REPORT ON PROCEEDINGS
Stefan LUGINBÜHL - Lawyer, International Legal Affairs, PCT, DG 5 - Report on proceedings
From 5 to 7 September 2012, members of the EPO boards of appeal and serving and former judges from 27 EPC contracting and extension states, China and Japan, numbering 85 in total, gathered in Dublin Castle for the 16th European Patent Judges' Symposium, the latest in a now long-established series of meetings to discuss the latest developments in patent law.
Indeed, this year, the attendees were able to look back on 30 years of the Judges' Symposium. The inaugural event, held in Munich in 1982, had as its theme "Problems connected with European patent law", and the topics addressed ranged from the interpretation and application of European patent law to issues of procedural law. Above all, however, the aim was to intensify judicial co-operation in Europe by providing national patent judges and members of the EPO boards of appeal with an opportunity to meet and exchange their views and experiences. It remains as important to do so today as it was back then.
This year's symposium was devoted to the plans to create a European patent jurisdiction and the bifurcation system as applied in various EPC contracting states, as well as to topics such as injunctions, disclaimers and biotechnological inventions.
To round off the programme, the attendees were also introduced to some traditional culture, including the Irish dance, harp music and song accompanying the dinners held in the unforgettable surroundings of Dublin Castle and the Royal Hospital Kilmainham.
I. As befitted the occasion, the symposium, which was chaired by the Hon. Mr Justice Roderick Murphy, judge at the High Court of Ireland, opened with welcome addresses from the Hon. Mrs Justice Susan Denham, Chief Justice of Ireland, Richard Bruton, Irish Minister for Jobs, Enterprise and Innovation, Benoît Battistelli, President of the EPO, (represented by Wim van der Eijk) and Dermot Doyle, Controller of Patents, Trade Marks and Designs at the Irish Patents Office.
Wim van der Eijk, Vice-President DG 3 and Chairman of the EPO's Enlarged Board of Appeal, first of all spoke about the boards' increasing workload and how it could be tackled. He then set out his plans to achieve greater harmonisation in the boards' case law and keep the public as well informed as possible of the decisions taken by the boards and the national courts. He also commented on the boards' relationship with the future "Unified Patent Court" for the EU member states, while stressing the importance of co-operation between the board members and national judges and confirming that national judges would continue in future to sit as external members on the Enlarged Board of Appeal.
II. The first working session was devoted to the future Unified Patent Court and directly associated topics. With the Hon. Mrs Justice Fidelma Macken, former judge at the Irish Supreme Court and the European Court of Justice, acting as chair, Margot Fröhlinger, Principal Director Patent Law and International Affairs at the EPO, reported on the latest developments in this area, focusing especially on the transitional rules on parallel jurisdiction of the national courts and the Unified Patent Court, which would allow the new system to be set up progressively. She then highlighted the plans for the future patent judges to undergo training, including the language courses needed to ensure that they would eventually be in a position to conduct proceedings in a language other than their mother tongue. Finally, she hoped that the package of measures relating to the unitary patent, including the planned agreement on the new court, would be adopted very soon.
The Hon. Mr Justice Peter Charleton, judge at the High Court of Ireland, then took over as chair and introduced three talks on the patent litigation systems in Germany, Romania and the Czech Republic, respectively. The "bifurcation principle" was inherent to all three systems, meaning that patent infringement and patent validity were dealt with by different courts or quasi-judicial authorities. Thomas Kühnen, presiding judge at Düsseldorf Higher Regional Court, presented the German system, explaining that the courts of ordinary jurisdiction (regional courts, higher regional courts and the Federal Court of Justice) dealt with infringement cases, whereas validity was examined by the German Patent and Trade Mark Office and, as court of first instance, the Federal Patent Court, with the Federal Court of Justice again acting as final instance. He then addressed the main problems associated with the bifurcation principle, namely the need to take account of invalidity in infringement cases and the risk of diverging patent interpretations. He explained the practice of staying infringement proceedings and the procedures for obtaining interim relief in the event of simultaneous revocation proceedings. He finished with a presentation of some German decisions addressing the implications of diverging interpretations of patent claims in infringement and revocation proceedings.
Mihaela Paraschiv, judge at Bucharest Court of Appeal, began by setting out the legal bases for the bifurcation principle in Romania. She explained that a request for patent revocation could be filed with the boards of appeal of the State Office for Inventions and Trademarks within six months of grant. She then briefly described the courts having jurisdiction to hear patent infringement and validity cases at first and second instance. While Bucharest District Court had exclusive jurisdiction to hear revocation actions at first instance, infringement cases were heard by either the district court having jurisdiction at the defendant's place of business or that at the place of infringement. On the issue of staying infringement proceedings where an action relating to validity was pending, she explained that the court hearing the infringement case was not compelled to take such a measure.
Completing this overview of different litigation systems, Hana Pipková, judge at Prague Court of Appeal, presented the scheme of split proceedings applied in the Czech Republic. Her court had exclusive jurisdiction to hear patent cases. While its Administrative Division dealt with revocation, limitation and appeal cases, the Commercial Division was responsible for infringement cases. The former's judgments could only be challenged by an extraordinary appeal, whereas the latter's could be contested by ordinary appeal to Prague Higher Court and then, provided the legal conditions were met, an appeal on a point of law to the Supreme Court.
Chaired by the Hon. Mr Justice Frank Clarke, judge at the Irish Supreme Court, the second part of the working session was on practices with regard to granting injunctions in common law and continental European jurisdictions.
The first speaker was Paul Gallagher, Senior Counsel and former Attorney General of Ireland, who presented the common law approach adopted in Irish and British practice and, using Germany and France as examples, the approach taken in continental systems. He set out the relevant principles as developed by the courts over the years and elaborated on the differences in approach, as well as explaining national peculiarities such as the French saisie contrefaçon and the pre-action defence procedure available in Germany.
Alice Pézard, judge at the Court of Cassation in Paris, then took a closer look at the French practice, explaining that a permanent injunction was subject to two conditions: first, the infringement had to be serious and, second, the patent proprietor had to bring the infringement action promptly. She then gave a brief account of the conditions for granting an interim injunction in France and the restrictions on such grants, mentioning, in particular, the security payable by claimants in case it transpired that they had wrongfully sued the defendant. She ended with a look at compulsory licensing and "patent trolls".
The first working session closed with an overview from Marina Tavassi, President of the IP Section of Milan Tribunal, of Italian practice as regards the grant of injunctions. She began by presenting the recent court reform in Italy, explaining that, with effect from September 2012, the number of courts hearing patent cases had increased to 21 at both first and second instance and that their geographical distribution had been improved. She then moved on to the requirements for granting injunctions and the principles developed by the Italian courts, focusing particularly on measures for obtaining evidence. Lastly, she briefly addressed the provisions on injunctive relief envisaged for the future Unified Patent Court.
III. The second working session was on disclaimers and the latest case law on biotechnological inventions. Expertly chaired by Kathrin Klett, President of I Civil Division of the Swiss Federal Court in Lausanne, it began with a historical introduction to the topic by Colin Birss, judge at the Patents County Court in London. He explained the idea behind disclaimers, i.e. to alter claims by inserting technical features which exclude certain embodiments or aspects, and spoke not only about the problems they solve but also those they can cause. Ari Wirén, judge at Helsinki Regional Court, thought that, in the interests of a uniform interpretation of the law, the national courts of the EPC contracting states should follow the case law of the Enlarged Board of Appeal, adding that, even though judgments rendered by national patent courts were not binding on the EPO boards of appeal, both they and the patent courts of other countries should heed the reasons for their decisions. "Freedom of movement" for decisions would help to harmonise case law, so the availability of accurate information on European patent cases was important. Finally, he explained the background to cases G 1/03, G 2/03 and G 2/10, before handing over to Brigitte Günzel, who, as Chairwoman of the EPO's Legal Board of Appeal and legally qualified member of its Enlarged Board of Appeal, was able to present first-hand the findings reached in these decisions as to the admissibility of disclaimers.
III. The third working session, chaired by Michael Fysh, former judge of the Patents County Court in London, explored recent case law on patenting biotechnological inventions. Friedrich Feuerlein, presiding judge at the Federal Patent Court in Munich, gave a presentation on current European and German case law and on developments in the area of supplementary protection certificates for plant protection products. Richard Arnold, judge at the Patents Court in London, then focused on the latest case law on biotechnological inventions emanating from the EU Court of Justice (CJEU) and the courts of England and Wales, presenting, among others, the CJEU's judgment in Brüstle v Greenpeace and the UK Supreme Court's judgment in Human Genome Sciences Inc. v Eli Lilly and Co, which had both given rise to much debate among practitioners. The session closed with a talk by Manfred Wieser, Chairman of Board of Appeal 3.3.08 (Biotechnology), who summarised the developments in the boards' case law on the exception to patentability under Article 53(b) EPC and set out the latest case law of the Enlarged Board of Appeal and the other boards on interpretation of this article and associated aspects of patenting biotechnological inventions.
IV. In the afternoon, the participants devoted themselves to a case study entitled "Tyre sealing preparation", prepared by Klaus Grabinski, judge at the German Federal Court of Justice in Karlsruhe, Stefan Luginbühl, lawyer at the EPO in Munich, and Dieter Stauder, former professor at Robert Schuman University in Strasbourg. Mr Grabinski briefly introduced the case, referring to the Federal Court of Justice's decision X ZR 75/08 of 12 July 2011, which had served as the basis for the exercise. Then, as ever, the participants divided into three groups, one for each of the EPO's official languages, and set to analysing the case.
Summarising the three groups' results, Mr Grabinski reported:
As far as the main request was concerned, all three groups had considered the invention novel. However, unlike a narrow majority in the English-language group, the German and French-language groups had found that it lacked inventive step. Their main reason was that, although the US patent specification related to synthetic rubber, it was obvious to the skilled person that natural rubber could also be used to seal tyres. With regard to the auxiliary request, designed to distinguish the patent at issue from the relevant US patent, the German group and a minority in the English group had concluded that the subject-matter of claim 1 as worded in the auxiliary request extended beyond the content of the application as filed and was therefore inadmissible (Article 123(2) EPC). The term "consists of" in the auxiliary request made clear that it was to be interpreted to mean that the tyre sealant was made up only of the components mentioned in the claim, but this limitation had not been disclosed in the application as filed. By contrast, the French group and a majority in the English group had found that the limitation in the auxiliary request did not constitute an inadmissible extension.
V. The topic of the fifth and last working session, chaired with brisk efficiency by Sir Robin Jacob, UCL professor and former judge at the Court of Appeal of England and Wales, was recent developments in European and national patent law and case law, on which judges from nine states each gave a 15-minute report. First to take the floor was Dieter Brändle, President of the Swiss Federal Patent Court in St. Gallen, who briefly outlined the history and structure of Switzerland's newly created patent court. Beate Schmidt, President of the German Federal Patent Court in Munich, provided an impressive overview of the number of revocation proceedings and briefly explained the Federal Court of Justice's recent "Winkelmesseinrichtung" decision on disclaimers, which looks set to change the existing practice. She was followed by Alice Pézard, judge at the French Court of Cassation in Paris, who presented a case in which her court had decided that the legal force of a finding of patent infringement was to be given priority where the underlying judgment was later deprived of its legal basis. At issue in this specific case was whether compensation already paid could be reclaimed if the patent was subsequently revoked. The Court of Cassation held that it could not, and its approach gave rise to heated debate among the judges present. Sylvie Mandel, likewise judge at the Court of Cassation, presented two interesting cases concerning application of the London Agreement in France. Sir David Kitchin, judge at the Royal Courts of Justice in London, presented two cases (Gedeon Richter v Bayer and Nokia v IPCom) confirming the strict approach adopted by the English courts to added-matter objections under Article 123(2) EPC, before analysing last year's judgment of the Supreme Court in HGS v Eli Lilly, which dealt with the question whether a patent application for a gene had to disclose an industrial application. Lastly, he briefly presented the Schütz v Werit case, which concerned the question when the fitting of a replacement part was to be regarded as the making of a new patented product.
Massimo Scuffi, judge at the Italian Supreme Court and President of Aosta District Court, focused especially on the latest developments in cross-border cases and set out the Italian case law on equivalents, observing that, for the purpose of equivalence, not only could the different solutions to the same technical problem not overlap, but also the alleged infringing device could not supply an original solution as compared to the existing device. Robert van Peursem, judge at the Hague Court of Appeal, presented the AGA v Occlutech and Sandoz v Astra Zeneca (Seroquel XR) cases, dealing with the scope of protection, i.e. inventive step. He also elaborated on the CJEU's Solvay v Honeywell judgment, a decision on a reference for a preliminary ruling from the Hague District Court which, in his view, endorsed the Dutch cross-border practice concerning provisional measures. Having stated, first of all, that he strongly supported the EU's Unified Patent Court project, Eurico José Marques Dos Reis, judge at Lisbon Court of Appeal, presented a recent judicial reform in his country. He spoke about some of the difficulties encountered and did not conceal that he failed to understand why, despite the workload expected, only one judge had been appointed to the new IP court set up in Lisbon on 30 March 2012. Petre Ohan, Director of Appeals Department at the State Office for Inventions and Trademarks (OSIM) in Bucharest, briefly explained the Romanian system of administrative revocation, the nullity procedure and other tasks of the OSIM boards of appeal. He then presented a revocation case involving controversial issues with regard to the scope of protection, novelty and inventive step. Kristina Boutz, senior judge at the Swedish Court of Appeal in Stockholm, first of all explained that, following a reform of civil procedure in Sweden which had taken effect on 1 November 2008, all parties wishing to appeal to the Court of Appeal in a civil action first had to seek leave to appeal. In the last two-and-a-half years, 33 appeals had been lodged, leave to appeal being denied in seven of those cases. She concluded by reporting on a decision of Sweden's Supreme Court on the limitation period for claiming compensation for patent infringement and, more specifically, the question when that period began to run where a patent had been infringed in a series of incidents.
Closing the symposium, Wim van der Eijk thanked the organisers for their good work and described the event as an extremely important forum for continued harmonisation of the various European approaches to patent issues.
Finally, Roderick Murphy noted that, in Europe, there were several countries with few patent cases. Those countries had to continue to be involved in debate about patent law issues, and he therefore encouraged those present to remain committed to this important event.