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Designing the UPC - Looking back to move ahead

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The European patent system is undergoing major reforms. These include the creation of a patent with unitary effect across Europe and a Unified Patent Court (UPC) to enforce the new patent right. As the consultation on the ‘rules of procedure’ for the UPC is in full swing, we look back on how national patent courts are working. Are there lessons of national courts that can and should feed into the operation of the UPC system?

To help inform this debate, the Intellectual Property Office (IPO) hosted a workshop last Friday at the Chartered Institute of Patent Attorneys. Academics from the Centre for European Economic Research (ZEW) in Mannheim, Germany were invited to discuss their latest research into comparative patent litigation in Europe and evidence on bifurcation in Germany with an audience of IPO representatives, academics, lawyers, patent attorneys and judiciary. The event was chaired by Roger Burt (President, CIPA) and introduced by Tony Clayton (Chief Economist, IPO), who commented on the importance of evidence in the debate on the UPC and the effort it has taken the researchers to get the data from the courts, involving several researchers across Germany, France, the UK, and the Netherlands.

So what does the data show?

Katrin Cremers (ZEW) and Fabian Gaessler (International Max Plank Research School for Competition and Innovation) first highlighted some trends in patent litigation across the four big jurisdictions in Europe over the period 2000-08. They found few similarities but a number of interesting differences in caseload, case duration and case outcomes, including:

  • Germany had by far the biggest caseload although the data could reflect inconsistencies in how courts record patent cases
  • the time taken for the first 50 percent of patent cases filed to go through to first decision was up to twice as long in France compared to other jurisdictions
  • UK judges invalidate patents more often regardless of whether the initial claim was for revocation (nullity of invalid patents) or for infringement (breach of a patent) followed by a counterclaim for revocation
  • German regional courts, on the other hand, tended to rule in favour of plaintiffs claiming their patent had been infringed, while claims initiated for revocation predominantly resulted in a first judgement invalidating the disputed patent

What about bifurcation?

In the second half of the workshop, Fabian Gaessler presented an analysis of Germany's bifurcated system under the title ‘Invalid but infringed?’. In bifurcated systems, such as Germany or China, revocation and infringement cases are heard separately at different times and by different courts. This can mean that a regional court finds a patent has been breached and issues an injunction in favour of the claimant, before the Federal Patent Court decides whether the patent is valid to begin with. The time period between the two divergent judgements is often referred to as an ‘injunction gap’.

In the case of Germany, Fabian showed that about one third of infringement proceedings in 2000-08 had parallel revocation proceedings. Because in first instance revocation proceedings on average took 5-6 months longer than infringement proceedings, the potential for an ‘injunction gap’ exists. Fabian counts 63 infringement proceedings with parallel revocation proceedings that resulted in divergent decisions. In other words, there are 63 cases where the courts of first instance found that an invalid patent had been infringed. This represents 5% of all cases with parallel proceedings, and about 38% of parallel cases where the infringement decision was made first. Less than a third of these cases were later corrected by appellate courts.

Can we learn from this evidence to help the new UPC system support innovation and growth? Do you have views or data to contribute to inform the debate? The official consultation document can be found on the UPC Preparatory Committee’s website at www.unified-patent Your responses should be directed to the Secretariat at no later than October 1.

If you have questions or feedback, do comment on this blogpost and we’ll do our best to respond.

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