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Compatibility Of Draft Agreement On Unified Patent Court with EU acquis

By On October 3, 2011 · 3 Comments · In EU law, EU Unified Patent Court, European Patent Law

On September 20, 2011, the General Secretariat of the Council of the European Union has filed Document 14191/11 titled Compatibility of the draft agreement on the Unified Patent Court with the Union acquis. It was classified “LIMITE” but after having filed a request on the basis of Regulation (EC) No 1049/2001 of the European Parliament and of the Council regarding public access to European Parliament, Council and Commission documents and the specific provisions concerning public access to Council documents set out in Annex II to the Council’s Rules of Procedure (Council Decision No 2009/937/EU, Official Journal L 325, 11.12.2009, p. 35) the General Secretariat has come to the conclusion that I may have access to this document. Hence, I expect this Document to become accessible in the Register very soon.

The Document conveys a non-paper from the Commission services who have analysed the compatibility of the draft agreement on the Unified Patent Court (UPC) with the Union acquis. In particular, they have checked the Draft against:

As a general result the Commission services concluded that the relationship between the Brussels I Regulation and the draft agreement on the Unified Patent Court should be clarified in a particular way as suggested in the paper. The Commission services  furtherrecall that the revision of the Brussels I Regulation is ongoing before the co-legislators. In addition, changes to the draft UPC Agreement should be made. It does not appear that issues of compatibility with other Union instruments would arise. A technical analysis of each of the provisions of the draft UPC Agreement should continue. It is clear that many procedural matters will need to be regulated in the rules of procedure.1 It is obvious that such rules will also need to comply with the relevant Union legislation. The UPC Agreement should clearly provide for this and foresee a mechanism how such compliance with the acquis may be ensured.

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“The Objective Is To Reach Agreement On New Patent System By End Of The Year.”

By On October 2, 2011 · 2 Comments · In EU law, European Patent Law

Ms Máire GEOGHEGAN-QUINN, Member of the European Commission; Ms Barbara KUDRYCKA, (right) Polish Minister of Science and Higher Education

The EU Competitiveness Council met in Brussels on Thursday 29 and Friday 30 September under the chair of Mr. Marcin Korolec, Deputy Minister of Economy, and Mrs Barbara Kudrycka, Polish Minister of Science and Higher Education. Below please find a quote from recent MEMO/11/643:

Draft Agreement on the creation of a Unified Patent Court

The European Commission and the Polish Presidency are giving high priority to patent reform. The objective is to reach agreement on a new patent system by the end of the year.

In that context, intensive work has been done to find agreement among the Member States on the basic features of the Unified Patent Court. Currently, patent litigation in Europe is fragmented and expensive. National patent courts only decide on the validity of European patents in their own territory. A patent owner needs to start court proceedings in a number of different courts in order to enforce his European patent for the same invention throughout Europe. This creates unnecessary costs as well as legal uncertainty.

To address these issues, a draft agreement for the setting up of a Unified Patent Court was developed between 2007 and 2009. However, in its Opinion in March 2011, the Court of Justice of the European Union (CJEU) raised concerns in respect of certain aspects of the draft agreement.

In May, the Commission tabled a working paper on the way forward. The paper addressed the concerns of the CJEU and met the expectations of Member States and industry. The solution suggested by the Commission was examined and endorsed by the Member States at the May Competitiveness Council. On that basis, the Hungarian Presidency tabled a revised draft agreement in June. This will be discussed at tomorrow’s meeting.

Commissioner Barnier will welcome progress made in recent weeks and stress the importance of reaching a final agreement by the end of 2011. He will highlight that reducing the costs and complexity of the existing European patent system has a substantial impact on innovation and growth.

The result was described in Document 14691/11 – PROVISIONAL VERSION – PRESSE 331 PR CO 55 as follows:

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New Developments Concerning EU Unified Patent Court

By On September 26, 2011 · 3 Comments · In EU law, European Patent Law, Patents

On September 2, 2011, the Polish EU Presidency submitted Document 13751/11 to the Friends of the Presidency Group titled Draft agreement on a Unified Patent Court and draft Statute – Revised Presidency text and originally marked as “LIMITE”, i.e. confidential. On September 23, 2011, another related Document 13751/11 COR 2 removed the “LIMITE” restriction from its parent document. However, Document 13751/11 COR 1 still appears not to be accessible at the time of writing this blog posting.

The history of the proceedings according to the narrative of the above-identified Document is that, following the discussions with Member States, the Polish Presidency has prepared a first set of amendments to the Draft Agreement on a Unified Patent Court and draft Statute  covering up to Article 14d. The aim of this note is to explain the suggested changes and the envisaged way ahead. On June 14, 2011, the Hungarian Presidency had presented to the Mertens Group a modified Draft Agreement which confers exclusive jurisdiction upon a court common to the Member States in the field of European Patent and European Patent with unitary effect. This modified Draft Agreement was based on the previous draft agreement on the European and Community Patent Court and necessary amendments have been made to ensure compliance with the EU Treaties in response to the opinion 1/09 of the Court of Justice of the European Union (CJEU). It also included adaptations to the text in light of the December 2009 Council conclusions.

The introductory passage of the recently released Document explains the amendments done with regard to earlier versions as follows:

The main changes, which were proposed to ensure compliance with the EU Treaties as set out in the opinion of the CJEU were the limitation of participation in the draft agreement to EU Member States (thus excluding the participation of third states as well as the EU) and the strengthening of the obligation of the Unified Patent Court to comply with EU law and request preliminary rulings, if necessary, including through the introduction of sanctions. The removal from the draft of the EU and non-EU states as possible contracting parties fundamentally changed the nature of the Draft Agreement, the aim of which is to establish not just an international court, but a court common to the Member States. This will represent a new patent jurisdiction which will be an inherent part of the judicial systems of those Member States which are party to the agreement.

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OHIM Soon To Be Transformed Into Sort Of IP Enforcement Agency

By On September 14, 2011 · 2 Comments · In Enforcement, EU law

On May 24, 2011, the EU Commission published Document COM(2011) 288 final (Available via EU Council under Document 10668/11) titled Proposal for a Regulation of the European Parliament and the Council on entrusting the Office for Harmonisation in the Internal Market (Trade Marks and Designs) with certain tasks related to the protection of intellectual property rights, including the assembling of public and private sector representatives as a European Observatory on Counterfeiting and Piracy. In the Commission Document, the background is described as follows:

One of the main initiatives to address this threat launched by the Council and the Commission in 2009 was to set up a European Observatory on Counterfeiting and Piracy to improve understanding on intellectual property rights (IPR) infringements (‘the Observatory’). In line with the Council’s request of 2008, the Observatory in its current form is a centre of expertise with no legal personality managed by the Commission services. Its role is twofold:

(i) becoming the central resource for gathering, monitoring and reporting information and data related to all IPR infringements and

(ii) be used as a platform for cooperation between representatives from national authorities and stakeholders to exchange ideas and expertise on best practices, to develop joint enforcement strategies and to make recommendations to policy-makers. The management of the Observatory encompasses a series of tasks and activities under the responsibility of Commission services.

The Observatory is currently run by three Commission civil servants (two administrators and one assistant) who, in addition also carry out all policy work related to the Observatory.

The latest Council Resolution relating to the Observatory added further responsibilities, by inviting it to assess the needs for implementation of EU-level training programmes for those involved in combating counterfeiting and piracy. A September 2010 European Parliament Resolution additionally called for the Observatory to compile scientific research data on counterfeiting and IPR regulation. Finally, a recently published study commissioned by the Commission’s Directorate General for Trade recommends that the Observatory should become a single point of contact within the Commission, for external parties, and an international point for the creation and dissemination of best practice.

Whereas the current circumstances of the Observatory were appropriate for the launch phase of the project, with its institutional framework being established through consultations and meetings, there is no scope for expanding the Observatory’s remit and developing its operational activities, both of which require a sustainable infrastructure in terms of human resources, financing and IT equipment as well as access to the necessary expertise.

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Draft Decision: Council Of EU One Step Closer To Sign ACTA

By On August 24, 2011 · 1 Comment · In ACTA, EU law

Emblem of the Council of the European UnionAs already reported in my earlier posting, the European Union is just about to sign ACTA, the Anti-Counterfeiting Trade Agreement negotiated between the European Union and its Member States, Australia, Canada, Japan, the Republic of Korea, the United Mexican States, the Kingdom of Morocco, New Zealand, the Republic of Singapore, the Swiss Confederation and the United States of America. ACTA is a proposed plurilateral agreement for the purpose of establishing international standards on intellectual property rights enforcement.

Yesterday, the EU Council has published Document 12192/11 conveying a draft Decision saying that the President of the Council (i.e. Mr Herman Van Rompuy) shall be authorised to designate the person(s) empowered to sign the Agreement on behalf of the Union. Moreover, the Official text of ACTA has been published with Document 12196/11.

It is to be understood that this text is a Draft only; however, the formal adoption thereof surely will go through on one of the next sessions of the EU Council. However, afterwards that matter will be dealt with in the European Parliament as well as in each of the EU Member States.

ACTA is debated controversially because of the secrecy of some of the negotiation rounds. Moreover, there are doubts as to if ACTA is compatible with EU Acquis Communautaire; see my earlier posting there.

ACTA was born out of the frustration of the major industrialised economies with progress on monitoring and norm-setting on the enforcement of intellectual property rights in multilateral fora. In the WTO Council for TRIPS (‘TRIPS Council’), Brazil, India and China have consistently blocked the inclusion of enforcement as a permanent agenda item. At the World Intellectual Property Organisation (WIPO), enforcement issues were relegated to a purely advisory committee.

One of its features is the creation of another institutional structure in the field of Intellectual Property law besides WIPO and WTO, i.e. the ACTA Committee provided for in Article 36. This Committee will be entitled to:

  • review the implementation and operation of ACTA;
  • consider matters concerning the development of ACTA;
  • consider any proposed amendments to ACTA;
  • decide upon the terms of accession to ACTA of any Member of the WTO; and
  • consider any other matter that may affect the implementation and operation of ACTA.

The Committee may decide to:

  • establish ad hoc committees or working groups to assist the Committee in carrying out its responsibilities or to assist a prospective Party upon its request in acceding to ACTA;
  • seek the advice of non-governmental persons or groups;
  • make recommendations regarding the implementation and operation of ACTA, including by endorsing best practice guidelines related thereto;
  • share information and best practices with third parties on reducing intellectual property rights infringements, including techniques for identifying and monitoring piracy and counterfeiting; and
  • take other actions in the exercise of its functions.

Perhaps, on EU level  the function of the ACTA Committee should also be discussed in relation to the planned new compentences of OHIM in the field of IP enforcement.

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European Patent With Unitary Effect: How To Carry On?

By On August 21, 2011 · 1 Comment · In EU law, European Patent Law
Mailroom of EU Council during summer reccess

Mailroom of EU Council during summer reccess

On July 10, 2010, I had reported on the planned Organisation of work on the patent reform under the Polish Presidency. Now, as we still are within the summer recess period where nothing appears to move forward there might be a little stretch of time to contemplate as to how things might move on during next fall.

There is a recent precedent of successful adoption of enhanced co-operation in the EU: As we can learn from Wikipedia, with the rise in cross border divorce in the EU, common rules were put forward to settle the issue of where trans-national couples can divorce in the EU. However Sweden was blocking the new rules, fearing the loss of its liberal divorce law (divorce law differs strongly, with Nordic liberalism being in contrast to more conservative countries such as Malta which – until recently – did not even allow it). In order to allow those willing states to proceed without Sweden, in July 2008 nine countries put forward a proposal to use enhanced co-operation. At a meeting of the justice ministers on July 25, 2008, the nine states decided to formally seek the measure of enhanced cooperation; eight states formally requested it from the European Commission on 28 July 2008.

When analysing this narrative on the EU Council document repository, we get that there was a Council Document 9898/2/10 REV 2 titled Proposal for a Council Decision authorising enhanced cooperation in the area of the law applicable to divorce and legal separation – Adoption dated June 04, 2010. The corresponding Council Document concerning the European patent with unitary effect appears to be No 5538/11 dated February 11, 2011 titled Council Decision authorising the creation of unitary patent protection.

On December 13, 2010, Document 17523/10 was published titled Council Regulation implementing enhanced cooperation in the area of the law applicable to divorce and legal separation. This Implementation Regulation was again amended and finally adopted by the Council.

Obviously there seems to be a two-step approach:

  • In a first step, the basic question as to whether or not utilisation of the enhanced co-operation model is politically endorsed by a sufficient EU Council majority at all must be decided (Council Decision authorising the enhanced co-operation).
  • In a second step, the details of the enhanced co-operation must be decided (Regulation of the Council [and the European Parliament, if applicable] implementing the enhanced co-operation).

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Software Patent Litigation: Stress Testing The Patent System

By On August 20, 2011 · 6 Comments · In EU law, European Patent Law, Litigation, Software inventions

As we know from Wikipedia, stress testing is a form of testing that is used to determine the stability of a given system or entity. It involves testing beyond normal operational capacity, often to a breaking point, in order to observe the results. The concept is quite fashionable nowadays; it has reached mainstream in the context of the financial sector and even when making an assessment of operational characteristics of a railway station.

Now it looks as if we shall be witnesses of something that comes near to a major stress testing exercise of the patent system.

We all are supposed to be aware that an awful lot of litigation is currently going on in the field of mobile devices like smartphones and tablet computers. Reuters have published nice infographics on patent-related suits between mobile device / component manufacturers here. Moreover, there are press reports saying that Apple, Inc., is about to launch another patent based suit against Samsung allegedly aiming at a EU wide ban on all of Samsung’s smartphones and tablet computers under its Galaxy brand. If these speculations were true and if Apple were to prevail in such battle, the suit could not only be a blow to Samsung but also to the Android ecosystem in its entirety.

Another litigation front has been opened by a company named Lodsys, a non-pracitcing entity (NPE) suing certain individual software developers  who brought to market smartphone apps which allegedly are infringing Lodsys’ patent rights.

It appears to be quite clear that the motivation of Google to acquire Motorola Mobility for USD 12,5 billion is mostly fueled by their desire to overcome a perceived inferiority of their own patent portfolio.

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India And EU Reach Understanding On Seizure of Indian Generic Drugs in Transit

By On August 1, 2011 · Leave a Comment · In EU law, FTA India, Uncategorized

Since some time there is a political dispute ongoing relating to the enforcement of IP rights – here: in particular trade marks and patents – at EU borders when generic drugs get onto EU territory for transit. The concerns are that drugs might get seized during transit by EU border control Officials despite the fact that trade therein is illegal neither in the country of origin nor in the final destination country. Also in view of ACTA such voices have been raised which got, however, a firm denial from the EU Commission; see also the Directorate-General for External Policies of the Union (Directorate B – Policy Dept.) publishing a study conveying an assessment of the Anti-Counterfeiting Trade Agreement (ACTA) which had been requested by the European Parliament’s Committee on International Trade .

This particular issue has long been a disputed item on the agenda of negotiations for an India / EU Free Trade Agreement. EU recognises India as an important trade partner for the EU and a growing global economic power, saying that it combines a sizable and growing market of more than 1 billion people with a growth rate of between 8 and 10 % – one of the fastest growing economies in the world. Although it is far from the closed market that it was twenty years ago, India still also maintains substantial tariff and non-tariff barriers that hinder trade with the EU. The EU and India hope to increase their trade in both goods and services through the Free Trade Agreement (FTA) negotiations that they launched in 2007. According to a press report, Indian and European trade ministers had hoped to sign the ambitious deal by the end of March 2011. However, there have been, inter alia, problems with the protection of intellectual property.

On July 28, 2011, the Ministry of Commerce & Industry of India has published a press release (emphasis added by me, -AHH):

“European Union has proposed a settlement of the dispute by confirming the detailed principles agreed in the Understanding to guide border enforcement of intellectual property in the EU. In addition, EU agreed to India’s request for adoption of guidelines which would confirm the principles agreed to in the Understanding with a view to give greater and immediate legal certainty for producers and traders. EU also agreed to reflect the principles contained in the Understanding in its proposal for a new Regulation to replace Regulation 1383/2003. In return the EU sought an assurance that India would refrain from further steps in the ongoing dispute. Mr. Jean-Luc Demarty, Director General, European Commission sent a letter to this effect on 17 June 2011 to Commerce Secretary Shri Rahul Khullar.

India has taken note of the commitments offered by the EU. India has reiterated the core principle of the Understanding that the mere fact that medicines are in transit through EU territory, and that there is a patent title applicable to such medicines in the EU territory, does not in itself constitute enough grounds for customs authorities in any Member State to suspect that the medicines at stake infringe patent rights. However, a situation in which medicines are in transit through EU territory and there is adequate evidence that satisfies the customs authorities that there is a substantial likelihood of diversion of such medicines on to the EU market may constitute enough grounds for customs authorities to suspect that the medicines at stake infringe patent rights in the EU. [...]“

Hence, it looks as if pragmatism and common sense have prevailed in taking away this particular obstacle to the conclusion of the Free Trade Agreement.

(Image: EU Commission)

 

ACTA On The Borderline Of EU Acquis Communautaire

By On July 20, 2011 · 2 Comments · In ACTA, EU law

Recently the Directorate-General for External Policies of the Union (Directorate B – Policy Dept.) has published a study conveying an assessment of the Anti-Counterfeiting Trade Agreement (ACTA) which had been requested by the European Parliament’s Committee on International Trade (Contract No. EXPO/B/INTA/FWC/2009-01/Lot7/ 12 June 2011 PE 433.859 / Editorial closing date: 11July 2011). Of course, the study should be construed in a way that any opinions expressed in the document are the sole responsibility of the respective author(s) and do not necessarily represent the official position of the European Parliament. Political debates in coming fall will show the Parliament’s position.

Named authors of the study are:

As set out in the study, ACTA was born out of the frustration of the major industrialised economies with progress on monitoring and norm-setting on the enforcement of intellectual property rights in multilateral fora. In the WTO Council for TRIPS (‘TRIPS Council’), Brazil, India and China have consistently blocked the inclusion of enforcement as a permanent agenda item. At the World Intellectual Property Organisation (WIPO), enforcement issues were relegated to a purely advisory committee. According to the study, ACTA can also be seen as an extension of the existing strategies of the main ACTA parties to include significant provisions on enforcement in their bilateral and regional free trade agreements (FTAs).ACTA was motivated by a desire to establish common provisions in international trade agreements containing rules on anti-counterfeiting. Within the EU the ACTA has  been the source of some concerns regarding the non-transparent way it was negotiated and whether it meets to aims agreed by the European Parliament and Commission that it would be compatible with the existing acquis communautaire and the World Trade Organisation’s Trade Related intellectual Property rights (TRIPs) Agreement.

The study addresses two key questions regarding ACTA:

  • Is it in conformity with the EU Acquis; and
  • is it in conformity with the existing international obligations of the EU and its member states?

The question as to whether or not ACTA it in conformity with the EU acquis communautaire is of some political importance. Of course, the respective competent and empowered bodies of the EU are free to extend that acquis communautaire at any time if so decided. However, in view of general concerns of conflicts between ACTA and civil liberties and legitimate economic interests not based on IPRs, plus critics on the murky, secrecy-shrouded history of ACTA, there is a fierce public debate if ACTA should be ratified at all. In order to ease the formal adoption of ACTA, the EU Commission insists on their view that ACTA is merely declarative, i.e. it does not extend the acquis communautaire. If an expert opinion would supply reasons for rejecting this position, the Commission might well come into political trouble. This scenery appears to be the set prepared for the assessment now published.

The study finds:

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CJEU (ECJ) Today Decided In Case C‑324/09 L’Oréal SA et al. vs. eBay International AG et al.

By On July 12, 2011 · Leave a Comment · In CJEU, EU law, Trade Marks

Today, the Court of Justice of the European Union (CJEU) has published the final decision in Case C‑324/09 (L’Oréal SA et al. vs. eBay International AG et al.).

From the Court decision we learn that L’Oréal is a manufacturer and supplier of perfumes, cosmetics and hair-care products. In the United Kingdom it is the proprietor of a number of national trade marks. It is also the proprietor of Community trade marks. L’Oréal operates a closed selective distribution network, in which authorised distributors are restrained from supplying products to other distributors.

Furthermore, eBay operates an electronic marketplace on which are displayed listings of goods offered for sale by persons who have registered for that purpose with eBay and have created a seller’s account with it. eBay charges a percentage fee on completed transactions. eBay enables prospective buyers to bid for items offered by sellers. It also allows items to be sold without an auction, and thus for a fixed price, by means of a system known as ‘Buy It Now’. Sellers can also set up online shops on eBay sites. An online shop lists all the items offered for sale by one seller at a given time. Sellers and buyers must accept eBay’s online-market user agreement. One of the terms of that agreement is a prohibition on selling counterfeit items and on infringing trade marks. In some cases eBay assists sellers in order to enhance their offers for sale, to set up online shops, to promote and increase their sales. It also advertises some of the products sold on its marketplace using search engine operators such as Google to trigger the display of advertisements.

According to the factual section of the Court decision, starting point was that on 22 May 2007, L’Oréal sent eBay a letter expressing its concerns about the widespread incidence of transactions infringing its intellectual property rights on eBay’s European websites. L’Oréal was not satisfied with the response it received and brought actions against eBay in various Member States, including an action before the High Court of Justice (England & Wales), Chancery Division.

L’Oréal’s action before the High Court of Justice sought a ruling, first, that eBay and the individual defendants are liable for sales of 17 items made by those individuals through the website www.ebay.co.uk, L’Oréal claiming that those sales infringed the rights conferred on it by, inter alia, the figurative Community trade mark including the words ‘Amor Amor’ and the national word mark ‘Lancôme’. The Court decision confirmed that it was common ground between L’Oréal and eBay that two of those 17 items are counterfeits of goods bearing L’Oréal trade marks.

The Court (Grand Chamber) today ruled:

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