Further Steps in EU Patent Policy Under Slovenian EU Presidency.
The EU Council has now published Document 5245/08 issued by the present EU Presidency (Slovenia) and addressed to the Working Party on Intellectual Property (Patents). The title of the Document is EU Patent Jurisdiction - Remedies, procedures and other measures.
According to the cited Document, the proposed EU-Patent Jurisdiction ("the Court") would constitute a Community jurisdiction with uniform remedies and procedures. The new Document presents an outline of the remedies, procedures and other measures that the first and second instances of the Court could apply.
The Document further suggests that the rules should be tailor-made for patents and ensure expeditious and high quality decisions, striking a fair balance between the interests of right holders and other parties. Moreover, they should provide for cost-effectiveness of procedures and thus facilitate access to justice, in particular for SMEs.
The document complements the revised Presidency's working document "Towards an EU-Patent Jurisdiction - Points for discussion" regarding the main features of the envisaged EU patent jurisdiction (14492/07 PI 42).
Important aspects of the new Document appear to be, inter alia, as indicated by some quotations from the text of the Document:
The Court could be given the authority to permit the inspection of commercial premises without notice by a qualified person who may search for goods, materials, devices etc. In this context, the Court could accept that a detailed description or a sample of the "evidence" may be considered sufficient proof for the whole. This procedure, known in patent law as saisiecontrefacon,is an example of good practice which already exists in certain Member States. It would enable proof of infringement to be brought very efficiently and at a moderate cost. But the interests of the defendant also need to be adequately protected. "Fishing expeditions" must be avoided and the production of evidence should, for example, be subject to the protection of confidential information. If the orders would affect third parties, their interest should be taken into account and they should, for instance, be given the opportunity to submit observations.
Interlocutory injunctions should stop any impending infringement, or forbid the continuation of the alleged infringement. The Court could also order the seizure of the goods suspected of infringing a patent right so as to prevent their distribution within the channels of commerce. When the recovery of damages is likely to become difficult or impossible, the Court could be authorized to order the seizure of property of the alleged infringer, including the blocking of his bank accounts. Another essential tool for the proprietor would be that the Court orders a party to refrain from removing assets beyond the jurisdiction of the Court so as to frustrate a judgement (freezing order, or Mareva injunction). Injunctions should be based on the principle of equity and judges should be given criteria for weighting the interests of all the parties. In order to avoid abuse, it could be explored whether the request for injunctions should be limited to situations where the applicant manufactures or commercialises competing products.
The Court should have two ways of setting the specific level of damages. Firstly, it could take into account all appropriate aspects of the prejudice, such as unfair profits made by the infringer and/or lost profits if the patentee can show that he lost sales as a result of the defendant's infringing sales. It could also take into account elements other than economic factors, such as the moral prejudice caused to the right holder. Secondly, the Court could set the damages as a lump sum on the basis of certain elements. A lump sum should always be at least the amount of the customary licence fee which would have been due if the infringer had requested authorisation to use the patented invention in question. These methods do not contain an upper limit. It should however not be the aim to introduce an obligation to provide for punitive damages. This is in conformity with common practice in EU patent litigation.
The parties should be represented by lawyers authorised to practise before a court of a Member State. In patent litigation, questions of technology play an important part in order to reach a legally sound decision. Technical expertise is required not only on the side of the Court but also on the side of the parties. The lawyers should therefore have the possibility to involve and to act together with a European Patent Attorney who is a national of a Member State and entered on the list maintained by the EPO. The European Patent Attorney should be allowed to speak at hearings.
All or part of the procedures should be conducted in electronic form or otherwise making good use of modern communication technologies such as video conferencing. The costs for making use of these technologies should normally be borne by the Court.
The owner of a patent who institutes proceedings before the Court against an alleged infringer must provide proof of this infringement. However, when the alleged infringement concerns a patented process for obtaining a product, it may be very difficult for the patent owner to prove that the claimed process was not used in the manufacture of the product. This is for example the case if there is a strong probability that the identical product was made using the patented process but the patent owner has been unable to determine the process actually used despite reasonable efforts. In such situations specific rules on the reversal of the burden of proof could be considered.
The Court should decide in accordance with the requests submitted by the parties. Apart from well-known facts, decisions on the merits may only be based on the grounds, facts and evidence put forward by the parties.
Given the length of opposition procedures it should be explored whether, despite pending opposition procedures, it should nevertheless be possible to file an invalidity action with the central division of the Court.
With regard to the question of representation before the Court in infringement proceedings, the Document obviously resembles the present German approach to make representation by a lawyer mandatory but to allow Patent Attorneys to speak in Court on their own right.
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Dipl.-Phys. Axel H Horns is Patentanwalt (German Patent Attorney),
European Patent Attorney as well as European Trade Mark Attorney. In particular, he is Member of:
Document 5245/08 issued by the present EU Presidency (Slovenia) and addressed to the Working Party on Intellectual Property (Patents). The title of the Document is EU Patent Jurisdiction - Remedies, procedures and other measures.
Second Venice Resolution of the European Patent Judges Association relating the rules of procedure of a European Patent Court (4 November 2006).
Patents
