Enforcement of European patents
Encyclopedia
European patents are granted by the European Patent Office
(EPO) under the legal provisions of the European Patent Convention
(EPC). However, European patents are enforced at a national level, i.e. on a per-country basis. Under , "any infringement
of a European patent shall be dealt with by national law," with the European Patent Office having no legal competence to deal with and to decide on patent infringements in the Contracting States to the EPC. A few, limited aspects relating to the infringement of European patents are however prescribed in the EPC.
Proposals have been long discussed to create a true unitary European patent system across Europe and especially across the European Union
(EU), i.e. a European patent system wherein the enforcement of European-wide patents would be dealt at a supranational level rather than at a national level. These projects include the Community patent
and the European Patent Litigation Agreement
(EPLA). None of these projects have yet come to fruition.
The enforcement of European patents is therefore characterized by a fragmented system with "variegated national approaches towards patent-related litigations and (...) the possibility of having opposite decisions (and hence outcome) in case of parallel litigations."
In other words, the "extent of the protection" conferred by a European patent is determined primarily by reference to the claims of the European patent (rather than by the disclosure of the specification and drawings, as in some older patent systems), though the description and drawings are to be used as interpretive aids in determining the meaning of the claims. A "Protocol on the Interpretation of Article 69 EPC" provides further guidance, that claims are to be construed using a "fair" middle position, neither "strict, literal" nor as mere guidelines to considering the description and drawings, though of course even the protocol is subject to national interpretation. The authentic text of a European patent application and of a European patent are the documents in the language of the proceedings.
Not only the national judicial procedures differ, the litigation costs and duration may significantly vary from one country to another.
. In two cases in July 2006 interpreting Articles 6.1 and 16.4 of the Brussels Convention
, the European Court of Justice held that European patents are national rights that must be enforced nationally, that it was "unavoidable" that infringements of the same European patent have to be litigated in each relevant national court, even if the lawsuit is against the same group of companies, and that cross-border injunctions are not available.
European Patent Office
The European Patent Office is one of the two organs of the European Patent Organisation , the other being the Administrative Council. The EPO acts as executive body for the Organisation while the Administrative Council acts as its supervisory body as well as, to a limited extent, its legislative...
(EPO) under the legal provisions of the European Patent Convention
European Patent Convention
The Convention on the Grant of European Patents of 5 October 1973, commonly known as the European Patent Convention , is a multilateral treaty instituting the European Patent Organisation and providing an autonomous legal system according to which European patents are granted...
(EPC). However, European patents are enforced at a national level, i.e. on a per-country basis. Under , "any infringement
Patent infringement
Patent infringement is the commission of a prohibited act with respect to a patented invention without permission from the patent holder. Permission may typically be granted in the form of a license. The definition of patent infringement may vary by jurisdiction, but it typically includes using or...
of a European patent shall be dealt with by national law," with the European Patent Office having no legal competence to deal with and to decide on patent infringements in the Contracting States to the EPC. A few, limited aspects relating to the infringement of European patents are however prescribed in the EPC.
Proposals have been long discussed to create a true unitary European patent system across Europe and especially across the European Union
European Union
The European Union is an economic and political union of 27 independent member states which are located primarily in Europe. The EU traces its origins from the European Coal and Steel Community and the European Economic Community , formed by six countries in 1958...
(EU), i.e. a European patent system wherein the enforcement of European-wide patents would be dealt at a supranational level rather than at a national level. These projects include the Community patent
Community Patent
The EU patent or European Union patent, formerly known as the Community patent, European Community Patent, or EC patent and sometimes abbreviated as COMPAT, is a patent law measure being debated within the European Union, which would allow individuals and companies to obtain a unitary patent...
and the European Patent Litigation Agreement
European Patent Litigation Agreement
The draft European Patent Litigation Agreement , or formally the Draft Agreement on the establishment of a European patent litigation system, is a proposed patent law agreement aimed at creating an "optional protocol to the European Patent Convention which would commit its signatory states to an...
(EPLA). None of these projects have yet come to fruition.
The enforcement of European patents is therefore characterized by a fragmented system with "variegated national approaches towards patent-related litigations and (...) the possibility of having opposite decisions (and hence outcome) in case of parallel litigations."
Extent of protection
A first aspect relating to the infringement of European patents which is prescribed in the EPC is the extent of protection conferred by a European patent. reads:- The extent of the protection conferred by a European patent or a European patent application shall be determined by the claimClaims under the European Patent ConventionArticle 84 of the European Patent Convention defines the function of the claims under the European Patent Convention, the function being to define the matter, i.e. the invention, for which patent protection is sought. This legal provision also imposes that the claims must be clear, concise as well...
s. Nevertheless, the description and drawings shall be used to interpret the claims.
In other words, the "extent of the protection" conferred by a European patent is determined primarily by reference to the claims of the European patent (rather than by the disclosure of the specification and drawings, as in some older patent systems), though the description and drawings are to be used as interpretive aids in determining the meaning of the claims. A "Protocol on the Interpretation of Article 69 EPC" provides further guidance, that claims are to be construed using a "fair" middle position, neither "strict, literal" nor as mere guidelines to considering the description and drawings, though of course even the protocol is subject to national interpretation. The authentic text of a European patent application and of a European patent are the documents in the language of the proceedings.
Products directly obtained by a process
A second aspect relating to the infringement of European patents is prescribed in . The EPC requires that national courts must consider the "direct product of a patented process" to be an infringement. reads:- If the subject-matter of the European patent is a process, the protection conferred by the patent shall extend to the products directly obtained by such process.
Other aspects, including costs
All other substantive rights attached to a European patent in a Contracting State, such as what acts constitute infringement (indirect and divided infringement, infringement by equivalents, extraterritorial infringement, infringement outside the term of the patent with economic effect during the term of the patent, infringement of product claims by processes for making or using, exports, assembly of parts into an infringing whole, etc.), the effect of prosecution history on interpretation of the claims, remedies for infringement or bad faith enforcement (injunction, damages, attorney fees, other civil penalties for willful infringement, etc.), equitable defenses, coexistence of an EP national daughter and a national patent for identical subject matter, ownership and assignment, extensions to patent term for regulatory approval, etc., are expressly remitted to national law.Not only the national judicial procedures differ, the litigation costs and duration may significantly vary from one country to another.
- "Litigation costs vary significantly across jurisdictions. The United Kingdom is by far the most expensive jurisdiction among EPC member states. The cost is much higher than in the three other jurisdictions, and is nearly as high as their cumulated costs. The litigation costs in Germany, France and the Netherlands are similar."
Cross-border injunctions
For a period in the late-1990's, national courts issued cross-border injunctions covering all EP jurisdictions, but this has been limited by the European Court of JusticeEuropean Court of Justice
The Court can sit in plenary session, as a Grand Chamber of 13 judges, or in chambers of three or five judges. Plenary sitting are now very rare, and the court mostly sits in chambers of three or five judges...
. In two cases in July 2006 interpreting Articles 6.1 and 16.4 of the Brussels Convention
Brussels Regime
The Brussels Regime is a set of rules regulating which courts have jurisdiction in legal disputes of a civil or commercial nature between individuals resident in different member states of the European Union and the European Free Trade Association...
, the European Court of Justice held that European patents are national rights that must be enforced nationally, that it was "unavoidable" that infringements of the same European patent have to be litigated in each relevant national court, even if the lawsuit is against the same group of companies, and that cross-border injunctions are not available.
See also
- Brussels regimeBrussels RegimeThe Brussels Regime is a set of rules regulating which courts have jurisdiction in legal disputes of a civil or commercial nature between individuals resident in different member states of the European Union and the European Free Trade Association...
- Claims under the European Patent ConventionClaims under the European Patent ConventionArticle 84 of the European Patent Convention defines the function of the claims under the European Patent Convention, the function being to define the matter, i.e. the invention, for which patent protection is sought. This legal provision also imposes that the claims must be clear, concise as well...
- European patent lawEuropean patent lawEuropean patent law covers a wide range of legislations including national patent laws, the Strasbourg Convention of 1963, the European Patent Convention of 1973, and a number of European Union directives and regulations....
- Spider in the web doctrineSpider in the web doctrineThe spider in the web doctrine is a legal doctrine in Dutch law governing cross-border injunctions in patent infringement cases. Under this doctrine, the Dutch courts would assume jurisdiction only in cases where the main defendant was located in the Netherlands and where the other defendants...