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REPORT ON PROCEEDINGS

Ulrich JOOS - Lawyer, DG 5, International Legal Affairs - Fabienne GAUYE - Lawyer, DG 5, International Legal Affairs - Report on proceedings

From 15 to 17 September 2010, 120 patent judges from Europe and guests from the USA and Japan came together in the magnificent banqueting hall of the Portuguese supreme court in Lisbon to discuss the latest developments in patent law in Europe. They made use of this opportunity to compare their national approaches on a wide variety of topics.

I. The opening session was chaired by Eurico José Marques dos Reis, judge at Lisbon's appeal court. He gave the floor to Luís Noronha do Nascimento, president of the Portuguese supreme court, who welcomed the participants and said his court had 177 years of history to look back on.1Alberto Martins, Portugal's minister of justice, added his own welcome on the government's behalf, stressing that Portugal too regarded patent law and a sound judicial system for industrial property as essential for promoting innovation.2Benoît Battistelli, President of the European Patent Office, called for a unitary EU patent and a court to hear litigation on European and future EU patents, and assured participants that the EPO would do its utmost in support of those projects.3António Campinos, then head of the national industrial property institute (INPI Portugal) and now President of the OHIM, gave a speech of welcome in which he talked about the European initiatives and the dynamic development of industrial property in Portugal, reflecting intensified innovation activity there.4Peter Messerli, EPO vice-president in charge of Directorate-General 3 (Appeals) and chairman of the EPO's Enlarged Board of Appeal, reported on developments in the boards of appeal generally and the Enlarged Board's work over the previous two years.5

II. The first working session, also chaired by Eurico José Marques dos Reis, was on the future patent court system in Europe. Margot Fröhlinger, director of Directorate D ("Knowledge-based Economy") in the EU Commission's DG Internal Market and Services, gave a progress report on plans for the EU patent and a European and European Union Patents Court (EEUPC).6 Too little use was made of industrial property in Europe, and the whole debate about improving patent protection in Europe paid insufficient attention to the interests of innovative SMEs. On the plans for a European patent court to hear litigation on European and future EU patents, she stressed that indispensable elements included the court's independence from Court of Justice of the European Union structures, a decentralised first instance and uniform rules of procedure. The recently leaked opinion 1/09 drawn up by the Advocates General for the CJEU on the draft agreement for the EEUPC did highlight certain problems in connection with EU law, but it also pointed to possible solutions. What really counted though was the CJEU's opinion, expected towards the end of 2010; the CJEU was not bound by the Advocates General's position.

Ms Fröhlinger's report prompted a long and lively discussion, in which only one participant, from Denmark, called the EEUPC project into question, on the grounds that many attorneys' associations in Europe were critical of it. Patent agents in Germany and England might be in favour, but many in smaller countries feared for their livelihoods. Officially, Danish industry was in favour of a European litigation system, but SMEs were worried about it. Also, at least in some countries, any EEUPC agreement would have to overcome substantial constitutional hurdles; for example, some states required a referendum before any transfer of powers from national courts to a European one. Another participant, in contrast, regretted Europe's failure to appreciate what other major IP countries such as China and Japan were doing to improve their patent courts. The symposium did not devote much time to the structure of the planned European patent court. It regarded a decentralised first instance with an international judges' panel as a good thing. In this connection, the chairman said judges in some countries – like his own, Portugal – did not hear patent cases very often. But such judges too would belong to the pool of European patent judges; all they really lacked was experience – which however they would acquire through working with experienced patent judges.

Most contributions to the discussion centred on the Advocates General's opinion on the EEUPC draft agreement. There was general regret that it seemed to have been leaked early on purpose. Nor had the Advocates General's approach to the EU-law issues been conducive to a positive press reaction to the project.

Initially, the debate focused on the Advocates General's misgivings about the EEUPC draft agreement's compatibility with EU law. Their main objections were that

(1) the new court system did not adequately guarantee the primacy of EU law

(2) the legal remedies in case of failure to observe that primacy were insufficient – especially if, contrary to the draft agreement's Article 48, no preliminary ruling were sought from the Court of Justice of the EU.

(3) the language regime proposed for the central division of the Court of First Instance infringed rights to defence

(4) decisions by the EPO and its boards of appeal refusing or revoking EU patents lacked effective judicial controls to ensure that EU law was correctly applied.

Most participants thought objection (1) could easily be overcome: it had always been clear that the European patent court would have to comply with EU law – the primacy of which, after all, already had to be respected by any national judge. That applied in particular to the need to request preliminary rulings from the CJEU where necessary. The draft EEUPC agreement already contained a provision binding the court to directly applicable EU law; it could easily be fleshed out.

In patent litigation, said the chairman, time was of the essence. The reason for restricting right of appeal to the CJEU was not that its decisions were not good; it was because a surfeit of judicial instances would unduly lengthen the litigation process.

A Swiss participant was against referrals to the CJEU, not least with a view to procedural economy. A right of appeal to an institution forming part of a far more general, political organisation would be a move away from the idea of creating a patent-specific set-up. The Commission representative said the EU member states had no choice; their national courts were obliged to refer matters relating to the interpretation of EU law, and that obligation could not be circumvented by creating an international court. Another, less sceptical, Swiss participant thought it unlikely to be a problem for non-EU countries if the CJEU merely interpreted the EEUPC agreement. There was a precedent for that kind of parallel system, namely the Lugano Agreement, where non-EU countries accepted the CJEU's interpretation. But that kind of solution was possible for specific agreements only, not for EU law generally.

On objection (2) – legal remedies if the planned European patent court failed to comply with EU law – no clear opinion emerged.

The Advocates General saw three possibilities:

(1) Appeal to the CJEU by the parties, but only on legal issues. Participants countered that such appeals were not possible on European ("bundle") patents, and for EU patents they would lengthen the proceedings – the opposite of what was intended. They would also foist an unfeasibly large caseload onto the CJEU which did not specialise in patent law.

(2) EU Court of Justice review of the patent court's decisions – which however would be possible only within narrow limits.

(3) Appeal in the interest of the law, and open to the Commission and perhaps EU member states. That would avoid unduly lengthening the proceedings, because in practice such appeals would be very rare. But it could cause problems if a party wanted to challenge a decision, but the Commission nor a country would be prepared to exercise the right to appeal.

Many participants thought it would be better if the Commission could appeal to the CJEU and parties could claim damages from EEUPC member states. That would be in line with what happened now if national courts infringed EU law, and would not create any major practical problems. After all, the planned European patent court was something like a common national one. One participant added that if a national court infringed its referral obligations, the state concerned could be held liable. She thought this system could be transposed to European level, by providing for the EU to be liable. The Commission representative agreed that there would have to be sanctions. If referral obligations were infringed, private parties should be able to seek damages. The question was – from whom? The patent court itself, which would have legal personality? Its host country? Or perhaps all EEUPC contracting states collectively?

One judge felt that the European patent court should not have the same referral obligations to the CJEU as national courts. This new court would be a European one. The idea that it needed CJEU oversight seemed rather odd. EU legislation now permeated all areas of the law, and every national court had to apply it. EU law was no longer the exclusive preserve of the CJEU. That much faith in the future court was required.

Another participant said the Advocates General had thought referral to the CJEU for preliminary rulings would be enough. So clearly the CJEU would be dealing only with abstract points of law, and – unlike a court of cassation or appeal – would not have to apply provisions of patent law directly to specific cases.

Other contributions to the discussion concerned the extent of EU member-state courts' referral obligations. One view expressed was that not every EU-law issue had to be referred; national courts too could interpret and apply EU law. The CJEU's job was to ensure that European law was interpreted and understood in Europe as a whole. One possibility might be to limit referrals to cases in which higher courts took divergent decisions. With a European court charged with making sure that patent law was applied in a uniform manner, there was little risk of that. Referrals would then be confined to non-patent issues arising in other legal contexts. Such an approach might put patent lawyers' minds at rest. The Commission representative agreed; national courts already had considerable leeway regarding referrals to the CJEU. The Commission would consider suing a member state for treaty infringement only if it was in serious breach of its referral obligations.

That still meant clarifying which matters before the proposed European patent court concerned EU law and therefore might have to be referred to the CJEU. One judge thought that if the EU acceded to the EPC – which would then be part of EU law – it would be difficult to heed industry's calls for patent-law questions to be kept away from the CJEU. Another agreed: once the EU patent existed, all aspects of European patent law – including novelty, inventive step and industrial applicability – would become EU law.

But other participants were keen to draw demarcation lines. The judges would be familiar with patentability, claim-interpretation and infringement issues, and unlikely to refer them to the CJEU. Basic questions – patentability, scope of protection, non-patentable subject-matter – had always been considered EPC rather than EU law, and duly transposed into national law by all the EPC contracting states. But now, with the biotechnology directive, the EU was making inroads into EPC territory, and an advocate general and the CJEU could say how to interpret a claim if it was for a biotechnological invention. There was a danger of the CJEU deciding on matters that had become EU law through creeping expansion of the acquis communautaire. The only way to stop that was to specify (in the agreement or elsewhere) what was not EU but only EPC law.

The Commission representative said there would be only a single European higher patent court; that should ensure that European patent law was interpreted and applied uniformly by local and regional divisions. These days, many legal issues were referred to the Court of Justice of the EU for preliminary rulings, but they were usually about free movement of goods, services, capital and the like, i.e. interpretation of the EU treaties themselves. With secondary Community law, such rulings normally concerned the interpretation of directives. Both areas offered plenty of scope for uncertainty and opacity. However, with direct proper law like the EPC – which furthermore was interpreted and applied by a single court – there should be little need for CJEU referrals.

The general view was that objection (3) – the central division's language regime – could be overcome quite easily: rights of defence could be practicably ensured if translation facilities were available on request. Another view was that if a country neither had a local division nor belonged to a regional one, and instead wanted the EEUPC central division to act as its first instance, the central division could hear litigation from that country in its national language, unless both parties agreed on another one.

The Advocates General's objection (4) related to judicial control of board of appeal decisions; such decisions refusing or revoking EU patents could not be reviewed for correct application of EU law. One solution, it was felt, might be to allow appeal against them to the future European patent court, which could then review the decision or refer it to the CJEU. But others felt that two different legal systems – the EPC's and EU law – were involved. It would be hard for decisions taken under EU law to be binding on EPC contracting states which were not EU members. Solving that problem would not be easy.

One participant said the most important question requiring clarification in the CJEU opinion was whether the European patent court could be set up under an international agreement. The Advocates General had said it could. It would be consistent with that international-law approach for the EU too to become a contracting party to the EPC. The EPC's appeals system – notably the fact that EPO board of appeal decisions could not be challenged – would then apply to the boards' decisions on EU patents too; the EU had to accept the EPC's mechanisms as they stood.

Summing up, a participant said the European patent court project could succeed only if the EU member states shared the political will to create a European court for private litigation. The Commission representative agreed; clearly, political considerations lurked behind many of the legal objections raised. But if the CJEU gave the EEUPC the green light, that would no longer be possible. Also crucial however would be how the European patent litigation procedure was structured, because some of the Advocates General's proposed solutions were non-starters for practical or political reasons.

III. The second working session again concerned the future European patent court system. Chaired by Sophie Darbois, judge at the cour d'appel in Paris, it discussed the EEUPC's draft rules of procedure. This is not an EU document, but an unpublished working paper drawn up by a group of judges and still under discussion.

Klaus Grabinski, judge at Germany's Bundesgerichtshof (Federal Court of Justice), presented the first phase of EEUPC proceedings as envisaged in these rules of procedure – which might be European law one day. The written phase, conducted by the judge rapporteur, would start when the suit was filed. The suit should contain the pleas and relevant facts, especially about the alleged acts infringing the claims. It should also include all written evidence, and offer further testimony such as witnesses, expert reports and the like. So the idea was that the full case should be presented straight away. The defendant would have two months as from notification of the suit to raise any jurisdiction-related objections, and four months to respond to the suit. His response too should set out his complete case, including any counterclaim for revocation of the patent. The plaintiff would then have three months to react to the counterclaim, e.g. by filing amended claims and auxiliary requests. Last-minute amendments should not be admitted. Still missing from the draft was the plaintiff's right of reply to the defendant's response, and the defendant's right of reply to the plaintiff's request for amendments to the claims.

Robert van Peursem, judge at the district court in The Hague, gave a rundown of the second – interim – phase, i.e. active case management by the judge rapporteur. Following on from the written phase, this would involve summoning the parties to a case conference at which, once all arguments had been exchanged, a settlement might already be possible. The interim phase should not exceed two months, its purpose being efficient preparation of oral proceedings – always with proportionality in mind, which might also mean a further exchange of written submissions or requests to present evidence or clarifications. When it was over, the judge rapporteur would issue an invitation to oral proceedings and hand the case over to the presiding judge who would be conducting them. The judge rapporteur would have broad powers permitting effective case management. For example, he could extend the deadline for the defendant's response to the suit, if there was reason to do so. He could also decide whether jurisdiction-related objections were dealt with at once, submitted to the division or addressed in the main proceedings. The judge rapporteur or a party could refer any issue to the division, although initially the ruling of the judge rapporteur would still stand. In sum: case management under the draft EEUPC rules of procedure would be a tough job, for highly experienced patent judges.

Lord Justice Robin Jacob, judge at England's appeal court, added a little historical background. Plans for a European patent court could be traced back at least to a 1949 Council of Europe initiative. Subsequent plans too had foundered on the language issue (to which however pragmatic solutions existed) and especially on the failure of politicians and lawyers unfamiliar with the patent system to understand what industry wanted from it. In the late 1990s a group of judges had devised plans for a common patent court for EPC contracting states wishing to use it. This European Patent Litigation Agreement (EPLA) had then had taken a back seat to EU developments, which however had used it as a basis. In the end, a number of judges had met in Venice and set down the basic features of the new court's procedural law; these were reflected in the draft just presented.

Sir Robin then presented his talk, about oral proceedings. These, he said, should not normally last longer than one day, but there was flexibility when complex cases needed more time. It was crucial that the court laid down what would be discussed, and thus kept the proceedings firmly under control. It had to conduct them fairly, and allow factual evidence to be tested. English-style cross-examination took place only if there was a good reason, such as disagreement about how prior-use evidence or the skilled person's common general knowledge was to be assessed. Unlike in England today, oral proceedings should seldom be convened to resolve contradictory expert opinions; the latter's reasoning was more important than their conclusions. Surprise witnesses would not be admitted. If the oral proceedings were well prepared, adjournments should be the absolute exception. Other points included possible simultaneous interpreting needs, recording the proceedings, and issuing the reasoned written decision as soon as possible afterwards. Also crucial was the judge's ability to conduct the proceedings firmly. That required good preparation – and well-trained patent attorneys.

Concluding, Eurico José Marques dos Reis explained the proposed rules for injunctions. Under Article 37 of the draft agreement on the EEUPC, that meant, in particular, injunctions granted against alleged infringers or third parties whose intermediary services they used, orders for the seizure or surrender of goods suspected of infringing the patent, and precautionary seizure of the alleged infringer's movable and immovable property – including blocking his bank accounts in case of danger of non-recovery of damages.

Under the EEUPC's draft rules of procedure, the party seeking the injunction had to file a request with the same content as the suit already (or about to be) filed, describing it exactly and showing that the injunction was necessary to prevent imminent or continuing infringement. If the injunction was sought inaudita altera parte, he had to say why. He also had to request it within reasonable time after learning of the act in question, and pay a fee. A party fearing that an injunction was about to be sought against him could file a protective letter with the court which is to be recorded in the court's register. The court would delete the entry if, after three months, no injunction had in fact been sought.

Mr Eurico José Marques dos Reis added that injunction requests were normally decided by individual judges, to expedite the proceedings. The court had discretion over informing the party against whom the injunction was sought, asking him to respond, convening oral proceedings with the requester alone or both parties, and issuing a decision straight away. In the exercise of that discretion, the case's urgency was a decisive factor. The court could also ask the parties to submit additional evidence before or during oral proceedings, to help it assess the likelihood that the patent was valid or being infringed. Injunction decisions always had to weigh up the parties' interests, and consider the potential harm for either party arising from granting or refusing the injunction. At the respondent's request, any injunction had to be set aside if the requester had not started the main proceedings within 31 days. First-instance decisions were reviewable on appeal.

In the discussion, there was some criticism that the court contacted the parties' representatives direct only in the interim phase; it might be useful to telephone them much sooner, e.g. after the first exchange of pleadings, or indeed to plan early oral proceedings. The presenters explained that the judge rapporteur, as part of his case management, could easily contact the parties during the preceding written phase if that seemed worthwhile.

Another worry was that parties could try to drag the proceedings out by seeking review of judge rapporteurs' decisions. Those decisions would carry more weight if the judge rapporteurs were supported by technical experts in the interim phase; they would then have a broader basis, and review by the division would no longer be necessary. It would be better if judge rapporteurs had to give leave to go to the appeal court – either direct or only together with the final decision. However, the authors of the EEUPC draft rules of procedure thought a judge rapporteur's decision should be reviewed by the division, not the appeal court; when he thought it necessary, he could draw on a technical expert from the pool of judges, discuss issues informally with his colleagues on the division or refer the matter to the division.

The next question was whether the court or judge rapporteur had to inform the parties of their provisional assessment of the case. The presenters said thought could certainly be given to making provision for that in the draft; however, any such communication should be issued by the division rather than an individual judge. The arrangements could be modelled on the rules of procedure of Germany's Bundespatentgericht (Federal Patents Court) and the EPO boards of appeal.

Lastly, the presenters said that evidence submitted late should be admitted if a party could convincingly show that he could not have presented it earlier. As for announcing the decision, some participants pointed out that under German procedural law – and before the EPO boards of appeal – this normally occurred at the end of the oral proceedings, with the written grounds following in due course.

IV. A session chaired by Boleslaw Bialkowicz of the Polish Patent Office's Judicial Affairs Department was devoted to exceptions to patentability, with particular reference to the medical field.7

Sylvie Mandel, a judge at France's cour de cassation, reviewed French case law on Article 53(c) EPC's exclusion from patentability of methods for treatment of the human or animal body by surgery or therapy and diagnostic methods practised on the human or animal body. Brigitte Günzel, chairwoman of the EPO's Legal Board of Appeal, focused on two recent Enlarged Board decisions, one on the notion of surgical methods within the meaning of Article 53(c) EPC,8 the other on the patentability of new dosage regimes for known medicaments, as further medical indications under Article 54(5) EPC.9Peter Meier-Beck, presiding judge at Germany's Federal Court of Justice (FCJ), looked at issues surrounding the patenting of human stem cells which his court had referred to the CJEU for a preliminary ruling10 and concluded with remarks on the patentability of second and further medical indications.

In the debate, Ms Günzel countered criticism of the patentability of new dosage regimes, making it clear that a purely verbal alteration of the dosage regime was not sufficient to make a further medical indication patentable. What mattered was that the change in dosage or in the form of administration had a different physiological impact on the patient, thereby producing a different technical effect. New dosage recommendations might have benefits such as avoiding side-effects or using lower amounts of the active ingredient. In the case at issue, the instruction "to be taken prior to sleep" sounded trivial, but was based on knowledge of liver metabolism according to which the active substance had a less toxic effect on the liver at night. Such an invention could be just as valuable as the use of a known medicament to treat a disease to which it had not previously been applied.

One participant raised the issue of how the infringement of a claim to a new dosage regime could be identified, maintaining that it would depend on how the preparation was produced, i.e. on whether the new dosage was recommended by the maker, e.g. in the patient information leaflet. There was nothing to prevent a doctor prescribing an old product already on the market containing the substance in question and recommending taking it in accordance with the new dosage regime.

V. A further session, chaired by Tomas Norström, a judge at the Stockholm City Court, was devoted to the patentability of computer-implemented inventions.11Dai Rees, chairman of an EPO technical board of appeal, began by outlining problems with the exclusion of computer programs from patentability. He went on to explain the process by which the Enlarged Board had arrived at the conclusion that the EPO President's referral of related questions under Article 112(1)(b) EPC was inadmissible.12Randall R. Rader, Chief Judge at the US Court of Appeals for the Federal Circuit (CAFC), reported on the recent US Supreme Court decision in re Bilski.13 The Supreme Court had considered the CAFC's machine-or-transformation test for distinguishing between abstract ideas and patentable matter to be a useful tool in many cases, but held the definition of the notion "abstract" to be the key.

One issue raised in the debate was whether the exclusion of programs for data processing systems as such might end up lacking much substance, firstly because a claim was not new and inventive simply because it was implemented by a computer program, and secondly because of the need to disregard everything which was excluded on other grounds, e.g. as a business method. What test then was to be applied by a judge wishing to follow the EPO approach? Mr Rees replied that the emphasis should not be placed on exclusion; the EPO was trying to get away from that way of thinking. Admittedly, in a case like Bilski the EPO would probably regard the claim as directed to subject-matter not patentable under Article 52(2) EPC. Yet if for example an administrative procedure was run on a computer, that had nothing to do with exclusions from patentability, but was clearly part of general development and therefore not inventive. The exclusion provision was present in the EPC and had a specific meaning in the legislator's intention; but it played little part in everyday practice, as in computer-implemented process control even applicants did not consider implementation on a computer to be inventive.

Another participant referred to an old UK decision not to grant a patent for the pocket calculator claimed because what the applicant had actually invented, in the Court of Appeal's view,14 was a better algorithm to ascertain square roots. He asked whether, in the light of the current EPO approach, the technical contribution to the manufacture of a better calculator could be recognised. Mr Rees thought that was possible, but warned that the assessment of algorithms raised awkward questions. A judge added that in a recent UK case a patent had been granted because the algorithm made the computer faster. Nowadays it was difficult to know how to apply EPC exclusion provisions dating from the early days of electronic data processing.

From a UK viewpoint the Bilski claim was characterised as an attempt to acquire an undue monopoly on methods of hedging risks; but the claim was too broad or lacked sufficient disclosure. Judge Rader was therefore asked what was abstract about the claim. He conceded that the question was justified; but the jurisprudence that had developed in this field of law gave greater weight to the form of the claim than to its substance. As the exclusion of certain subject-matter was involved, there was no need to define "abstract" if that subject-matter was understandable, concrete and in some way useful; it was more important to establish whether it was anticipated in the prior art. However, if the term "abstract" was the determining factor in a decision, an effort had to be made to draw boundaries. It was easiest to define "abstract" as something which was so vague that it proved impossible to identify any searchable prior art.

A participant summed up that rather than spend time trying to define what constituted an abstract idea or excluded subject-matter, it was more helpful, wherever possible, to decide a case on the basis of whether an inventive step was involved.

VI. Pieter-Paul Bracke, chairman of an EPO technical board of appeal, chaired a session looking at the part played by intention in patent claims.15Dieter Brändle, alternate higher judge at the Zurich Canton Commercial Court and President-designate of the Swiss Federal Patent Court, looked at whether – and, if so, where – subjective elements needed to be taken into account in patent law, starting from the premise that a patent is a declaration of intent in which the applicant indicates the technical teaching that he wants to have protected. He touched on issues such as whose intent matters, the applicant's or the inventor's; what part declarations of intent play in the grant procedure; and according to whose understanding a claim or description is to be interpreted. Rainer Moufang, a legally qualified member of the EPO boards of appeal, talked about the significance of use and purpose indications in patent claims. Christopher Floyd, a judge at the Patents Court in London, reported on how claims to newly discovered uses of a known substance had been viewed by English courts before the EPC entered into force and in the recent past, and considered how claims to such inventions could be better formulated.

In the debate, one judge concurred with Mr Moufang and confirmed that in Germany a claim to a device for a particular purpose had as a rule to be construed such that the device was suitable for a particular purpose, and that this suitability might have an impact on the spatial and physical form of the subject-matter because for that purpose it might for example have to be of a particular size. Another judge reported that in Germany the infringement of a use claim was assessed on whether the product was (also) prepared for the patented use, e.g. in the form of indications of that use in operating instructions; such indications could be an objective distinguishing feature. With a claim to the use of a process already known as such for a new purpose, patent infringement could in practice be more or less only indirect, with somebody making a product that could be used in the process to achieve the desired new purpose and explicitly noting in the operating instructions that the new purpose of the process could be achieved. Unlike a use claim to a product whose suitability for the new purpose was manifest for example from indications in the operating instructions, in a claim to a new use of a process it was hard to conceive of such an objectively identifiable manifestation of the new use. Presumed infringers could always say they were using the process only for the long-known purpose. On the German side there were also doubts about the Enlarged Board's Mobil decision,16 because a patent could not be granted for the mere discovery that subject-matter used in the same technical context in the now-traditional fashion produced a hitherto unknown effect, as there were then no objective ways of making a distinction for infringement purposes; so it would be up to the user to decide which effect he intended to achieve (inevitably also achieving the other effect at the same time).

Another participant saw use claims as offering a desirable and meaningful incentive to search for other potential uses of known substances. Yet another raised the issue of whether it was appropriate to grant a patent to someone who discovered a function of a naturally occurring protein whose existence was known and which could be isolated from its natural environment, but whose function had not previously been known, if that patent extended to all functions of the protein, even those that became known subsequently. This participant referred to the CJEU's Monsanto decision,17 according to which a product claim too had to be construed as being limited to the function disclosed by the patent proprietor, and he asked if this principle should be applied more broadly to naturally occurring proteins and nucleic acids and if such a limitation ought to be expressly incorporated into the claim in the grant procedure. While there was support for this view in the auditorium, Mr Moufang explained that no such scope limitation had been provided for when the EU biotech directive had been integrated into the EPC implementing regulations, but a provision to that effect had been added to German and Swiss patent law. This situation might result in a European patent being interpreted quite differently from country to country. Apart from that, it was occasionally difficult to identify exactly the function disclosed by the applicant, e.g. whether the invention related to the fight against cancer in general or only a particular type of cancer.

Someone else commented that this issue was not limited to the biotech field; the principle of absolute substance protection for all new chemical compounds had gradually developed over the previous century. Today there were problems with that principle, and they needed to be resolved; but the solution was unlikely to lie in limiting the claim on the basis of various potential uses which could not be precisely defined. Another participant countered that this comment concerned a completely different case: someone who made a new chemical compound or a new machine enriched the state of the art by those objects and by the described potential uses; but in the case of naturally occurring substances whose existence was known, the only contribution to the state of the art was the identified new use. There was room here for development of the law and a more precise definition of the inventive contribution in the claim.

VII. The second day closed with the case study, "Folding attic stairway".18João Bernardo, Juiz-Conselheiro at the Portuguese Supreme Court, chaired the start and end of the session. Ulrich Joos, an EPO lawyer, and Dieter Stauder, professor emeritus at the Robert Schuman University in Strasbourg, introduced the case before it was discussed by separate breakout groups of English, French and German speakers. At the end of the session the solutions arrived at in the groups were presented to the plenary.

Robin Jacob reported on discussions in the English-speaking group, which held the patent to be invalid, but if valid to have been infringed. The interpretation of two claim features was considered important. The first was "ceiling opening of a predetermined size", which presumably simply meant "ceiling opening into which the attic ladder has to fit". The second relevant feature, "such that each side beam [...] is spaced a preset distance inwardly", was more of a problem. What did "preset" mean? By whom was the distance preset? It could be inferred from the description that it was really a question of avoiding undue stress on the support-arm pivots.

The group's conclusion with regard to novelty was that the photo showed nothing and was therefore non-prejudicial. As to the invention's accessibility to the minister and the photographer, opinions had been divided: did it matter whether the minister or the photographer could understand the construction because they had knowledge of the subject? Legally speaking, the construction had to be regarded as anticipated; but that did not clarify whether the claimed manufacturing process too was anticipated. That had meant deciding whether the claim was to be construed such that the claimed process steps could only be carried out in the given sequence or such that some other (technically conceivable) sequence was also possible. The decision had gone in favour of the second alternative. The manufacturing process had been anticipated by being made accessible to the minister and the photographer and in private houses, as anyone with the relevant expertise could now copy the stairway.

With regard to inventive step, some had taken the view that the improvement of the clearly poor prior-art construction had been an obvious solution.

The first objection to the infringement action, i.e. that the infringer did not specify the size of the ceiling opening, was dismissed as immaterial on the basis of the above-mentioned interpretation of the claim. Nor was the group convinced by the second objection, namely that it was mere coincidence that the infringer had chosen the same spacing between outer and inner frame as the plaintiff so as to be able to use his widest ladder.

The group had noted a contradiction in the defendant's arguments regarding his objections to the validity of the patent on the one hand and to the infringement action on the other. With regard to infringement he denied any meaning to the presence of certain dimensions, yet held the same characteristics to be relevant to the attack on the patent's validity; in other words, he relied on a narrow interpretation to escape the infringement allegation and on a somewhat broader one in relation to invalidity.

Irmgard Griss, President of the Austrian Supreme Court, presented the German-speaking group's solution. It too had denied novelty but held the patent to have been infringed if valid. The majority though had upheld inventive step. Prejudicial disclosure within the meaning of Article 54(1) EPC could not be inferred from the photo of the minister, but could arise from the stairway's installation in private houses: the possibility to inspect the design details was sufficient; it was immaterial whether anyone had actually done so.

On inventive step the group had taken the view that given the state of the art the attic stairway was a largely satisfactory solution, with malfunctions occurring only in specific circumstances. The problem of stress on the support arms when heavily bent was held to be self-evident, but the majority did not find the solution obvious.

Infringement of claim 1 had been upheld. With regard to infringement of claim 6 it had been considered that claim 1 as interpreted by the German-speaking group left the sequence of process steps open, in which case there was no need for claim 6. Yet if claim 1 were to be construed as defining a fixed sequence for the process steps, claim 6 could be construed as a product claim covering any manufacturing process.

Bernard Corboz, a judge at the Swiss Federal Court, summarised the findings of the French-speaking group. Publication of the photograph had not been prejudicial to novelty. The minister and the photographer had come into direct contact with the prototype attic stairway, but not being specialists they would have been unable to identify the manufacturing process. The photo itself did not give enough information to enable the invention to be carried out. With regard to the mounting of the stairway, the question was whether it was supplied preassembled or was assembled on site, as the latter would have made it easier to understand the nature of the invention. With regard to the plaintiff's employees who performed the installation, the French-speaking group assumed them to be under an obligation to maintain secrecy. Regarding claim 1 it took the view that the installation of a preassembled stairway did not disclose the process for its production in a factory. Regarding product claim 6, opinions were divided as to whether installation in private houses made the stairway accessible in principle to everyone, e.g. guests of the house owner, or whether this situation differed from that of a book placed in a public library. After all, not everyone had access to private houses.

In its assessment of inventive step the French-speaking group had followed the positive opinion of its technically qualified member. In a real case the parties would have been able to submit further arguments in the form of expert opinions; but here there was no reason to doubt the judgment of the group's expert.

The plaintiff's patent was deemed to be infringed by the manufacture and sale of attic stairways of the same design; the defendant's objections were held to be irrelevant. Claim 6, directed to the stairway itself, was construed as covering only attic stairways manufactured according to the process as per claim 1 but not stairways manufactured in other ways. Hence there was deemed to be no significant difference between the (confirmed) infringement of claim 1 and the issue of the infringement of claim 6.

Before Ulrich Joos briefly summarised the UK decision19 underlying the case study, Dieter Stauder offered a few personal reflections on the case. This was a small invention from a small company, and the purchasers of the stairway were ordinary people looking to pay as little as possible for something usable – that, if you like, was the social background to the case. The legal crux of the novelty issue was whether looking at the photo or inspecting the stairway could provide insight into the essence of the process and the benefits of standardising essential components. Probably not. The stairway's installation in private houses showed the rigidity of the concept of absolute novelty, which militated against the understandable desire to try out new designs in practice first. It also occasionally went counter to a sense of natural justice to find that prior art discovered at the ends of the earth and never seen by a skilled person was suddenly prejudicial to novelty or inventive step; but our patent law was the way it was, and no judge could introduce a grace period for novelty, which might have been helpful in the case of the attic stairway.

VIII. The final working session, chaired by Johannes Karcher, was divided into two parts. The first was devoted to developments in national patent law and the second to recent national case law.20

Tobias Bremi briefly presented an important development in the Swiss patent court system: the newly established Federal Patent Court. At present, the country's federal system meant that each of the 26 Swiss cantons had a court with jurisdiction in patent matters and applied its own civil-procedure law to such litigation. But 60% of the, on average, 30 to 40 patent cases a year were dealt with by four commercial courts, which, owing to a shortage of technically qualified judges among their members, tended to rely on the help of experts. Since this was not conducive to an efficient conduct of proceedings or consistency in the case law, the system had long been the subject of criticism.

A recent reform of the judicial system had removed some of the constitutional obstacles and so made it possible to set up a Federal Patent Court. This court would have sole jurisdiction to hear patent revocation and infringement cases and actions for the granting of licences, as well as to order interim measures and enforce its decisions. The court's executive comprised two full-time judges: Dieter Brändle, as legally qualified President, and Mr Bremi himself, as technically qualified judge. They would be joined by around 20 technically qualified and 10 legally qualified judges, elected to sit as part-time members to be called upon on a case-by-case basis. Switzerland, therefore, would soon have just one national court of first instance with jurisdiction for patent litigation, namely the Federal Patent Court, and only one court of appeal, the Federal Supreme Court. This would shorten the judicial review process, making it possible to obtain a timely final ruling. The new court would sit in St. Gallen and was expected to begin work on 1 January 2012.

Richard Arnold reported on changes being made at the Patents County Court, which had been set up about 20 years before to handle straightforward, lower-value actions but had unfortunately not met expectations. A number of reforms had therefore been proposed with a view to making the system both more efficient and cheaper. These included a radical judicial and procedural reform inspired by the rules of procedure in the draft EEUPC agreement. Damages would be limited to GBP 500 000, and the successful party's (currently unlimited) recoverable costs capped at GBP 50 000, which would give defendants certainty from the outset that their risk would remain small. Also, the procedure would be radically simplified, with the parties' arguments being for the most part submitted in writing. The proposed reforms would therefore result in the creation of a truly separate jurisdiction for low-value patent cases.

Sylvie Mandel reported that, since the beginning of 2010, the Paris Court of First Instance and the Paris Court of Appeal had had sole jurisdiction in patent matters. The time taken to settle cases was about 15 months or, for Court of Appeal proceedings, a year.

Ulrika Stenback Gustavson informed the participants that several amendments to the Swedish Civil Procedure Code had entered into force in November 2008. In particular, all appeals in civil patent actions now had to be approved as admissible by the Court of Appeal. In Sweden, only the Stockholm City Court heard patent cases.

Raimund Lutz stressed that while work on setting up the future EEUPC dominated current debate, it should not be forgotten that, for now, the national courts were still responsible for handling patent litigation in Europe. Even if the new European court were set up immediately, it would definitely take another 10 to 15 years for the first case to come before it. Until then, the national courts would continue their work and it was important to optimise their operation. The German parliament had therefore passed legislation on the modernisation of patent law whereby the procedural rules applicable to patent revocation cases before the Federal Patent Court and the Federal Court of Justice had been improved so that evidence had to be taken for the most part before the Federal Patent Court, thus reducing the Federal Court of Justice's workload. This legislation, which had entered into force on 1 October 2009, also required the Federal Patent Court to issue the parties with its provisional opinion prior to the hearing. This would give the parties an overview of all the pleas submitted and, at the same time, help to speed up proceedings.

Ari Wiren reported that Finland had made a change to its law, similar to that introduced in Sweden in 2008, whereby the admissibility of appeals in patent cases was now subject to the approval of the Court of Appeal. The most important development, however, was that infringement and revocation cases were now to be handled jointly.

In the second part of the working session, a number of national judges reported on recent judgments of their country's courts. Full versions of most of their papers are published on page 149 onwards of this OJ special edition, but the following briefly summarises some of the key points made.

David Kitchin, reporting on developments in the United Kingdom, presented the Court of Appeal's Virgin Atlantic v Premium Aircraft judgment dealing with the question what order a national court had to make where it had finally determined that the national designation of a European patent was valid, but there was an outstanding appeal to an EPO technical board of appeal. The court had also had to consider two particular issues: first, what approach had be adopted in relation to the claim for an injunction and, second, what had be done in relation to the claim for damages?

As far as the injunction was concerned, the court ruled that the claimant had established his right and that only a very strong case could persuade it to withhold an injunction, even if it was aware that the EPO board of appeal might revoke the patent. As far as damages were concerned, the court found that it was bound by the case law that, where issues of validity and infringement had been finally determined in the national court, the matter was res judicata between the parties. If the patent was subsequently revoked by the EPO, that affected the future, in that any injunction would lapse. But the entitlement to damages remained.

The difficulty arising here was whether it was fair to award the claimant damages for continued infringement during the period after the Court of Appeal's decision until revocation by the EPO, given that, if the patent was revoked, it was deemed invalid ab initio.

Peter Messerli observed in this connection that the EPO boards of appeal lacked the means to check whether actions were pending before national courts, but that the courts concerned could ask them to accelerate the EPO proceedings. The boards of appeal were quite prepared to entertain such requests.

Rian Kalden, from the Netherlands, reported on three of the roughly 100 cases dealt with by The Hague District Court in 2010.

In Solvay S.A. v Honeywell, the court had found that, where different courts had to decide in a case of cross-border infringement of the same (foreign) patents by two parties subject to different jurisdictions (NL and BE), there was a risk of conflicting decisions on the infringement of the same patent by the same product. The question how to interpret the requirement of "irreconcilable judgments" within the meaning of Article 6(1) of the Brussels Regulation thus arose and had to be referred to the CJEU. The court had also found that there was likewise uncertainty as to the correct interpretation of Article 22(4) of the Brussels Regulation and had decided to refer questions to the CJEU on this point too.

The second case, Mundipharma Pharmaceuticals v Sandoz, had concerned the admissibility of disclaimers. The patent in suit, which related to formulations for the controlled release of oxycodone to relieve pain, had resulted from a divisional application. The parent application had claimed a controlled-release acrylic resin matrix as the preferred embodiment. To distinguish it from the parent application and prevent double patenting, the patent in suit contained a claim covering a controlled-release dosage matrix other than an acrylic resin matrix. The defendant had disputed the validity of that claim on the basis that it constituted added matter, arguing that the disclaimer as such had not been disclosed in the application as filed and therefore had to be regarded as an undisclosed disclaimer within the meaning of the EPO Enlarged Board decision in G 1/03,21 since the avoidance of double patenting was not one of the criteria for allowing disclaimers listed in that decision.

The court held that the disclaimer could be regarded as "undisclosed" within the meaning of G 1/03 only if there was no basis in the original application for either the disclaimer or its subject-matter, or in other words only if the subject-matter of the disclaimer was neither positively nor negatively disclosed in the original application.

In the third case, Philips v SK Kassetten/FRAND, the court held that the defendant, SK Kassetten, had infringed several essential patents of the plaintiff, Philips, relating to CD and DVD technology included in the Orange Book standard. It found that, so long as SK Kassetten had no licence, there was no legal ground to allow it to use the patented technology or to deny Philips the right to enforce its patents. As a general rule, the patentee's consent was required for the grant of a FRAND licence. SK Kassetten ought therefore to have requested a FRAND licence before starting to use the technology.

Massimo Scuffi, reporting on the situation in Italy, presented a judgment given by the Turin Court of Appeal on 4 December 2008 in which it had partly revoked a European patent of Mars, Inc. for a process for preparing quick-cooking or instant rice. In the case in question, it had been discovered that the "deformation" of the structure of a grain of rice - necessary to create holes which allowed faster absorption of the water and so faster cooking - had already been achieved independently during the "grinding phase", so that the phase of "light compression" of the grains typical of the prior art had become unnecessary. The Turin court found that this was not an inventive step but merely a non-patentable discovery because no "rule of construction" had been added except for the obvious and trivial rule that what was found to be unnecessary could always be omitted.

Sophie Darbois, from France, outlined the judgment given by the Paris Court of Appeal in SA TREVES v SA RENAULT, SILAC and SIMOLDES PLASTICOS on 2 July 2010. TREVES, a company designing, producing and marketing products for the automobile industry, had a French patent and a European patent for the same invention which claimed the priority of the French application and designated France. TREVES had not paid the first renewal fee due in France for the French part of its European patent, which led the director of INPI to declare it forfeited. TREVES had then discovered that competitors were producing materials for fitting out Renault Clio cars which, it maintained, copied the claims of its French patent, and so it had brought an infringement action against them. The court had to decide, first of all, whether the French patent had continued to have effect despite substitution of the European patent designating France and the forfeiture of rights relating to its French part owing to non-payment of the renewal fee; and secondly, when the forfeiture had taken effect. It held that the European patent had substituted the French patent before the declaration of forfeiture of the French part of the European patent and that, therefore, TREVES could no longer assert rights to its French patent.

As the last working session drew to a close, the participants listened with interest to a presentation by the Director of the Centre of Judicial Studies, Ana Luisa Geraldes, on the activities of the centre, which was set up in 2008, mainly to provide training for judges. It then fell to José Magalhães, the Portuguese Secretary of State for Justice and Judicial Reform, to close the 15th European Patent Judges' Symposium. He stressed the importance of the event for Portugal in view of the positive impact it would undoubtedly have not only on the process of modernising the country's patent law, but also on the plans to set up a specialised national patent court. He also thanked and congratulated the symposium organisers.

On behalf of the European judges, their most senior colleague, Pierre Gehlen, warmly thanked the Portuguese hosts for their cordial hospitality and the marvellous job they had done in organising the symposium, as well as the EPO for its support in staging the event, and the interpreters.