Europe's patent judges call for improvements to Draft Agreement on Unified Patent Court

The IPJA's 1 November 2012 Resolution

Following in the footsteps of the Max Planck Institute and AIPPI, the Intellectual Property Judges Association (IPJA) has today published its conclusions on the proposed Unitary Patent and Unified Patent Court (to be posted here as soon as Google Documents starts working). The IPJA meets annually in Venice (nice work for some) and comprises of Patent Judges from 12 EU Member States.

The document sets out three key points which represented issues of the most concern to the judges.  These were: (1) arguing that Article 118 TFEU does not require that questions of patent infringement be EU law; (2) arguing that the Draft Agreement on the Unified Patent court should be improved and annexing amendments to the Draft Agreement to paper; and (3) proposing that a defendant should not be given the right to request a transfer of an infringement case from a regional division. The three conclusions, signed off on behalf of the IPJA by its President Sir Robin Jacob - who said that the amendments could "make all the difference between success and failure" - reads as follows:

1. That they are (save for 2 Judges) of the opinion that Art.118 of the TFEU does not require that questions of what acts amount to infringement of a patent should be matters of EU law. All that Art. 118 requires is that any IP right created pursuant to Art. 118 should have a unitary and uniform character.

2. That the Memorandum (copy annexed) identifying points for improvement of the draft agreement to the Unified Patent Court identified by the Court Rules Drafting Committee (whose members included French, German, and British judges) was seen by that Committee as uncontroversial. The Judges in Venice agreed both that the points are uncontroversial and that if incorporated in the ultimate agreement would result in very important improvements to it.

3. That although in the existing proposals there is no possibility for the defendant to request a transfer of an infringement case from a local division to the central division, there is not the same rule with regard to a regional division. Giving the defendant the right to request a transfer of an infringement case from a regional division would undermine the position of the regional divisions as competent divisions for infringement cases. It will cause unjustified delay or even completely deter claimants from bringing an infringement action before a regional division.

As regards to Resolution 2, the Annex sets out eight key amendments to the Draft Agreement following the deliberations of the Drafting Committee (of which, of course, includes a French, German and English patent judge). These include, but are not limited to, the following:

• Amending Article 15(a)(5) to ensure that it does not prevent a patentee or exclusive licensee from commencing an infringement action after 3 months following the commencement of declaratory proceedings in the Central Division.

• Adding in a new clause Article 34(a)(3) to provide a power to order compensation to a defendant when an order of the court is subsequently revoked owing to, for example, invalidation of a patent or the reversal of a decision by the Court of Appeal.

• Adding a new second sentence to Article 45(1a) to ensure that there is a general power to appeal procedural decisions with the leave of the Court of First Instance, or if such leave is refused, to provide for leave to the Court of Appeal.

• Adding a new Article - Article 14(j) - to address the issue of accessory liability which provides that where a third party commits an act of infringement another party shall be jointly liable with the first party for that act if, but only if, "that party procures the commission of the act in question or that party participates in a common design to commit the act in question".

• Adding reference to the power of the court to amend patents at a new sub-clause Article 15(1(c2)

• Clarifying Article 27(4) on patent proprietors being joined as a defendant should they not agree to be joined as a plaintiff in actions initiated by a licence holder. Patent proprietors in these cases shall not be obliged to take steps in the proceedings and if it does not take any steps, it will not be liable for costs.

The AmeriKat welcomes this resolution from IPJA and the concrete suggestions made by the judges to the Draft Agreement. In particular, she rejoices that there is a provision dealing with accessory liability (a lacuna that had been raised Mr. Justice Arnold in respect of the proposals) and the ability for the court to amend patents. She hopes that those in Brussels will take notice of the amendments proposed by this learned "interest group" when formulating the final version of the Draft Agreement. Further, she hopes that IPJA's comments as to the true construction of Article 118 TFEU will only support the current rumor that Articles 6 to 8 have indeed been deleted and replaced with an alternative provision.

Also today, the AmeriKat received news from Vicki Salmon (IP Asset) that the A-G's decision in the Italian and Spanish references on the use of the enhanced cooperation procedure will be delivered on 11 December 2012 .