On November 22, 2011, the General Secretariat of the Council of the European Union has sent Document 17317/11 to the Permanent Representatives Committee (COREPER Part 1) titled Draft Agreement on a Unified Patent Court and draft Statute – Draft Declaration for an operational UPC – Revised Articles 18, 19, 58, 58a, 58d and 59. Following up to discussions having taken place in the Permanent Representatives Committee on November 18, 2011, on the basis of the Note to the Permanent Representatives Committee contained in 17120/11 REV 1 (not published), the Polish EU Presidency has submitted, for discussion on November 23, the following texts :
- A draft Declaration, to be made by the Contracting Member States upon signature of the Agreement, ensuring that the future Unified Patent Court shall be operational at the moment its enters into force (see Annex I) as referred to in point 8 of the above Note;
- Revised drafts for Articles 18, 19, 58, 58a, 58d and 59 (changes in relation to the previous version set out in 16741/11 are underlined) (see Annex II), which reflect proposals of the Presidency as outlined in the above Note.
The Draft Declaration sets out the political will power not only to rush the Unified Patent Court (UPC) through as fast as possible but also to make sure that it will be operational immediately after it has been formally set up (Annex I):
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Even beyond the Draft Report on a jurisdictional system for patent disputes (Rapporteur: Klaus-Heiner Lehne) reported earlier (here and here) there appear to exist a number of interesting papers of the Committee on Legal Affairs of the European Parliament (JURI) available on-line:
- Document PE472.331v01-00: Amendments 1 – 25 / concerning “Motions for a resolution” – Draft report by Klaus-Heiner Lehne (2011/2176(INI)) – Jurisdictional system for patent disputes;
- Document PE472.334v02-00: Draft Report on the proposal for a Council regulation implementing enhanced cooperation in the area of the creation of unitary patent protection with regard to the applicable translation arrangements (COM(2011)0216 – C7-0145/2011 – 2011/0094(CNS)) including Amendments 1-19; Rapporteur: Raffaele Baldassarre;
- Document PE472.334v02-00: Amendments 20 – 47 / Draft report by Raffaele Baldassarre (2011/0093(COD)) - Enhanced cooperation in the area of the creation of unitary patent protection with regard to the applicable translation arrangements; and
- Document PE472.059v02-00: Draft Report on the proposal for a Regulation of the European Parliament and of the Council implementing enhanced cooperation in the area of the creation of unitary patent protection (COM(2011)0215 – C7-0099/2011 – 2011/0093(COD))including Amendments 1 – 44; Rapporteur: Bernhard Rapkay; and
- Document PE472.059v02-00: Amendments 45 – 94 / Draft report by Bernhard Rapkay (2011/0093(COD)) - Proposal for a regulation of the European Parliament and of the Council implementing enhanced cooperation in the area of the creation of unitary patent protection / Proposal for a regulation (COM(2011)0215 – C7-0099/2011).
These papers apparently have been discussed during the recent meeting of the Legal Committee held on November 21-22, 2011, in Brussels (Document PE475.963v01-00). I have no clue so far as to the outcome of that session.
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Are European Patent Attorneys prepared to fight for their right to represent parties before the Unified Patent Court in both validity and litigation cases?
As reported earlier on this blog, the debate on the role of Patent Attorneys before the future Unified Patent Court has been reopened by the JURI Committee of the European Parliament, which suggested in a “Draft Report on a jurisdictional system for patent disputes” (2011/2176 (INI)) dated 9 September 2011 that
“the parties should be represented only by lawyers authorised to practise before a court of a Contracting Member State; the representatives of the parties might be assisted by patent attorneys who should be allowed to speak at hearings before the Court”,
which, if ever put into action, would fall back behind the current situation in major European patent jurisdictions, such as UK or Germany, where patent attorneys are entitled to represent parties at least in validity actions.
As opposed to the JURI suggestion, current Article 28 (Representation) of the “Revised Presidency Text” of the Draft Agreement on a Unified Patent Court and draft Statute (Doc. 16023/11) dated 26 October 2011 rules that besides national lawyers
(2) Parties may alternatively be represented by European Patent Attorneys who are entitled to act as professional representatives before the European Patent Office pursuant to Article 134 of the EPC and who have appropriate qualifications such as a European Patent Litigation Certificate.
LOBBYING …
One may ask why JURI tries to exclude European Patent Attorneys from representation before the Unified Patent Court. I don’t have an answer yet, but it’s a matter of fact that at least 15 out of 25 members of the JURI Committee are lawyers (e.g. rapporteur Klaus-Peter Lehne is a partner of TaylorWessing, having one of the largest patent law departments in Europe), while none of the members is a patent attorney or – at least according to the biographies available on the website of the European Parliament – has any significant experience or deeper insight in patents, patent law, or the patent system.
Since JURI does not provide any further arguments apart from that “it is of utmost importance that parties are represented by lawyers”, it may not be too far fetched to consider JURI’s demand as plain lobbyism or, at least, resulting from a significant lack of knowledge regarding the competences, qualifications, and day-to-day practice of European Patent Attorneys.
In fact, as opposed to many other fields of law, intellectual property and especially patents are a very lucrative and even growing legal market for lawyers, so that there is certainly quite some lobbying going on in this question, which is considered crucial for the business model of patent lawyers.
For example, the “patent attorneys may assist lawyers” wording in JURI’s Draft Report looks as if it was just copied from a position paper of the vocal lawyer’s lobby group CCBE (see also the “concerns” of CCBE’s secretary-general Jonathan Goldsmith and the critical response of Tibor Gold, editor of the monthly Journal at The Chartered Institute of Patent Attorneys).
In a reference for a preliminary ruling from the Rechtbank van eerste aanleg te Brussel (Belgium) to the Court of Justice of the European Union lodged on July 19, 2010 (Belgische Vereniging van Auteurs, Componisten en Uitgevers (Sabam) v Netlog NV, Case C-360/10), a legal question was posed as follows:
Do Directives 2001/29 ( 1 ) and 2004/48, ( 2 ) in conjunction with Directives 95/46, ( 3 ) 2000/31 ( 4 ) and 2002/58, ( 5 ) construed in particular in the light of Articles 8 and 10 of the European Convention on the Protection of Human Rights and Fundamental Freedoms, permit Member States to authorise a national court, before which substantive proceedings have been brought and on the basis merely of a statutory provision stating that: ‘They [the national courts] may also issue an injunction against intermediaries whose services are used by a third party to infringe a copyright or related right’, to order a hosting service provider to introduce, for all its customers, in abstracto and as a preventive measure, at its own cost and for an unlimited period, a system for filtering most of the information which is stored on its servers in order to identify on its servers electronic files containing musical, cinematographic or audio-visual work in respect of which SABAM claims to hold rights, and subsequently to block the exchange of such files?
This case throws a spotlight on a phenomenon which has become ubiquitous in the age of the Internet: When there is a case of wrongdoing related to the digital domain, stakeholders find that often it is inconvenient, sometimes even practically impossible to go for the primary wrongdoer because of difficulties to identify him or her or because of the wrongdoer is seated in a foreign jurisdiction which might be less than co-operative due to a variety of reasons. Cases based on some sort of infringement of IP rights and related to the digital domain are notorious for this kind of scenario.
So why not going for the intermediaries, which are plenty and inevitable necessary for running the Internet, some of them surely located in your own jurisdiction or at least in a foreign jurisdiction which shows a co-operative habit, many rights holders may ask themselves.
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Mr Klaus-Heiner Lehne MdEP, Chair of JURI / European Parliament
It has just now come to my attention that on September 23, 2011, the Committee on Legal Affairs of the European Parliament has published a Draft Report on a jurisdictional system for patent disputes (2011/2176(INI)) (Rapporteur: Klaus-Heiner Lehne). The document comprises a text of a motion for a European Parliament resolution on a jurisdictional system for patent disputes (2011/2176(INI)) generally acknowledging that the establishment of a coherent patent litigation system in the Member States taking part in the enhanced cooperation should be accomplished by an international agreement between these Member States creating a Unified Patent Court. However, there is an interesting twist:
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It has become increasingly difficult to kept a clear view on what exactly is discussed in the ongoing discourse on the various proposals and drafts for a European Patent with unitary effect (i.e. the Unitary Patent) and a Unified Patent Court.
In order to retain a clear overview on the essential legal and political concepts of those two drafts, I extracted and sketched their main features based on the “Proposal for a Regulation [...] implementing enhanced cooperation in the area of unitary patent protection” dated 23 June 2011 (Document 11328/11) and the “Draft Agreement on a Unified Patent Court and draft Statute” dated 19 October 2011 (Document 15539/11). Please enjoy.
Warsaw - A plausible seat for core components of EU Unified Patent Court?
Yesterday I wrote a post reporting on the publication of EU Council Document 15539/11 conveying another version of the Draft agreement on a Unified Patent Court and draft Statute. Apparently there seems to be some political desire to get this thing done – together with Draft Regulations implementing enhanced cooperation in the area of unitary patent protection (Document 11328/11) – by finalising the entire package by end of this year.
To me it is quite a bit open as to whether or not this ambitious target will be met. We are amidst a grave stress test of the Euro framework, perhaps even of the EU itself. And, members of the political elites in all of the EU Member States are extremely busy to pretend as if they were aware of any viable solution advising how to exit this situation which perhaps might be reported in future textbooks of history as the worst crisis of the European Union ever. Will there be sufficient time and political will power to sort out problems in the field of patent law? I remember well the months of the French EU Presidency from July to December 2008. Up to September 2008 there had been strong hopes that French President Mr Sarkozy to take the bull at its horns and force a political compromise in the nasty languages issue concerning the original proposal for a EU Community Patent covering all of the EU Member States, including Italy and Spain. But on September 15, 2008, Lehman Brothers had to file for bankruptcy, and the world was no longer the same as it had used to be. The French Government had to shift their priorities, and Mr Sarkozy did not make it to push a compromise towards the EU Community Patent during his time at the helm of EU Presidency.
If the approach now pending – ‘enhanced co-operation’ – succeeds, what will be the practical consequences of its implementation?
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On October 19, 2011, the Polish EU Presidency has issued Document 15539/11 titled Draft agreement on a Unified Patent Court and draft Statute – Revised Presidency text. Changes in relation to the previous as provided with the version as of Document 15289/11 are marked. The provisions in italics marked with square brackets are still being developed as their final version depends either on the drafting technique to be adopted or on the content of the planned Commission proposal on changes to the acquis communitaire itself. Articles 14b and 14c now read:
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On October 07, 2011, the Polish EU Presidency has sent Document 15289/11 to the Delegations of the EU Member States for carrying on with negotiating an Agreement for a Unified Patent Court during a technical drafting session to be held from October 12-14, 2011 in Warsaw. The Document is titled Draft agreement on a Unified Patent Court and draft Statute – Revised Presidency text. In the Draft, changes in relation to the previous version (Document 13751/11 + COR 1) are marked. Concerning this elder version see also my earlier post here.
Altogether, the amendments made in Document 15289/11 compared to the previous version of document 13751/11 appear to be more or less of a technical nature. In particular, some conclusions from the non-paper Document 14191/11 titled Compatibility of the draft agreement on the Unified Patent Court with the Union acquis appear to have been drawn. In particular, a new Article 15b now defines the relation of the Unified Patent Court with the jurisdiction of courts of States not party to this Agreement (i.e. Italy and Spain) as follows:
(1) The Court shall have jurisdiction any time the court or courts of a Contracting Member State would have jurisdiction on the basis of Regulation (EC) 44/20019 or, where applicable, on the basis of the Convention on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters (Lugano Convention).
(2) Where proceedings involving the same cause of action and between the same parties are brought in this Court and (a) court(s) of States not party to this Agreement, the Court shall of its own motion stay its proceedings until the jurisdiction of the court first seized is established.
(3) Where the jurisdiction of the court of a State not party to this Agreement is established, the Court shall decline jurisdiction in favour of that court.
Furthermore, a newly introduced paragraph 3 in Article 14c indicates that
The law of non-contracting States shall be applicable where relevant and as provided by provisions of Union law, in particular on the basis of Regulations 593/2008 (Rome I) and 864/2007 (Rome II), or by international instruments.
I expect to get further news next week after the technical drafting session to be held in Warsaw is closed.
According to Chapter II PCT (International Preliminary Examination) the International Preliminary Examination Authority (IPEA) draws up the International Preliminary Examination Report (IPER) which is forwarded to the elected national patent Offices upon national phase entry. Since most national Offices use the IPER as a basis for their substantive examination, it is vital for the applicant that a positive IPER is established.
Based on Rule 66.4 PCT, reading
Additional Opportunity for Submitting Amendments or Arguments:
(a) If the International Preliminary Examining Authority wishes to issue one or more additional written opinions, it may do so, and Rules 66.2 and 66.3 shall apply.
(b) On the request of the applicant, the International Preliminary Examining Authority may give him one or more additional opportunities to submit amendments or arguments.
the EPO now announced an important procedural change for international applications entering Chapter II PCT before the EPO functioning as IPEA (see Notice from the EPO dated 31 August 2011). According to that revised practice, the EPO obtains discretion to issue additional written opinions before establishing the IPER, either on its own initiative or upon applicant’s request. This will give applicants more control and influence and better chances to enter the national phase with a positive IPER.
MISCELLANEOUS
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