussels to import no more oil from Libya". Shortly thereafter Beck directly answered: "What do you actually say to Brüderle's nuclear confession: all just political campaign". Seibert replied: "Wrong. Federal government is taking unforeseen disaster in Japan serious, nuclear power plant inspection has nothing to do with election campaign". Beck then countered: "Does Brüderle lie or has he not told the [lobbyist] that the temporary closure of nuclear power is just campaign?". 

Even though spokesman Seibert said after the debate that exchanging arguments via Twitter would "certainly remain an exception", it has been a premiere in Germany, that a parliamentary debate is extended to an interactive extra-parliamentary sphere on the internet. This may of course entail new challenges for politicians and parliamentary rules of procedure, but could also be a chance for parliamentary democracies to become more close to the people, transparent and modern.

However, as experienced in connection with the re-election of Federal President Horst Köhler on 24 May 2009, when e.g. MP Ulrich Kelber (Social Democrats) unofficially tweeted the result 15 minutes before President of Parliament Norbert Lammert officially announced Horst Köhler's re-election, social media tools are not always safe in the hands politicians. Kelber's tweet has been much criticised, e.g. by Volker Beck who considered this the "protocolary worst case", so that parliamentary secretaries prohibited using twitter and similar services in the Presidential Elections of 30 June 2010, which became necessary after Köhler's surprising resignation.

The 2010 presidential election, by the way, in which the Prime Minister of Lower Saxony, Mr Christian Wulff (Christian Democrats) won over anti-communist human rights activist in the GDR and first Federal Commissioner for the Stasi Archives, Mr Joachim Gauck (impartially), has also been special in the sense that it was influenced by the internet community like no election before (see earlier post).

18 March 2011

Federal Court of Justice Confirms Turnaround Towards EPA Patentability Approach (X ZR 47/07)

[J. Hevelius's azimuthal quadrant]


On 26 October 2010, decision X ZR 47/07 ("Display of Topographic Information") has been issued by the Xth Civil Panel of the Federal Court of Justice (Bundesgerichtshof, BGH) under Cief Judge Peter Maier-Beck, who already held the chairmanship in cases Xa ZB 20/08 ("Dynamic Document Generation") of April 22, 2010 (see earlier posting) and Xa ZR 4/07 ("Glas Bottle Analysis") of 4 February 2010 (see earlier posting), both of which being considered in line with X ZB 22/07 („Control of Examination Modalities") of 20 January 2009 (see earlier posting). The latter was assumed to represent a turnaround of the Court of Justice's approach to assess technical character of an invention towards that of the Boards of Appeal of the European Patent Office

 I.  The first-instance before the Federal Patent Court

European Patent EP 0 378 271 to Philips N.V. has been granted on 03.04.1996 with an independent method claim 1 reading
1. A method for the perspective display of a part of a topographic map by selecting, in dependence of a position (c) of a vehicle, topographic information from a data structure, where under the influence of a coordinate transformation the display takes place according to a viewing position (k) which moves together with the position (c) of the vehicle and with a solid angle (g) that takes into account the instantaneous motion of the vehicle, characterized in that for an earthbound vehicle the viewing position is above the earth and the solid angle (g) contains an actual simulated position of the vehicle itself.
and a substantially parallel device claim 17, reading
17. A device for the perspective display of a part of a topo-graphic map, comprising selection means for selecting, in dependence of a position (c) of a vehicle, topographic in-formation form a data structure, coordinate transformation means for executing a coordinate transformation for effec-ting the display according to a viewing position (k) that moves together with the position (c) of the vehicle and with a solid angle (g) that takes into account the instantaneous motion of the vehicle, characterized in that for an earthbound vehicle the viewing position is above the earth and the solid angle (g) contains an actual simulated posi-tion of the vehicle itself.
without any oppositions filed. The nullity action 2 Ni 12/05 (EU) has been filed with the Federal Patent Court (Bundespatentgericht, BPatG) against the validated German part DE 690 26 28. On 14 December 2006, the 2nd Nullity Panel declared the patent null and void on the grounds of, inter alia, lack of patent-eligibility (patentability) according to Art. 52 EPC (see BPatG 2 Ni 12/05).

The Board held that, even though claim 1 provides a solution for the problem of providing a simple method for a user friendly perspective display of part of a topographic map providing more information about the terrain than the regular point of view information, the perspective display method is assessed to be not patentable because its teaching does not lie in the technical domain.

The applicant believed that the claimed teaching is technical, since calculating a perspective display in real-time requires technical resources such as a suitably programmed computer or micro-processor, whereas the Senate took the position that, according to established case law of the Federal Court of Justice (BGH), using a suitably programmed computer alone cannot establish the technical nature of the claimed method. In fact, in BGH X ZB 34/03 ("Rentability Determination") the Federal Court of Justice held that
a method achieving a desired success by operating a program for controlling a data processing system so that the desired success is achieved, is not patentability only because of the utilization of electronic data processing. Rather, the claimed teaching must comprise instructions that serve to solve a specific technical problem by technical means.
In this respect, the Senate held that the claimed teaching is only directed to displaying topographic information in a perspective way so that the information is easy recognisable by a human user. This, however, relates to an ergonomic problem solved by a suitable coordinate transform, i.e. a known mathematical operation, rather than  to a specific technical problem solved by technical means

The applicant counter-argued based on EPO case law T 258/03 ("Auction Method/HITACHI") that a method being executed by a data processing device ist to be recognized as a technical invention within the meaning of Art. 52 EPC. The Senate acknowledged that applying the T 258/03 approach to the present invention would - due to the automated execution of the claimed method by a computer - indeed lead to recognising the present invention as technical. The method steps relating to the representation of easy-to-recognise information, however, do not contribute to the state of the art and thus have to be omitted upon assessing inventive step, so that the present invention would not be inventive according to the EPO's Hitachi approach.

That is, the 4th Nullity Senate of the Federal Patent Court considered the invention not technical according to German standards and technical but not inventive according to EPO standards.

II.  The Appeal before the Federal Court of Justice 

The headnotes of X ZR 47/07 read:
  1. The subject-matter of a method related to the reproduction of topographic information using a technical device is not excluded from patent protection according to Art. 52(2) c, d EPC, if at least one aspect of the claimed teaching solves a technical problem.
  2. Upon assessing inventive step, only those instructions are to be considered that determine or at least influence the solution of the problem by technical means.
  3. The selection of a (central perspective) representation of topographic information that is appropriate for navigating a vehicle will be disregarded upon assessment of inventive step as a non-technical information for the person skilled in the art.
The Federal Court of Justice upheld the revocation but - interestingly - argued that the subject-matter of the invention lies in a technical area and thus meets the requirements of Art. 52 EPC (cf. III.1) but is rendered obvious by the cited prior art (cf. III.2).

Under the essential paragraph III.1 of the decision, The Board's opinion towards Art. 52 EPC goes along the following lines:
Technical Character: Referring to Xa ZB 20/08, "Dynamic Document Generation", (see here) and X ZB 22/07, "Control of Examination Modalities", (see here), the Board explained that a method for executing steps by electronic data processing would always possess the required technical character even if the method only intends to process, store and transmit data by a technical device. It does not matter whether or not the claim comprises additional non-technical features, which may charachterize the claimed teaching. Whether combinations of technical or non-technical features are excluded from patent protection only depends on whether they are new and involve an inventive step.

The present case relates to a technical teaching, since claim 1 is directed to a method according to which, for creating a perspective representation of a part of a topographic map being enriched by simulated positions of a vehicle, topographic data is selected from a data base depending on the moving direction and the actual position of the vehicle, the selected data is processed in a determined way and finally a defined display output is performed. Such a method can only be executed by a technical device and thus has a technical character

No computer program as such: Since Art. 52 (2) c EPC excludes computer programs as such from patentability, the claimed invention requires instructions serving to solve a specific technical problem by technical means, whereas instructions lying outside the technical domain are not sufficient (cf. X ZB 20/03, X ZB 34/03, Xa ZB 20/08, X ZB 22/07). The same applies to a method for displaying information (X ZR 188/01).

It is, however, sufficient for circumventing the exclusion of Art. 52 (2) c EPC if one aspect of the claim solves a technical problem. The exclusion of "computer programs as such" is - in accordance with the case law of the EPO Boards of Appeal (cf. G 3/08) - implemented in that only those features are considered upon assessing inventive step that determine or at least influence a solution of a problem by technical means (cf. Xa ZB 20/08). The "upstream" test for existence of one of the legislative exclusions of Art. 52 (2) EPC is thus only a kind of "coarse screening" to filter out those cases where the claimed teaching contains absolutely no technical instructions that may be subject to an assessment of inventive step.
Conclusion: By this decision, the Xth Panel of the Federal Curt of Justice after Xa ZB 20/08 ("Dynamic Document Generation") and X ZB 22/07 („Control of Examination Modalities") again clarifies that it intends to shift the German "technicality" doctrine towards the so called adapted problem/solution approach of the EPO Board's of Appeal, as developed in T 208/84 (Vicom) and T 641/00 (Comvik) and recently confirmed by the Enlarged Board of Appeal's opinion on case G 3/08.

The crucial statements is that Art. 52 (2) EPC is only intended a kind of 'coarse screening' to filter out those cases where the claimed teaching contains absolutely no technical instructions that may be subject to an assessment of inventive step", which expresses almost exactly the relationship between the lower "technical character" hurdle and the much higher "inventive step" hurdle of the EPO's adapted problem/solution approach.

15 March 2011

Remedy Provided by EPC for Unobserved Terms due to Japan Earthquake

On the occasion of the situation in Japan after the earthquake on 11 March 2011, the EPO has today published this Notice, in which Japaneses applicants and their Representatives are reminded of the special remedy according to Rule 134(5) EPC in case a term could not be observed "due to an exceptional occurrence such as a natural disaster":
  1. In view of the current tragic events in Japan, attention is drawn to the general legal remedies provided under the European Patent Convention in the case of the non-observance of time limits and, more specifically, to Rule 134(5) EPC.
  2. Rule 134(5) EPC offers a safeguard in the case of non-observance of a time limit due to an exceptional occurrence such as a natural disaster or other like reasons affecting the locality where the party or his representative resides or has his place of business. This provision may therefore be invoked by any applicants, parties to proceedings or their representatives affected by the natural and technical disasters in Japan.
  3. Pursuant to Rule 134(5) EPC, any document received late will be deemed to have been received in due time if the person concerned offers evidence that on any of the ten days preceding the day of expiration of a time limit the mail service was dislocated on account of the effects of this natural or technical disaster, and that the mailing was effected within five days after the mail service was resumed.
  4. As far as time limits under the PCT are concerned, applicants are referred to Rule 82 PCT. This provision, however, does not apply to the priority period. If an international application was received at the EPO after expiry of the priority period, restoration of the right of priority may be available (Rule 26bis.3 PCT).

Unitary Patent (25/27 EU Patent) Finally Authorised by EU Council, But Critical Issues Still Exist

[EU Commissioner Barnier and Hungarian Council Chair Cséfalvay]
After the European Parliament gave its consent on 15 February (see earlier post), the EU Council authorised the launch of enhanced cooperation for creating the Unitary Patent, covering 25 of the 27 EU Member States (see press release) on March 10.

As expected, Spain and Italy did not join the plans due to the proposed language regime based on English, French, and German, as set out by the European Patent Convention (Art. 14 EPC).

The two 'reluctant' nations argued that applying enhanced cooperation has a number of legal deficiencies and that the three-language regime is discriminative and unfair to their companies over those from Great Britain, France and Germany, who may file patent applications in their mother tongues. An indication of how serious Spain and Italy may take such issues could be the rumours on twitter saying Spain and Italy might go to court to stop the train.

For now, the 25 supportive Member States can start negotiating the merits of that agreement under enhanced cooperation. Commissioner Barnier already promised that "as of 30 March" the Commission would present draft regulations on the creation of the patent and the language regime (see here).

However, apart from the EU Commission, the Hungarian Presidency, and some EU Member States celebrating their political success, the concerns remain as they were before:
 
EU Single Market: For example, in an article in the January 2011 edition of AIPPI e-news, experienced litigation lawyer and EPLAW member Christian Osterrieth took the position that against the background that the principal goal of the EU is to create a unified legal framework for creating the EU single market, the November 2010 failure of the EU member states to achieve unanimity raises serious concerns: A Unitary Patent implemented by enhanced cooperation "can only be regarded as an unsatisfactory compromise, but never as a final solution", which is why continued negotiations with Italy and Spain are required. Otherwise the patent system will become "the first area where different legal regimes in IP matters are created within the EU", which would both work against creating the single market and contravene legal harmonised within the EU. 

Applicability of enhanced cooperation: In another article in that issue of AIPPIe-news, Jochen Pagenberg considers it possible that Spain and Italy will challenge the further proceeding before the European Court of Justice with the allegation that the conditions of Article 326 et seq. TFEU are not met.

In fact, when going through the wording of Article 20 TEU and Articles 326 to 334 TFEU, some essential requirements of enhanced cooperation have already been addressed if not questioned in the joint letter of 7 December 2010 to the EU Commission by Messrs José Luis Zapatero and Silvio Berlusconi reading:
[T]he language regime represents a key factor in attaining a fair and effective agreement. Only in this manner shall we respect the EU's cultural and linguistic diversity, provide maximum legal security in protecting innovation in Europe, contribute to further development of the internal market, and respect the principle of territorial cohesion set forth in the Treaty. [cf. Art 327 TFEU]

We should recall that enhanced cooperation is an exceptional mechanism [...] which, under no circumstances, should become an instrument for excluding certain Member States, when they are still committed to carrying on negotiations. [cf. Art 326 TFEU]

[W]e insist that enhanced cooperation should only be applied as a last resort mechanism, a requirement that is not met in the negotiations concerning the Patent's language regime. [cf. Art 20 (2) TEU]
So, the above-mentioned rumours on twitter may even have a legal basis.

Cost Reduction by Unitary Patent: Unitary Patent Advocates, including Commissioner Barnier, frequently argue that "the current system for obtaining patents throughout the EU is too expensive, costing ten times more than in the United States" and promise respective savings for the Unitary Patent.

That, of course, is only "political marketing" and thus highly questionable, since the figures compared appear to reflect bare filing fees, which are under the exclusive control of the EPO anyway. To draw a realistic picture, official and attorneys fees of the further pre-grant proceedings, renewals, and costs of post-grant actions would have to be considered as well.

Regarding translation fees, one has to consider the fact that the London Agreement has already abolished translation requirements for most of the more important EPC/EU economies like UK, FR, DE, NL, SE, DK - but not, however, for IT and ES. That is, huge cost savings thus cannot be expected due to reduced translation expenses for the Unitary Patent, especially since the two most important countries that have not entered the London Agreement, namely Italy and Spain, do not participate in the Unitary Patent anyway.

Regarding the official fees for pre-grant proceedings and renewals, EPO President Battistelli just explained in an interview (see earlier post):
Battistelli said that he does not believe there should be any change in the overall level of EPO fees. [...] If any increases were needed, he said, they should come from renewals and not from applications.
So, cost reductions as compared to the present situation can only be expected from the fact that paying parallel renewals in a number of validated countries will be replaced by paying renewals only once to the EPO. The difference, thought, will not be overwhelming.

And regarding costs for post-grant proceedings, e.g. litigation or validity actions, the "Draft Agreement on the European and Community Patents Court", which has just been burried by the CJEU (see here and here), could have had the potential to significantly reduce average costs by providing centralised litigation/validity proceedings and rendering costly parallel litigation/validity in a number of countries superfluous. But that opportunity has just been missed.

14 March 2011

Options Available After Knockdown of Unitary European Patent Court by March 8 CJEU Opinion

[CJEU President Vasilios Skouris]
On 8 March the Court of Justice of the European Union (CJEU) handed down its long-awaited opinion on the compatibility of the "Draft Agreement on the European and Community Patents Court" [Doc. 7928/09], which basically expresses the Commission's 2007 vision to replace the EU-independent European Patent Litigation Agreement (EPLA) and implement an EU controlled patent litigation system called European and EU Patent Court (EEUPC).

As reported here and elsewhere (see below blog citations), the Judges broadly rejected the Draft Agreement for two essential reasons, as expressed e.g. in §§79, 88, 89 of the opinion:
  1. The envisaged (unitary) court would take the place of national courts and tribunals in the field of patent lititigation/validity and thus deprive those courts of the power to request preliminary rulings from the CJEU in that field; 
  2. The unitary patent court would have the duty to interpret and apply EU law, while a breach of EU law could not be the subject of infringement proceedings nor could it give rise to any financial liability on the part of one or more Member States.
Surprisingly, the CJEU did not consider the objections as raised in the Advocates General's preliminary Statement of Position (see also here) but went far beyond those observations by more severe objection. This is somewhat disappointing especially since an opinion on the AG's objections to the language regime could have provided some clarification for the parallel Unitary Patent project, that has received green light by the EU Commission on March 11.

So, what options are available now.

Between the two poles of a CJEU-independent patent system and a closer integration of the Unitary Court into the EU's legal order, the PatLit and Bright Spark blogs are, like many others, not in favour of the latter option, since "everyone involved [i.e. industry, patent profession and even the EU Commission, as noted on the ipeg blog] is absolutely convinced that the system should not allow the ECJ itself to become involved in substantive patent law"; "the Court of Justice does not have the necessary expertise". Especially, "the patent world does not want the same court system that was established for community trademarks", as added on the Kluwer blog.

This dilemma between the CJEU's and industry's requirments, however, does not appear to be a good basis for drafting alternative solutions that circumvent the CJEU's objections.

On a similar line, Jochen Pagenberg, current EPLAW President, suggests to carefully examine, "whether the envisaged unitary patent covering only 25 EU member states under enhanced cooperation cannot be subject to a Court System outside the EU legal order", as suggested by the Advocates General, which would effectively be a revival of EPLA. For good reasons, Mr Pagenberg has some sympathy for EPLA, as e.g. expressed in an article in the January 2011 edition of AIPPI e-news, where he presented EPLA as an alternative in case of deadlock:
If the Court, on the other hand, approves the view of the AGs on the independence of an international court system like EPLA, this could proceed on the basis of a second “coalition of the willing” for the litigation system, so that the work on EPLA could continue. If the best and most flexible solution is adopted, one can expect that soon a greater number of countries will join. Countries which have so far opposed EPLA will have to reconsider whether they prefer to stay outside a common litigation system.
Former epi President and CEIPI course coordinator Walter Holzer pessimistically asks "whether it will ever be possible to establish a unified patent litigation system compatible with the law of the European Union that also satisfies the interests of patent holders, possible defenders, and practitioners". Even though not being the perfect solution, he nevertheless suggests to "increase the influence of the ECJ in the proposed patent judicial system".

However, Mr Holzer doubts, on the one hand side, whether EPC member states not being part of the EU (e.g. Switzerland) would be willing to submit their cases to the ECJ-jurisdiction and, on the other hand side, whether the EU would accept a judicial framework for different appeal proceedings depending on whether the appeal comes from an EU member state or a non-EU member state.

Complementary, Munich based Patent Attorney Axel Horns reminds us on his IPJur blog that the EU Council had once planned to set up a Patent Court for EU Member States only, which could still work under the supreme role of the CJEU. The consequence would be that such a court could also have competence with regard to conventional EP bundle patents as granted by the EPO, of course within the EU territory only.

As opposed to those expert observations, the official statements of the EU Commission (here) and the EPO (here) tried to to deemphasise the relevance of the CJEU's opinion and repeatedly stresses that "The enhanced cooperation [to implement the 25/27 unitary patent] remains unaffected":
The Commission will analyse the concerns raised by the CJEU very carefully and will work with the Presidency of the Council and the Member States to find as quickly as possible the best solutions in the interest of the patent system and its users. [press release]
Apparently, the EU Commission does not appear to intend considering the respective wishes of industry. Its position that enhanced cooperation is independent of the EEUPC is certainly correct - however, on a mere formal legal level. The main target of the Commission's enhanced cooperation efforts, namely to obtain significantly cheaper and more efficient (nearly) EU-wide patent protection especially for SME's, will now only partly met, since a Unified Patent does not make much sense without providing EU-wide effective infringement and validity actions.

Since we now most likely will get (if at all) a Unitary Patent Court years after the Unitary Patent, I fear that its acceptance by the users will not be overwhelming, for two simple reasons:
  • it may remain unclear for years where and before which court a Unitary Patent could be enforced or invalidated; 
  • a cheaper patent may not be worth so much if costs of post-grant actions remain as high as they are now and right holders have to fear costs of parallel validity actions in a number of countries. 

08 March 2011

European Patent Court Not Compatible With European Union Law, says European Court of Justice

Today, the European Court of Justice published its opinion (pdf provided by EPALW) on the "Draft Agreement on the European and Community Patents Court" [Doc. 7928/09] (case Avis 1/09) and found, not overly surprising, the Draft Agreement incompatible with the EU Treaty [Doc 9076/09] and EU law.

The essential issues of the opinion are summarised in a press release:
The Court observes, first, that, under that agreemet, the European and Community Patent Court is an institution which is outside the institutional and judicial framework of the European Union. [...] To that extent, the courts of the Member States are divested of that jurisdiction and accordingly retain only those powers which do not fall under the exclusive jurisdiction of the European and Community Patent Court.

[...] Unlike other international judicial systems on which the Court has ruled in the past, the European and Community Patent Court has the duty to interpret and apply not only the envisaged international agreement, but also provisions of European Union law.

Further, the Court declares that the creation of that court would deprive national courts and tribunals of the power, or, as the case may be, the obligation, to refer questions to the Court for a preliminary ruling in the field of patents, given that the draft agreement provides for a preliminary ruling mechanism which reserves to the European and Community Patent Court the power to refer questions for a preliminary ruling while removing that power from the national courts.

[...] The tasks attributed to the national courts and to the Court of Justice respectively are indispensable to the preservation of the very nature of European Union law.

[...] However, the Court states that if a decision of the European and Community Patent Court were to be in breach of European Union law it could not be the subject of infringement proceedings nor could it give rise to any financial liability on the part of one or more Member States.

[...] The envisaged agreement [...] would deprive courts of Member States of their powers in relation to the interpretation and application of European Union law. The agreement would also affect the powers of the Court to reply, by preliminary ruling, to questions referred by those national courts. Accordingly, the agreement would alter the essential character of the powers conferred on the institutions of the European Union and on the Member States which are indispensable to the preservation of the very nature of European Union law.

Consequently, the Court concludes that the envisaged agreement creating a European and Community Patent Court is not compatible with the provisions of European Union law

07 March 2011

EPO President Battistelli Expects Plan B Upon Adverse ECJ Opinion And Believes "We Need to Help SMEs" But Others Should Reduce Costs

[EURO coins, permission: ECB/03/4 /5]
As reported earlier on this blog, the latest version of the "Draft Agreement on the European and Community Patents Court" [Doc. 7928/09] is subject to an opinion by the European Court of Justice (ECJ) on the compatibility of the envisaged Agreement with the EU Treaty [Doc 9076/09].

Meanwhile, the European Court of Justice announces the opinion on the "Draft Agreement" (case Avis 1/09) to be published

Tomorrow (08 March 2011).

The supporters appear not too enthusiastic about the opinion, since the oral hearing of May 2010 (official report) disclosed doubts on the compatible of the Draft Agreement with the EU Treaty and EU law (see e.g. here). Later, the Advocates General's (non-binding) Statement of Position raised further essential objections (see e.g. here).

In either case, tomorrow's ECJ opinion will be decisive for both the Unified Patent Court and the EU Patent.

So it's good that we receive some encouragement and optimism in the night before the decision from this piece of Joff Wild's well-informed IAM blog, reporting on an interview with EPO President Benoît Battistelli, who, inter alia, commented on the upcoming ECJ decision:
"[Battistelli] continued, a negative ruling from the court on Tuesday does not have to throw everything up in the air. “It is possible to work on a transitional basis while waiting for member states to create a scheme that is compatible with treaties and rules. Solutions can be found,” Battistelli claimed [and refrained from commenting on this believe any further].
In a conspirative mood, Joff Wild couldn't "help wondering whether member states and the Commission have been thinking in detail about the consequences of an adverse ruling this week and may very quickly come up with some stop-gap remedies". We certainly will witness some creative but tense political moves by stakeholders, upon a negative opinion tomorrow.

Further observations of Mr Battistelli were even more meaningful:
"We need to help SMEs use the EPO and we must reduce the cost of doing so [...] and that’s why I am in favour of the EU patent,” he told me. [...] Battistelli said that he does not believe there should be any change in the overall level of EPO fees. [...] If any increases were needed, he said, they should come from renewals and not from applications.
That's great stuff! A truly self-confident statement of a "world player's" political President, considering his office "important for the world economy".

With a decent dose of willingness to misunderstand the President, one may conclude that Mr Battistelli has some unconventional interpretation of the term "we" in "we must help" and "we must reduce".

Now that it's my turn to be in conspirative mood, Mr Battistelli appears to expect the European Union and its Members to acquire all those nice SME patent applications for the EPO by implementing the required legal framework and somehow reducing the costs of patenting without touching the EPO's fees. Even better, in the compelling believe that "we need to help SME's", the EPO President is even prepared to only increase annuities if more money is needed.

That's really good news for Europe's economy, especially in the light of the fact that some consider the impressive cost savings promised by the European Commission questionable anyway.