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Monday, October 15, 2007

EU Patent Jurisdiction: Details of New Proposals From Portuguese EU Presidency.

A few days ago I had posted

a short notice concerning a new proposal of the Portuguese EU Presidency in view of future patent jurisdiction. Now, the EU Council has just published

Document 13675/07 titled "Towards an EU Patent Jurisdiction - Points for discussion". It originates from the Portuguese EU Presidency and addresses the Working Party on Intellectual Property (Patents). According to the text, the present non paper aims at setting out in more technical detail the possible features of a future unified and integrated patent litigation system which, it is hoped, could find the support of Member States (MS) and users. It is based on the results of the deliberations of the Council Working Group following the Commission's Communication dated 3 April 2007 and previous work carried out by Member States and users, in particular in the context of work on the European Patent Litigation Agreement (EPLA). Moreover it reflects the first reactions of Member States and stakeholders during informal consultations carried out during the month of September 2007.

Highlights are:

In order to ensure efficiency and coherence of patent litigation the EU patent jurisdiction should be an exclusive jurisdiction dealing with validity, infringement and inter-related proceedings concerning European patents and future Community patents.
It should comprise a first instance with one central division and divisions located in Member
States, a second instance and a Registry.
All divisions would form an integral part of a unified Community jurisdiction with uniform procedures.
The centralised entities could consist of specialised and distinct bodies. They would, however, be linked with the European Court of Justice.
The first instance divisions would have exclusive civil jurisdiction in respect of
- actions for actual or threatened infringement or for a declaration of non-infringement;
- direct actions or counter-claims for invalidity;
- actions or claims for damages, other related issues and legal costs;
- injunctions and provisional measures.
The first instance divisions located at MS/regional level should have jurisdiction over infringement cases unless the parties agree to refer the case to the central division (for allocation of cases see below).
In order to guarantee a maximum of expertise and technical knowledge in cases concerning the validity of patents and in order to avoid diverging judgements it would seem to be preferable that the central division should be hearing direct actions concerning the revocation of patents and actions for declaration of non-infringement.
In the case of counter-claims for invalidity the first instance division at MS or regional level concerned should, at the request of the patentee either stay proceedings and refer the case for a decision concerning the validity to the central division or involve judges from the central division when it considers that the patent should be revoked.
A second instance Court would be created which would deal exclusively with appeals of judgements of the first instance divisions. It would be composed by judges with a high level of expertise in patent litigation.
It could be created at the Court of First Instance with one or two specialized chambers or alternatively as a new distinct entity.
Where there is a serious risk that the unity or consistency of Community law would be affected, the decisions of the second instance could be reviewed by the ECJ, at the request of the First Advocate General. Review procedures should not have a suspensive effect.
The judges of the first instance divisions at MS level should come from the Member States concerned. However, these divisions would be entitled to include judges from another MS on the bench. Judges could be recruited amongst members of the EPO or national offices' Boards of Appeal, patent judges, patent attorneys etc. To this effect a pool of distinguished patent judges would be created at Community level.

In this overall context, the German delegation has set up its own paper published by the EU Council as

Document 13878/07 defending some particulars of the German model of patent jurisdiction:

If invalidity actions are handled in distinct proceedings subject to the exclusive jurisdiction of a central judicial entity and infringement actions are handled separately in decentralized chambers, the procedural rules to be applied in each case can be better tailored to the respective distinctive features of the subject of the proceedings.
Without the separation of invalidity cases and infringement cases suggested in Doc. 13675/07 it will hardly be possible to reach compromises on the aforementioned points which will both satisfactorily meet the practical needs of the parties in these cases and be politically acceptable to the Member States.
Participation of technical judges in the decision-making process is advisable in invalidity proceedings for the following reasons:
- Even prior to the oral proceedings technical judges can help to ensure that the technical issues of relevance for the decision are also correctly set out to the legally qualified judges.
- They can direct targeted questions to the technically qualified parties.
- They ensure that the court has the same level of technical expertise as the authority whose technically well-founded decision is contested in the proceedings.
- Technical judges can more quickly determine whether a new submission of a party justifies a further delay in the proceedings.
- In many cases, technical judges can make the use of experts dispensable.
- By virtue of these advantages technical judges contribute simultaneously to expeditious and well-founded decision-making.

The German delegation further stresses that it is important that the recruitment procedures for technical judges ensure that they are just as independent and impartial as legally qualified judges as stated in the Presidency non-paper (ST 13675/07 No. 10). The use of technical judges should strengthen the right of plaintiffs and defendants to effectively make their positions heard in fair and impartial proceedings.

Both papers cited here are silent on the question of the admission of patent attorneys to the new court system in question. In this contest the current situation appears to be quite precarious in particular for patent attorneys in Germany and in the UK.

Recently there has been some unfavourable development in the field of trade marks: Taken as such, the Case T-315/03 decided by the EU Court of First Instance (CFI) on June 08, 2005, appears not very much exciting: A certain applicant did not get his desired registration "ROCKBASS" for

Class 9: Technical sound equipment, mixing desks, sound effect equipment, amplifiers, loudspeaker boxes, active loudspeaker boxes (combos); containers, cases and bags for the aforesaid goods;
Class 15: Musical instruments, in particular guitars, electric guitars, bass guitars, acoustic guitars, guitar accessories, namely strings, frets, truss rods and straps; containers, cases and bags for the aforesaid goods;
Class 18: Containers, cases and bags

because of OHIM had taken the view that the word mark ROCKBASS was directly descriptive of musical instruments and their accessories, and of the other goods specified in the application, in so far as their descriptions include goods used in connection with bass guitars. Moreover, the Applicant was not successful before the CFI either. A routine matter in European Trade Mark Law so far. See e.g. the

discussion of that ROCKBASS matter on

IPKat.

However, the entire case comprised a second level of dispute: A legal row over the question as to whether or not a Patentanwalt is entitled to speak on behalf of a Client before the CFI. In this case the Applicant insisted on his Patentanwalt being allowed to speak on his behalf before CFI, and even went as far as to appeal to the European Court of Justice (ECJ) with regard to this aspect of the matter (Case C-301/05 P). But it soon become clear that those circles are not even willing to think of allowing a Patentanwalt to act before both European Courts even if under supervision of a Rechtsanwalt (lawyer).

The problem of representation by a qualified patent attorney is even more crucial in the field of patents; see e.g. the

Second Venice Resolution where, under number 5, proposal is re-affirmed not to allow patent attorneys as representatives in EPLA cases.

In short, the community of judges at CFI/ECJ and at other Courts in the EU Member States appears to be quite resolved not to tolerate or even support any attempt to allow patent attorneys to appear in those Courts. As the level of regulation and required traineeship as well as of professional rights of patent attorneys varies throughout the Member Countries of the EU from country to country, it is not to be easily expected that many or even all Governments of EU Member States can be convinced to endorse any attempt to establish a stronger position of patent attorneys without any reservation. But it is a mainly political issue. The desire appears to be paramount not to disturb the established delicate balance between lawyers, on the one hand, and patent attorneys, on the other hand. By this, some well-established positions on a national scale in some EU Member States, e.g. of UK and German patent attorneys to represent their Clients before various Courts, are in danger of going to the dogs when national institutions are replaced by European counterparts.

The Portuguese proposal will be discussed in camera Wednesday October 17, 2007, on the session of the Working Party on Intellectual Property (Patents), see

Document CM 3266/07.

Technorati Tags:

Where do you see if the Council document that it will be discussed in 'camera'?

# posted by zoobab : 16 October, 2007 11:00

@zoobab: AFAIK the meetings of the Working Party on Intellectual Property (Patents) never have been public. Do you have indications to the contrary?

For this matter the relevant Document appears to be CM 3266/07 saying that said Working Party on Intellectual Property (Patents) will meet on Wednesday 17 October 2007 - 10.00 a.m. in the Justus Lipsius Building in Brussels.

# posted by Axel H Horns : 16 October, 2007 11:51

Please correct your post, all Council Working Groups are closed doors meetings.

European decision making is made behind closed doors.

# posted by zoobab : 16 October, 2007 12:01

Just to show the disparity of the whole thing, it now appears from ongoing discussions in France between the French Bar Association, the Garde des Sceaux and Minister of Justice and the CNCPI (French IP Attorney Representative Body) that we (IP Attorneys, both patent and trademark) will in the not too distant future be absorbed into the barrister profession, and thus bear the title "Avocat". Of course, the whole subject is rather a thorny one in France too, at least between the Bar Association and the CNCPI and is thus subject to change ;-)

# posted by Anonymous : 25 October, 2007 10:48

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