Pemetrexed, yet again: last Wednesday the District Court of The Hague, swimming against the current and after a deep dive in the prosecution file, decided that Fresenius did not infringe Eli Lilly’s ‘pemetrexed disodium’ patent with a generic product that does not contain pemetrexed disodium, not even by equivalence.
The basic facts of the widespread Pemetrexed litigation will be well-known to most readers by now. Eli Lilly’s patent (EP 1 313 508) has a Swiss form claim relating to the “use of pemetrexed disodium” in combination with vitamin B12 for inhibiting tumor growth. Different generic companies do not use pemetrexed disodium in their product, but another form of pemetrexed (e.g. pemetrexed diacid, as in Fresenius’ product). Do these generic products fall within the scope of Lilly’s ‘pemetrexed disodium’ claim?
That question was put before numerous European patent judges over the past years. For a walk down memory lane, just skim the reports on this blog. Or, to list a few decisions:
|March 1, 2017||District Court
|Lilly/Sandoz||Patent valid and infringed
(no non-infringement defense)
|October 24, 2017||District Court
(no invalidity defense)
|October 24, 2017||District Court
|May 8, 2018||Court of Appeal
|May 8, 2018||Court of Appeal
|January 16, 2019||District Court
|Sandoz/Lilly||Patent held valid
(invalidity action only)
|May 15, 2014||High Court||Lilly/Actavis||No infringement; DNI granted|
|June 25, 2015||Court of Appeal||Lilly/Actavis||DNI direct infringement confirmed, contributory infringement not|
|July 12, 2017||Supreme Court||Lilly/Actavis||Patent infringed|
|April 3, 2014||Landgericht Düsseldorf||Lilly/Actavis||Patent infringed|
|March 5, 2015||Oberlandesgericht Düsseldorf||Lilly/Actavis||No infringement|
|June 14, 2016||Bundesgerichtshof||Lilly/Actavis||Incorrect application equivalence doctrine; remitted.|
|June 24, 2016||Landgericht München||Lilly/Ratiopharm||Patent infringed|
|May 18, 2017||Oberlandesgericht München||Lilly/Ratiopharm||Patent infringed|
|July 17, 2018||Bundespatentgericht||Hexal and Stada/Lilly||Patent invalid|
|September 10, 2017||Tribunale Ordinari di Milano||Fresenius/Lilly||No infringement; DNI granted|
|October 15, 2018||Tribunale di Milano||Fresenius/Lilly||Patent infringed; DNI denied|
|March 9, 2017||Bundespatentgericht||Actavis/Lilly||DNI granted|
|October 20, 2017||Bundesgericht||Lilly/Actavis||Patent infringed (one product); remitted for two other products|
|December 21, 2017||Bundespatentgericht||Actavis/Lilly||Patent infringed two other products|
And to list some more: Denmark (8 December 2017: injunction granted against Fresenius); Austria (22 December 2017: injunction granted against Fresenius; 12 April 2018 injunction confirmed on appeal); Finland (29 December 2017, injunction granted against Actavis and Ratiopharm); Sweden (31 January 2018, injunction granted against Actavis), Belgium (15 June 2018: injunction against Fresenius denied; no infringement)…everyone seems to have gotten a piece of the pemetrexed pie.
Well aware of this (then shorter) cascade of decisions, The Hague Preliminary Relief Judge wrote in his 24 October 2017 judgment:
The Preliminary Relief Judge’s opinion that there is an infringement, is supported by a number of important foreign judges […]. However, some other foreign judges have not accepted infringement. This is mainly due to a different valuation of the prosecution file and how strictly one adheres to the precise wording of the claims. These divergent decisions, moreover, underline once again the desirability of the Unified Patent Court (UPC), whereby one common judgment can be reached for a very large number of countries in Europe.
Wednesday’s decision of the District Court confirms that different judges can come to different decisions, also in the Netherlands. Other than the Preliminary Relief Judge, and on appeal The Hague Court of Appeal, the District Court did not find infringement.
The Protocol and points of view to consider
The court starts with a familiar mantra: “The scope of protection of a European Patent is, on the basis of Article 69 of the European Patent Convention, determined by the claims, where the description and drawings serve to interpret the claims.” And, familiar to all, that Article 1 of the Protocol prescribes that an interpretation of the claims should be found between two extremes: on the one end a strict, literal meaning of the wording used in the claims, and on the other end the claims only serving as a guideline and that the actual protection conferred may extend to what, from a consideration of the description and drawings by the skilled person, the patent proprietor has contemplated. And, of course, that Article 2 Protocol prescribes that due account shall be taken of any element which is equivalent to an element specified in the claims.
The court continues with discussing how this how-to interpret article 69 EPC has been intepreted by the Dutch Supreme Court and lower courts over the years:
- The inventive concept behind the wording of the claims is a ‘point of view’ opposite to then strict, literal meaning of the wording of the claims (in the Protocol’s words: the extremes).
- Parties agree the one extreme (literal meaning of the claims) is limited to the use of pemetrexed disodium, while the other extreme (the inventive concept) is not limited to pemetrexed disodium.
- The skilled person is aware that the literal meaning of the claims is a limitation with respect to the inventive concept (knowing that the activity of the combination therapy with vitamin B12 is not specific to pemetrexed disodium, but can also be achieved with other forms of pemetrexed).
- The question to be answered is how to find the middle position between the two extreme interpretations.
- The point of view of the inventive concept does not yet provide any indications how to find a position between a fair protection for the patent proprietor with a reasonable degree of legal certainty for third parties.
- The court has to consider if the result of its assessment provides the reasonable degree of certainty to third parties. That point of view can result in a more restrictive interpretation of the claims (in line with their literal wording), i.e. due to a lack of clarity of the claims works against the patentee.
- Another point of view to consider is the degree of innovation an invention has brought.
- Yet another point of view is if – according to the skilled person – the scope of protection has consciously been limited by the patentee. In that regard the skilled person’s answer to the question if there were ‘good reasons’ for a limitation can be taken into account.
Limitation of the inventive concept: more than technical reasons
The District Court points out that the Court of Appeal (in the 2018 summary proceedings) considered that a ‘conscious choice’ must be understood as a ‘conscious choice based on a technical reason’. There should be ‘technical considerations’ knowable to the skilled person to come to a more limited interpretation of the claims than the inventive concept entitles, according to the Court of Appeal. The Court of Appeal considered that none of the points of view indicate that third parties could have assumed that Lilly has consciously chosen pemetrexed disodium for a technical reason.
The District Court does not agree: if there is not a known, conscious technical reason for a limitation in the wording of the claims (compared to the inventive concept), then this does not mean that the skilled person should always assume that this limitation should (therefore) not be considered a limitation of the scope of protection. Other circumstances and points of view can still play a role. For example, a lack of clarity as to the contents c.q. scope of the claims works against the patentee. On the other hand, if the limitation is not based on conscious decision (if the limitation is clearly unintended), this speaks for a wider scope of protection.
The prosecution file
The District then comes to a decisive factor for this case: the prosecution file. In line with Supreme Court case law, the District Court notes that the prosecution file should only be restrictively used for arguments in favor of the patentee (i.e. only to a limited extent in case the skilled person can reasonably have doubts about the meaning of the claims after having studied the description and drawings). This is in line with the prescribed reasonable degree of legal certainty for third parties. The legal certainty does not provide any limitation if a third party wants to rely on the public part of the prosecution file to substantiate its interpretation of the claims. The court subtly notes that this “different from what seems to be thought” in other European countries (referring in a footnote to par. 84 of the UK Supreme Court’s 12 July 2017 judgment).
The court is of the opinion “that, given the nature of the limitation and the manner in which that limitation took place according to the prosecution file, the skilled person (at least: the third party) will not regard the literal wording of the claims as a (clearly) unintended limitation”.
In short, the court considers that:
- Lilly replaced ‘an antifolate’ in the original application with ‘pemetrexed’ after the examiner raised objections (i.a novelty).
- The examiner subsequently raised an added matter objection as to the use of the term ‘pemetrexed’, noting that this term in the wording of the claims and the description “is certainly a distinct compound [follows the CAS number for pemetrexed diacid] of the ‘premetexed disodium’ [follows the CAS number for pemetrexed disodium]” as expressed in the original application.
- The skilled person would have understood that with the term ‘pemetrexed’ Lilly meant to refer to the antifolate (the pemetrexed anion), and not the specific diacid. This follows from the inventive concept disclosed in in the original application, and is also a logical conclusion in view of Lilly’s amendment of ‘antifolate’ into ‘pemetrexed’.
- The court considers that Lilly – in these merits proceedings – is also of the opinion that the application did provide basis for a claim with a wider scope than the current claim.
- As to the amendment into pemetrexed the examiner did not say that the application did not provide basis for pemetrexed disodium only. The skilled person would have derived from the Examiner’s communication that the examiner’s reference to pemetrexed concerned the diacid (and not the anion), and that the examiner had misunderstood Lilly.
- Lilly did not take any step to communicate that its use of pemetrexed was not meant to specifically refer to the diacid, buth the antifolate pemetrexed (with the active anion). Instead, Lilly amended its claims to pemetrexed disodium. That while it was foreseeable at the priority date that there were other pharmaceutical dosage forms of pemetrexed, which were in the skilled person’s reach. Lilly accepted without objection that the examiner thereafter limited the description to only pemetrexed disodium.
The skilled person, having reviewed the prosecution file and then having read the claims and description, can only conclude that scope of the claim is limited to use of pemetrexed disodium. The court adds that a “pharmaceutical superpower” as Lilly has the necessary expertise and experience in filing patent applications, while there was no time pressure on the examination proceedings. This supports that Lilly deliberately limited the claims to pemetrexed disodium (which Lilly also did not deny). That there was no technical reason for the limitation is – in view of Lilly’s deliberate choice – insufficient to decide in Lilly’s favour. Any lack of clarity comes for Lilly’s account.
Pemetrexed Fresenius therefore does not fall within the patent’s scope of protection, according to the court. The court notes that it has taken due account of equivalence when determining the middle between the Protocol’s extremes. The court’s assessment does not leave room for the protection of (also) other dosage forms of the antifolate pemetrexed.
The court’s decision was based on the assumption that the original application did provide basis for other pemetrexed forms than pemetrexed disodium. As an obiter the court considers that its decision would not have been different if it should be assumed – other than the parties did – that there was no such basis in the application. In that case, dosage forms equivalent to pemetrexed disodium were still in the skilled person’s reach at the priority date while Lilly did not provide a basis for these other forms in the application. That could not have been clearly unintended. Lilly did not state that the application contained an error or omission, and it does also not follow from Lilly’s limitation to pemetrexed disodium – without discussion – during the examination proceedings.
Finishing up on equivalence, the court adopts Arnold J’s consideration in his 2014 UK pemetrexed decision that patentees resort to arguments about equivalents in three main classes of cases. The reader who is still reading at this point will be able to look up what these three classes are (see par. 104 – 107 of Arnold J’s decision). Let’s limit the wording here to this: according to the District Court this was not one of the first two cases (in which “it can be fair that equivalent protection has a corrective effect”). And in the third class of case there is, Arnold J’s words, “no reason why the law should be sympathetic to the patentee”. Sympathetic the law – as applied by the District Court – was not for Lilly: “an appeal for protection according to equivalence is not meant to reverse Lilly’s in hindsight unwelcome choices in the wording of its patent at the cost of the reasonable degree of legal certainty for third parties.”
The District Court’s decision and reasoning is a welcome addition to the continued discussion on claim construction, if and how the prosecution history should aid this construction, and what part equivalence should play in all of this. As to the latter, reading this decision raises the question: will equivalence swing back again with the pemetrexed pendulum?
The 19 June 2019 of The Hague District Court is available here (in Dutch).
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“These divergent decisions, moreover, underline once again the desirability of the Unified Patent Court (UPC), whereby one common judgment can be reached for a very large number of countries in Europe.”
One may equally well argue that the case is not clear, that all decisions are correct (even though different), and that giving a single authority the exclusive competebce is thus wrong – as that boils down to giving a rather arbitrarily selected court the only judgement. Which of all decisions should it be? None of them is wrong! It seems to depend on the accidental/ rather arbitrary composition of the court’s panel. So, the decision from the UPC court is just such arbirary selection… Is that really preferred?
None of the decisions may be “wrong”, but they are divergent even though they are all trying to apply the same Article 69 EPC. This creates legal uncertainty and forces the parties to relitigate the same issue over and over again in each country. That may be good for lawyers but for society it increases transaction costs for no benefit.
So yes, a single decision really is preferred. It is more important to have one decision than to have “the right decision” (which, as you correctly pointed out, does not exist anyway).
The number of cases in which a party has to litigate again and again in different forums is very limited. It is mainly the case for blockbusters in the pharma area. Pemetrexed or tiotropium are two examples. I do not know other fields of technology in which it is the case, but I can be mistaken.
When one looks at the average number of validations of EPs, one wonders who needs protection in more than 4-6 member states. In other words it might be nice to have one single decision, but at what cost?
The fear of putting all the eggs in the same basket, which was present when the EPO opened, is also present here. To me the dangers of a single jurisdiction to decide on the fate of a patent is much higher with the UPC than with the UPC.
In both systems, the absence of a revision instance, not just for formal matters, but for matters of substance, is a big drawback. I know that in UK we got the decision of Lord Neuberger, but a revision instance like the UK Supreme Court or the BGH appears to be very useful. For the UPC this role could have been played by the CJEU, but the aim was to keep the CJEU out of patent matters as much as possible, so that the bare minimum, prejudicial questions was adopted.
Techrights: FINGERS OFF!!!
Hi there again, Attentive. You are sceptical of the worth of having a UPC Central Division that adjudicates pharma patents in London but mech eng inventions in Germany and (arm waving) software claims in Paris. From my point of view, that fits with the reality of litigation, as between blockbuster pharma patents and the rest. Rolls-Royce irre teuer English fact-finding processes (discovery and cross-exam of witnesses) help in the adjudication of pan-European pharma cases, where results of experiments are often the focus of attention, and where the need to establish the real facts is highest. You could almost say that the only thing that keeps witnesses “honest” everywhere the patent is litigated is the severity of scrutiny of their evidence, in England, under day-long expert (and expertly primed) cross-examination in open court under the nose of the expert judge, who is a seasoned patent litigator, never fooled by dissembling or dissimulation.
But can we agree that the UPC does not help. Tension between English and civil law fact-finding on the European mainland, at a cost borne by the pharma industry, is what raises the quality of decisions in patent litigation all over the 38 Member State EPC-land. Each jurisdiction learns something, whenever a case is litigated all over Europe. Each jurisdiction strives to be more competitive with the others. So, long may that tension remain.
The average number of validations is so low because it is expensive and cumbersome to validate in many states. It should go without saying that patent proprietors are interested in getting protection for a larger geographical area if that is possible for a reasonable amount of money and effort.
The current system “protects” smaller countries from many patents. That is an advantage for those smaller countries but not actually fair from the point of view of reciprocity.
All the eggs in the same basket is not a problem in the USA. Why would it be a problem in Europe? What is important are predictability and legal certainty.
The UPC would have a central revision instance, namely the court of appeal in Luxembourg. The EPO does not, but that is the case whether the UPC becomes active or not.
The first sentences seem contradictory.
…. last Wednesday the District Court of The Hague decided on Eli Lilly’s claim that Fresenius infringed its ‘pemetrexed disodium’ patent with a generic product that does not contain pemetrexed disodium. Going against the current, and after a deep diver in the prosecution file, the District Court decided there was no infringement, not even by equivalence. Either there is infringement or there is not. But not both in successive sentences.
When reading the decision in Dutch it appears that the District Court has considered that there is no infringement.
One can only applaud the decision of the District court as it is the logical conclusion when one looks at the way Eli Lilly conducted the proceedings.
Eli Lilly wanted to obtain a quick patent limited to pemetrexed disodium and it obtained it.
Eli Lilly did not try whatsoever to show that the limitation was not a real one. The only usable examples in the original description was pemetrexed disodium, and the examiner in charge was correct when stating that a claim for pemetrexed in general was offending Art 123(2). Lord Neuberger was not correct when he blamed the examiner for requesting the limitation. The examiner had no other choice. A decision like that of Lord Neuberger has certainly not made a FTO analysis easier…..
It was open to Eli Lilly to at least bring new examples of other salts than disodium. He might not have escaped the objection under Art 123(2), but it would not have been necessary to come to an infringement by equivalent based on Art 2 of the Protocol in which equivalents are not even defined! The patent would then have been granted with a STIN mention on the front page, cf. Guidelines H-V, 2.3.
Eli Lilly could also have filed a main and auxiliary requests, the MR for pemetrexed and the AR for pemetrexed disodium. Grant could have proceed with the AR or an appeal could have been filed for the MR.
Another possibility which was open to Eli Lilly was to file a divisional application for a broader claim. This is not uncommon, and corresponds to a strategic use of divisional applications, especially shortly before an OP:
Eli Lylly did nothing but insisted on the sentence ““The Applicant seeks to draw a distinction between subject matter which is relevant to the invention which is indicated as being that to which “the present invention generally relates” and “the subject matter provided by the invention” which is the subject matter claimed”.””
The examiner should have insisted that §  –  had to be aligned to §  and  which specifically deal with pemetrexed disodium.
The events following grant can be considered as an incentive to slap dash drafting and prosecuting an application on the side of Eli Lilly.
The District Court was thus correct to keep in mind the security of third parties. The comment that Eli Lilly is a large company with great experience in prosecution is very pertinent. It is too easy to leave things in the vague, and later wake up when competitors bring their products.
Up to now only the German Federal Patent Court revoked the German part of the 568’ patent for lack of inventive step. It is interesting to note that according to this decision, the use of folic acid seems to have a much greater influence than that of B12 on the toxicity of folates, but that once he added folic acid, the addition of vitamin B12 appeared straightforward.
One can think that Eli Lilly wanted to have a quick patent of the combination pemetrexed disodium + vitamin B12, as it only had experimental data on this and not for any other salt. The addition of folic acid was in claims 2 and 3.
Attentive Observer, thank you for your comment and sharing your confusion with the first sentences. To spare others to read the decision in Dutch, which is certaintly recommended, I slightly rewrote what was clear to me.
Attentive perhaps favours more than me the “conspiracy theory” of history over the “cock-up theory”. My suspicion is that Lilly, despite its huge experience of patent dtafting, nevertheless in their haste simply overlooked to claim, in the PCT application as filed, that particular intermediate level of generality that was going to be needed during prosecution at the EPO. After all, in its home jurisdiction, the USA, it doesn’t matter. You can expect to add that intermediate generality level by an amendment in prosecution, so no need to tax your mind writing such claims at such an early stage, even before filing your PCT.
Then, when it came to the crunch, in prosecution at the EPO. I suspect the thinking of an American Applicant, putting the integrity of the US patent way above all else, is never to start a discussion on the EPO public file that you are destined to lose. So Lilly held back and kept the EPO file history “clean”.
Who is to say they were wrong, in that estimation? (For the UK it was right, no?)
Anybody here know (or have any idea)?
Dear Max Drei,
Thanks for giving a point of view which explains not only the attitude of Eli Lilly in the present case, but of US applicants in general. It is sometime difficult to have them acknowledging even highly relevant prior art or to have them accepting a two-part form of claims.
Continuations or continuations-in-part are means unknown on this side of the Atlantic. Similarly provisional US applications and their potential deleterious effect on the validity of priority when filing at the EPO are also a typical US problem, cf. Broad Institute.
By the way, I am not for more for any “conspiracy theory” than you are. I simply criticise the way the RoP of the UPC have been concocted by a self-designated and co-opted body. Transparency is simply lacking.
Techrights: FINGERS OFF!!!
If it is for the ease of validation that we need the UPC, this cannot be. I do not think that is primarily a question of costs, it is a question of return on investment. Why bother to validate in certain countries when the corresponding market is so small, that a company can survive without a monopoly there. For the pharma sector it is different. That is a stance I heard regularly when visiting companies.
When you compare the USA with Europe you are comparing apples and pears. Europe is by far not as integrated as the USA are, so that the comparison does not hold.
I think what you call reciprocity is simply overwhelming little countries. The number of filings stemming from what you call “smaller countries” does not allow them to play on a par with big countries. There will always be an imbalance between the number of patents stemming from large countries compared to those of “smaller countries”. Can this be fair? I do not think so. There is no reciprocity to begin with.
I find it as well a trifle derogatory to call them “small countries”. They may indeed not compare with Germany UK or France, but they have also their raison d’être.
In order not be overwhelm by non-domestic patents, some of what you call “smaller countries” have decided not to ratify the UPC, see for example Poland. The Czech Republic is on the verge of doing the same, and I take bets that Slovakia will do the same. Some smaller countries have ratified, for example Slovenia and Portugal for which the bait was an arbitration chamber. But the Portuguese patent profession was against ratification of the UPC.
I regret to disagree, but the Court of Appeal in Luxembourg is as much a revision instance as the Enlarged Board acting under Art 112a EPC can be. Just look at R 245UPC (Application for rehearing). It is only for formal reasons that a party can accede to the Court of Appeal acting as a revision instance. According to R 238AUPC (Decision to defer), the Court of Appeal acts similarly as the Enlarged Board under Art 112 EPC. The access to the Court of Appeal or the Enlarged Board is then not open to the parties.
I maintain that neither the EPC nor the UPC have foreseen a revision instance for substantive reasons, like it is the role of the BGH, the UK Supreme Court and the French Cour de Cassation. Before reaching the highest court in those national systems, you have normally two degrees of jurisdiction before. In the EPC and the UPC you have a first instance and an appeal court. After the second instance has taken a decision, no further discussion is possible before a court, with the exception of formal points. I do not call this a revision instance.
Techrights: FINGERS OFF!!!
Attentive Observer, I’m not sure why you think you disagree with me on the reason why EPs are validated in so few states on average. Of course it is because it is not worth the trouble and the cost AKA not enough return on investment. There is no daylight between us here. We are in full agreement.
Without the unitary patent and the UPC, Europe is indeed not as fully integrated as the US as far as patents are concerned. Aren’t you dismissing the argument a bit too easily? Can you pinpoint a reason why “all eggs in one basket” is not a problem in the US but would be a problem in a Europe with the UPC?
Small countries would not be any more “overwhelmed” by a large number of validations than big countries. As it is now, a company operating in Germany is potentially affected by many more patents than a company operating in Luxembourg. If the number of validations in Germany and Luxembourg were the same, the two companies would be “overwhelmed” to exactly the same degree.
I cannot take your being offended by my use of the term “small countries” seriously. I am not sorry.
R. 245(1) is about “rehearings”. For appeals, see R. 220. I’m sure you are aware of the difference so let’s not confuse things unnecessarily.
R. 238A allows a panel of the Court of Appeal to refer cases of exceptional importance to the “full Court of Appeal”. This is similar to how the CJEU deals with cases. The UK Supreme Court also hears cases in panels and sits as a full court only for questions of Brexit-like significance.
It is correct that the UPC has two instances and not three. Why is that a problem? In Germany there is only the BGH as appeal instance after the BPatG in case of nullity proceedings, for example. If “revision” is the magic word, then I can tell you that they exist only in Germany (and not in all cases as we have just seen). Each country has its own special set of rules about what cases can be heard by the highest court and to what extent. Often, where there are several 2nd instance appeal courts, it is useful to have a 3rd instance on top of them at least for the purpose of harmonising the law. If there is just one appeal court, there is no need for yet another instance with limited “revision” jurisdiction. In the UPC, it is the task of the single central appeal court to harmonise the law. (Sure, the central appeal court usually decides in panels but so do all other highest courts that I am aware of with the exception of the US Supreme Court.)
If you want to be critical of the UPC, you might want to focus on arguments like first-instance forum shopping and the potential tendency of the UPC to be patent friendly for the sake of its own survival (it having to be funded by court fees).
Just another thought. When you speak about reciprocity, I would like to draw your attention to the fact that according to EPO’s official statistics, barely a third of the applications entering the EPO stem from EU member states.
The greatest beneficiaries of the UPC are thus not the European industry, or European SME’s, but international acting companies, especially from the USA and Japan.
When EU companies want to apply for patents (be it directly or via the PCT), they have also to file/validate in a lot of different countries. There, it is as cumbersome and expensive as with respect of smaller EU states. The same applies even more when it comes to litigation outside the EU.
I doubt that politicians and lawyers in the EU realised this when they decided in favour of the UPC. If they were aware of this, they kept quite.
Techrights: FINGERS OFF!!
I agree that the UPC would be beneficial for international companies located in the US and Japan. But it only seems fair that it is not (significantly) more difficult for a US company to enjoy patent protection in the EU as it is for a EU company to enjoy patent protection in the US. Reciprocity, indeed.
I want to pick up on Attentive’s last contribution. I am reminded of the EU Registered Design Right. Very potent, very quick and cheap to obtain. Why that then? Why, of course; the politicians in Brussels wished to help Europe-based industry.
But what happened? Manufacturers in other continents were quicker to appreciate the benefits of accumulating thickets of EU Design Rights and use them to shut down manufacturers in Europe.
So now where are we, in Europe, on design rights? Hopelessly dominated by very serious, very thoughful Asian and American holders of EU Design Registrations (and by the highly professional and very clever private practice law firms here in Europe that act zealously on their behalf).
The UPC? More of the same, perhaps? Do we in Europe never learn?
Dear Max Drei,
As you picked on my last contribution, I feel authorised to do the same. When you speak about “highly professional and very clever private practice law firms here in Europe that act zealously”, that applies exactly to the way the RoP of the UPC were concocted.
It was a small self-co-opted committee, mainly composed of very active IP lawyers from UK, Germany and France. They were the ones pushing, not the other members of the group. Those lawyers put great hopes in the UPC as they knew very well that with transnational litigation the fees they could claim would increase drastically.
When the UPC was brought on a halt, first with Brexit, later with the complaint before the Federal German Constitutional Court, they could see all the potential profits swimming away. No wonder they felt the need to bring out statements contradicting what they said after Opinion C 1/09 was issued, or even considering that those you were against the UPC were too stupid to understand all the benefits from the UPC. All this was on this blog!
Any small event which could potentially be blown out of proportion was good to broadcast. No later than in May, the announcement was made that the GFCC would decide by the end of the month. Now we hear it will decide before the end of the year. But we heard this the year before….
Harmonisation of IP in Europe, yes, but not with such a badly drafted agreement which is literally pushed down our throats. After all, the Luxembourg Convention never came to life, and everybody could leave with it. The reason for this is that in the meantime the CJEU had devised a wonderful instrument by which the fractioning of the “common market” trough patents was outlawed: exhaustion of rights. And European industry, and any other as well, could happily live with this.
Do we really need something like the UPC? After all, in all the member states of the EPC, the EPC has come into national legislation,. A better way to bring harmonisation is to make patent judges meet and gather regularly. This is already the case, and should be encouraged. And for the few transnational companies which would profit directly from the UPC, tough luck!
Techrights: FINGERS OFF!!!
Attentive has just drawn attention to the regular meetings of the judges of the most active patent litigation judges within the EU. He urges that we “make” them meet. I guess that no compulsuion is needed. My impression is that these judges thrive on debate, and seek out the highest, most testing, most challenging forms of debate. You can’t get much higher than debate amongst the leading patent judges of the leading jurisdictions, with each other. Just like lawyers, each leading voice asserts that his (and they are nearly all male) jurisdiction does it best, not only juridically but also (note this) procedurally. They love to “score points” in debate against each other.
These judges would convene anyway, without our obliging them to do it. And the result of their lively debates is better adjudication of patent disputes all over Europe. Can anybody remember how expensive and slow patent litigation used to be in England. It certainly ain’t slow any more. Much faster than, say, Germany, these days. And why is that? Could it be that litigants can choose where they litigate, which form of fact-finding they want/need, what style of decision-writing by the judge suits them best?
This incremental improvement in all EPC jurisdictions is the result of competition for work between hugely different procedure in the different leading jurisdictions, Cases speed up, costs get driven down, the quality of decision-writing by judges goes up, everywhere, when those decisions are liable to be critically reviewed by their peers in other jurisdictions. A virtuous circle, in fact. I am very proud, how Europe’s patent litigation just keeps getting better and better, and all thanks to the historical accident, that when the sovereign States back in 1973 could not swallow the idea of a UPC, they went ahead and did the EPC anyway. They didn’t know it at the time, but that has turned out to be the optimal way forward
if ever the CPC rolls into town, kiss Goodbye to all that. No more virtuous circle, I fear.
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