Patent Court Research Articles

Orders to preserve evidence at the Unified Patent Court: a practical guide

Orders to preserve evidence at the Unified Patent Court: a practical guide

Publicity of proceedings before the Unified Patent Court

Publicity of proceedings before the Unified Patent Court

The bifurcation challenge at the Unified Patent Court

The bifurcation challenge at the Unified Patent Court

The European Research and Bolar Exemptions ‒ Background, Status Quo and a Look at the Agreement on a Unified Patent Court (UPCA) and the EU Commission’s New Draft Directive for the Reform of Pharmaceutical Legislation

The European Research and Bolar Exemptions ‒ Background, Status Quo and a Look at the Agreement on a Unified Patent Court (UPCA) and the EU Commission’s New Draft Directive for the Reform of Pharmaceutical Legislation

The future perspectives of the European Unified Patent Court in the light of the existing intellectual property courts in the United States and Japan

The future perspectives of the European Unified Patent Court in the light of the existing intellectual property courts in the United States and Japan

The Assessment of Patent Validity by the Unified Patent Court

The Assessment of Patent Validity by the Unified Patent Court

특허침해소송이 제기된 이후 소극적 권리범위확인심판 청구를 제한할 필요성에 관한 소고

Given the intent and practical utility of the patent right scope confirmation system, the necessity to maintain this system should be acknowledged. However, it is questionable whether the interests of confirming the scope in cases where infringement lawsuits have already been filed, leaving only the main judgment, or even after a final judgment has been rendered, should be acknowledged. In such cases, there may be opportunities for parties to exploit the patent scope confirmation trial to delay disputes. In practice and the Supreme Court, except for exceptional cases such as seeking confirmation of the scope concerning patents that have expired or are not being implemented by the parties, the interests of confirming the scope of patent in trials and lawsuit are recognized. However, considering the legal nature, effectiveness, and relationship with related infringement lawsuits under patent law, it should not be overlooked that in some cases, it may be more efficient to restrict this process. Excessive requests for patent scope confirmation trials can burden parties with excessive time or costs and result in unnecessary waste in the national litigation system. Rather than generally recognizing the interests of confirmation based on the necessity or independence of the system, it is necessary to assess the interests of confirmation from the perspective of whether it is an effective and appropriate means for resolving specific disputes. While acknowledging the intent and function of the patent scope confirmation system, it is necessary to limit requests for confirmation of the scope by assessing ‘the presence or absence of interests of confirmation’. For instance, when a related infringement lawsuit has already been filed and has progressed to the point of hearings, there is no need to recognize the interests of negative patent scope confirmation, which would impose dual litigation burdens and delay on the parties and waste the court's time and resources on ineffective disputes. Furthermore, when patent scope confirmation and related infringement lawsuits run concurrently, each procedure is independent and not binding, which can lead to conflicting conclusions and undermine confidence in the patent system and the judicial system. Moreover, with the 2016 amendment to the Civil Procedure Act, where appeals of nullification lawsuits and infringement lawsuits are under the jurisdiction of the Patent Court, and both procedures are simultaneously litigated, the situation has become less prone to inconsistency or undermining. Therefore, recognizing ‘the interests of patent scope confirmation’, even in cases like the one mentioned, should be limited, and a restrictive interpretation should be applied.

‘Brexit and the Legal Legitimacy of the Unitary Patent Court’ – A response

Abstract In GRUR International 2024, pp. 191-197, Nicolas Binctin (Professor in Poitiers, France) and Craig A. Nard (Professor in Cleveland, USA) come to the surprising conclusion that the conditions for the entry into force of the Agreement on a Unified Patent Court (UPCA), as set out in its Art. 89(1), are still not met. If their opinion were correct, not only would a new ratification by the contracting member states (including referenda in Denmark and Ireland) be necessary (this is what the authors advocate), the Unified Patent Court (as it is properly called) would be up in the air, along with its decisions and orders to date. In short, the authors assume that effective ratification by the United Kingdom is still required for the application of Art. 89(1) UPCA as long as the said provision has not been amended removing its alleged reference to a ratification by the United Kingdom. They derive this view essentially from the wording of Art. 7(2) UPCA (according to which a division of the central division is located in London) and from Art. 3(1) of the Protocol on the Provisional Application of the UPCA (referring to a ratification of the UPCA by the United Kingdom as a precondition for the entry into force of the Protocol).

To the 50th Anniversary of the European Patent Convention (1973–2023)

INTRODUCTION. This paper reflects historical overview of long-standing emergence of mechanisms of judicial protections of patent rights conferred by European patens which begun even in 1950-s and ended with start of operations of the Unified Patent Court in 2023. The paper demonstrates that the establishment of the similar mechanism within the Eurasian Patent Organization or Eurasian Economic Union may require different approaches because of possible centralization of industrial property protection under Eurasian Patent Organization.METHODS AND MATERIALS. The research materials for this paper are scientific works of foreign and Russian scientists and officials of the European Patent Office and the Eurasian Patent Office, legal acts of international and regional levels and drafts thereof. Methodological basis of this research are general and special scientific methods.RESEARCH RESULTS. This paper suggests periodization in emergence and evolution of dispute resolution mechanisms for European patents, reveals rationales for establishment of the unified patent judiciary in Europe and outlines directions for further research of prospects of creation of the similar mechanism in the Eurasian region. Some findings made in this article may facilitate the growth of such researches.DISCUSSION AND CONCLUSIONS. European Union (EU) accumulated broad experience in establishment of the dispute resolution mechanisms for European patents. Due to uniqueness the Unified Patent Court is of great interest when researching prospect of improvements of the patent judiciary and quasi-judicial mechanisms under the Eurasian Patent Convention. However, trends of developments of the Eurasian Patent Organization and possible centralization of the regional protection of industrial property may testify that a Eurasian analogue of the Unified Patent Court would have a different institutional form.

Injunctions and damages for patent infringement under the UPCA in light of the principle of proportionality—Part II: damages

Abstract This article examines the availability of injunctions and the award of damages for patent infringement under the Agreement on a Unified Patent Court (UPCA), in light of the principle of proportionality. Part I, published in the previous issue, focused on injunctive relief and analysed the application of the principle of proportionality to injunctions, outlining key factors and scenarios. Part II discusses the principles and methods applicable to the calculation of damages, assessing their suitability in light of the principle of proportionality, as defined in European Union law and in the case law of select contracting states.

A Three-Step Test for Determining Patent Infringement Related to Repair

Repair, refill and recycle (in the following: repair) of physical goods is a necessity and a convenience – mending is better than ending, at least for the consumer. Where the goods to be repaired are patented, the question arises whether such act of repair infringes the patent, and under what conditions. There are different approaches by national courts on this matter, and it will eventually be the task – and the chance – of the Unified Patent Court to find its own solution to this issue. The author in this regard proposes a three-step test.

Injunctions and damages for patent infringement under the UPCA in light of the principle of proportionality—Part I: injunctions

Abstract This article examines the availability of injunctions and the award of damages for patent infringement under the Agreement on a Unified Patent Court, in light of the principle of proportionality. Part I focuses on the injunctive relief and analyses the application of the principle of proportionality to injunctions, outlining key factors and scenarios. Part II, which will be published in the next issue, discusses the principles and methods applicable to the calculation of damages, assessing their suitability in light of the principle of proportionality, as defined in European Union law and in the case law of select contracting states.

Brexit and the Legal Legitimacy of the Unitary Patent Court

Abstract At no time in recent history has it been more exciting to be a student of European patent law. Over the past ten years Europe has sought to create and restructure a significant portion of its patent law apparatus, including the introduction of a ‘Unitary Patent’ (‘UP’) that has effect in 17 European Union Member States (and counting), and the creation of a Unitary Patent Court (‘UPC’) that entered into force on 1 June 2023. The compelling policies underlying these dramatic changes are well documented, including enhanced uniformity, cost reductions, and other efficiencies. Indeed, the European patent system is poised to welcome international patent actors with a well-thought-out procedural regime. Yet all good policies must be supported by a legitimate legal foundation. The United Kingdom’s highly publicized and often dramatic departure from the EU has reverberated throughout the European establishment, affecting issues relating to the economy, trade, immigration, labor, and Northern Ireland, to name just some of the most obvious. Perhaps what is not so evident, however, is the adverse legal effect that Brexit has had on the UPC, to such an extent that we are dubious about the court’s legitimacy. Make no mistake, even if we prefer a fully integrated EU solution, we support the creation of UPC and the entire unitary initiative. However, in this paper we argue that it must be done in a manner that is legally principled, which requires an amended and re-ratified Unitary Patent Court Agreement.

The Herchel Smith Intellectual Property Lecture 2022*The UK courts' striving for consistency with international decisions in patent law

The Patents Court, the Court of Appeal and the Supreme Court (before that, the House of Lords) have all and for many years stressed the need for consistency with decisions of the Boards of Appeal of the EPO. They have also taken account of decisions of the national courts of other EPC member states on many occasions in pursuit of consistency, in relation to validity but also infringement. This lecture will consider: how this has been done; when it has worked well and less well; how it can and should work if the EPO (in particular) changes or develops its law differently from the UK; and how that fits with the law of precedent. It will also consider the issues that may arise with decisions under the UPC.

Eu patent system: unitary patent and patent court (part 1)

Eu patent system: unitary patent and patent court (part 1)

The European Unified Patent Court – Considerations Regarding the Court’s Approach to the Diverse Dimensions of the Innovation Ecosystem

The European Unified Patent Court – Considerations Regarding the Court’s Approach to the Diverse Dimensions of the Innovation Ecosystem

Patent portfolios and Patent Assertion Entities: antitrust issues and future perspective under the Unified Patent Court

Patent portfolios and Patent Assertion Entities: antitrust issues and future perspective under the Unified Patent Court

Patent Dependency under European and European Union Patent Law – A Regulatory Gap

Abstract Technological progress generally is not disruptive but sequential. Innovations build on prior innovations, typically by presenting improvements or complements. Under patent law, such follow-on innovation meets with an obstacle if the use of the invention underlying it infringes a prior patent, and if, for one reason or another, the owner of that prior patent prefers, as it may, to refuse granting a license. It is only in case the follow-on (or ‘second’) invention involves an important technical advance of considerable economic significance in relation to the invention claimed in the prior (or ‘first’) patent that in Europe, in accordance with Art. 31 TRIPS, national patent laws provide for a right of the owner of the second patent to obtain, by way of a decision of the patent office or of a court, a dependency license. By contrast, the EU’s system of unitary patent protection does not provide for a dependency licensing regime. Instead, Regulation 1257/2021 on the European patent with unitary effect refers the matter to national law. This means that despite the importance of its invention the owner of a dependent patent will never obtain a mandatory license covering the Internal Market but only territorially limited national licenses for which it must apply separately in each Member State, go through multiple different procedures and comply with different national requirements. The absurdity of such hindering of follow-on innovation in the Internal Market by regulatory abstention is no less as regards national patents that the European Patent Office grants as a bundle in the form of the European patent and that are now additionally held together by the uniform infringement rules of the Unified Patent Court Agreement. After all, that category of a European patent is supposed to represent an equivalent alternative to the unitary patent and, therefore, ought to meet the same Internal Market requirements. Therefore, this study proposes to harmonize Member States’ dependency licensing regimes and to complement the system of unitary patent protection accordingly. To this end, it presents the common principles of national regimes, analyzes the particular need for and characteristics of modern mandatory licensing rules and discusses the deficits of alternative approaches that might be available under EU competition law. A particular emphasis is put on distinguishing dependency licensing from compulsory licensing in the public interest, and on the functional complementarity existing between incentivizing inventions by patent protection and stimulating follow-on innovation by mandatory licensing regimes.

The unified patent court

Abstract On 1 June 2023, the Unified Patent Court (UPC) for the settlement of disputes relating to European patents and European patents with unitary effect opened its doors as a common court of those European Union (EU) Member States that, in 2012, had joined in an enhanced cooperation in the area of unitary patent protection, and then, in 2013, entered into an ‘Agreement on a Unified Patent Court’ (UPCA) that complements their cooperation and expands it to non-unitary European patents. Although the Court’s jurisdiction is strictly limited to the two main forms of actions that may be brought in the special field of patent protection—infringement and revocation—its establishment deserves an analytical evaluation from the perspective of general European Union law because it is the first time that Member States create a common court aside of the EU’s judicial system not only for the settlement of disputes arising under their own—national or internationally uniform—legal regimes, but also for a legal regime of Union law, the unitary protection of patents. In this regard, it is not so much the sheer size of the new court that attracts attention or the economic importance of the subject matter that comes under its exclusive jurisdiction, but the many fundamental issues and controversies that accompanied its creation and that are still extensively discussed in literature. Leaving aside doctrinal problems of a proper qualification of the UPC as a common court of Member States, the main concerns relate to (i) the need for and the risks of the (over-)specialization of the UPC as a technical expert court; (ii) the legitimacy and democratic deficits of the UPC as a jurisdiction the rules and operation of which are essentially determined through self-regulation by the patent law community; (iii) the difficulties of properly qualifying the nature of the rules of substantive law of both the EU’s Regulation on unitary patent protection and of the UPCA, the ambivalence of which seemingly allowing much room for interpretation and for curtailing the reach and primacy of Union law; (iv) the related problems of adequately defining the relationship between the UPC and the Court of Justice of the EU as regards safeguarding the autonomous and uniform interpretation of Union law; and (v), more generally, the structural imbalances within the EU’s judicial system that may result from the establishment of common courts of Member States the jurisdiction of which covers the very substance of a legal regime of the Union.

Motivations for the restructuring of China’s patent court system

Is the evolution of China’s patent litigation courts from a scattered expansion to a shrinking concentration spontaneous or is it a rational construction? Understanding the motivation for the adjustment of China’s patent court system is important for judging whether the system change is appropriate and for choosing the optimal patent litigation system. After addressing the endogeneity between the number of patents and the adjustment of the patent court system using patent incentives as an instrumental variable for the number of patents, responding to the need to protect the growing number of patents appears to be the underlying reason for the expansion of the number of patent courts in China until 2014. The number of patents directly contributed to the growth of the number of patent courts as patent cases proliferated. The downsizing of the patent court after 2014 was, in contrast, a targeted reform initiative in response to the decline in the quality of cases heard due to the increase in the number of patent courts. The adjustment of China’s patent court system thus appears to be the result of rational constructions in response to a changing reality.