The Community patent and the patent system in Europe, with evidence / House of Lords, Select committee on the European Communities.

  • Great Britain. Parliment. House of Lords. Select Committee on the European Communities.
Date:
1998
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Licence: Open Government Licence

Credit: The Community patent and the patent system in Europe, with evidence / House of Lords, Select committee on the European Communities. Source: Wellcome Collection.

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    4 February 1998] [Continued [Chairman Contd] Convention and lays down certain rules. For example, Article 2 says that the defendant must be sued in the courts of domicile, but then Article 5(3) has an exception to that which is that you can sue in the courts of the country where the event has given rise to the harm occurred. Now, it is the latter provision plus Article 24 on the provisional measures, which has led, because goods move around the Community, to the phenomenon known as forum shopping. People are picking their fora quite deliberately to achieve certain effects. You might sue on a bad patent in a court where you had less talented judges, less knowledgeable judges and so on. Since Articles 21 and 22 say that the court first seized of the matter, in effect, has that jurisdiction, you can then get away with all sorts of mischief. There is the famous Italian torpedo whereby you can effectively hold up the litigation, literally for years, by suing in Italy. I believe the oldest case currently is 30 years old. Lord Goodhart 49. The problem, as I understand it, from reading these papers, is that to set up a European or Community Patent Court would require amendment of the Community Treaties? (Professor Adams) Or another Treaty, as was done for the Brussels Convention. (Dr Reid) One of the points that I am sure you will hear from industry spokesmen, and in particular from the Trade Marks Patents and Designs Federation, which is a main body representing IP owners, closely allied with the CBI, is that unless these problems are solved, we will be back with the problems of the Luxembourg Convention. We are all agreed that the principle of unitary patent will further innovation to our general good, but we will have a system which will not work and will not be used. There is a corollary to that. It does not sound very communitaire but it will be very difficult to get bodies representing SMEs and industry, in general, to accept even the whiff of closure of the European Patent Office system, the EPC, let alone closure of the national Patent Offices. This is a cautious world because we are talking about important aspects of commercial behaviour. If you are a small company that has a major innovation, or a major company that has a major innovation, you do not want to put it at risk; so all the arguments are very cautious. It may be right that there should be a unitary patent but we must preserve what we have. You will hear that pretty consistently. Chairman 50. What about the Green Paper proposal that the EPO decide validity and that the national courts decide infringement? (Dr Reid) Well, we here in the United Kingdom react rather against that. I do. It seems, in practice, that the two issues are infringement and validity interact. 51. I wonder if you could explain to the Committee why they interact. (Dr Reid) The terms of the claim are the starting point for determining the scope of a patent. It is interpretation of the terms of the claim that determines scope. It is quite tempting for a patentee to argue, when trying to persuade the court of the validity of a patent, to imply or explicitly argue for a relatively narrow interpretation of the claims, so that they are better distinguished, further away, from the prior art. When it comes to infringement, of course, what he or she wants to do is to argue that these words have a broad interpretation. The way traditionally that English courts have dealt with this is that both validity and infringement are heard by the same judge. It is a very effective route. 52. The judge quite often says, “I do not have to decide on the validity of this patent because if it covers what this chap is doing, it must be invalid”? (Dr Reid) Yes. I have spent many years in the Netherlands and I am delighted to say that the Dutch judges nod vigorously when this point is made. I am given to understand that the German judges also see it as a very strong argument, so perhaps there will be voices getting validity and infringement together. The present proposals from the European Patent Office about the use of the European Patent Office would have them separate. There is another point about the European Patent Office. There are serious doubts about the quality of the judgments that they would give on major issues. There are current proposals to remedy certain defects there. So perhaps in a year or two’s time we will have a more favourable position, but that does not remove the fundamental problem about infringement and validity. 53. And, as you were saying earlier, they do take an awful long time on opposition proceedings and presumably would take the same time over challenges to validity? (Dr Reid) Yes. I think certain groups that will be before your Lordships will be telling you more about the proposals currently before the Administrative Council for the EPO to try and get delays reduced and get the quality of the judgments higher. There would still remain the problem of infringement and validity. Lord Plant of Highfield 54. Could I raise a problem in relation to that. It goes back to my earlier question. I should say I am not a lawyer so both my earlier question and this one may be totally naive but I am slightly lost now, I have to say. As I understood it, in answer to my earlier question you said that the European Patent Office would actually be running the Community patent arrangements and, therefore, there was no question of Switzerland, Liechtenstein and Monaco being out of the circle because the European Patent Office would be running it. I can see that. Part of the aim of this change is to improve efficiency and to reduce costs. You have already said a good deal in the last few minutes about some of the defects of the European Patent Office. You also said, as I recall, in response to Lord Goodhart’s question that the European Patent Office would not only run the Community patent but would also continue to run the bundling European patent. I just find it very difficult to understand how
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