Consolidation of a Proposal for a EU Patent Jurisdiction.
On February 04, 2008, the Slovenian EU Presidency has issued Document 5954/08 addressed to the Working Party on Intellectual Property (Patents). The paper is titled "EU Patent Jurisdiction - Main features of the Court system (first part); Remedies, procedures and other measures (second part)". The first part contains a revised version of Document 14492/07 and takes into account remarks made by delegations at the meeting of the Working Party on 7 November 2007, whereas the second part contains a revised version of Document 5245/08 and takes into account remarks made by delegations at the meeting of the Working Party on 25 January 2008; see also my earlier postings here and there.
There is no redlining given and, hence, it is not that easy to find out, at a first glance, where precisely the differences between the new Document and its both predecessors are. A few highlights appear to be:
In cases involving parties from different Member States local divisions would have to involve judges from the European pool of patent judges.
In the case of counter-claims for invalidity the first instance division located at MS or regional level concerned should carry out a preliminary assessment of the counter-claims. This assessment implies the examination of the likeliness that the counter-claims are founded and that the patent should be revoked.Only if the division considers that the patent should be revoked either totally or partially it should, after having heard the parties, either involve judges from the European pool of patent judges or stay proceedings and refer the case for a decision concerning the claim interpretation and validity to the central division or refer the entire case to the central division.
In the case of infringements of the same patent(s) through related acts (such as manufacturing, importing or selling of the same product), but with different parties involved, it should be possible to sue all infringers concerned before one forum in order to avoid the risk of diverging judgments.
It has now been formally clarified that an appeal to the second instance will have suspensive effect unless the second instance court decides otherwise.
In all cases involving parties from more than one Member State the panels of the local first instance divisions should include two additional judges from the European pool of patent judges and sit as an enlarged chamber.
It has been clarified that three legally and two technically qualified judges should sit in panels of the central division of the first instance and the second instance. In cases where panels of the local or regional divisions are sitting in the composition of an enlarged chamber such chambers should involve two judges from the European pool of patent judges. One of those judges from the pool should be a legally qualified judge. The other judge from the pool should be a technically qualified judge with preferably qualifications in the field of technology at issue. In each chamber legally qualified judges should be in majority (i.e. two out of three or three out of five).
Members of the Boards of Appeal of the EPO should not be eligible to serve in parallel to their functions as members of the Boards of Appeal as a judge of the EU patent jurisdiction. The exercise of the office of a Community judge would however not exclude the exercise of other judicial functions at the national level.
During the first three calendar years after entry into force of the instruments required for the creation of the EU Patent Jurisdiction proceedings for infringement or revocation of European patents might still be initiated before national tribunals or other competent MS authorities having jurisdiction under national law. Any proceedings pending before a national tribunal at the end of the transitional period should continue to be subject to the transitional regime.
The means of giving or obtaining evidence should in particular include the following:
hearing the parties,
requests for information,
production of documents,
hearing witnesses,
opinions by experts,
inspection,
comparative tests or experiments, and
sworn statements in writing (affidavits).
The holder of an exclusive licence under a Community patent or a European patent should be able to initiate litigation before the Court in the same way as the proprietor, and provided that the patent holder is given prior notice, unless the licensing agreement provides otherwise. The holders of other licences should be entitled to initiate litigation before the Court in so far as expressly permitted by the license agreement.
It should be explored to what extent, and under which circumstances European Patent Attorneys with proven legal knowledge and experience could solely represent a party
The judgement should be given in writing, preferably within three months of the end of the oral/written procedure. Dissenting or concurring opinions should not be allowed.
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. One possible option could be that the Court can request the EPO to apply the accelerated procedure. The Court could stay proceedings when the EPO would apply the accelerated procedure.
So, it should be explored to what extent, and under which circumstances European Patent Attorneys with proven legal knowledge and experience could solely represent a party. What does that mean? I am a bit curious to learn the outcome of such "explorations".
Feel free to contact PA Axel H Horns via e-mail
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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 5954/08 addressed to the Working Party on Intellectual Property (Patents). The paper is titled "EU Patent Jurisdiction - Main features of the Court system (first part); Remedies, procedures and other measures (second part)". The first part contains a revised version of 
here and 
Patents
