- comparison and interaction between the EPO appeal system and the national judicial systems 22 nd Annual Fordham IP Law & Policy Conference 24 April 2014, NYC by Dr. Klaus Grabinski Federal Court of Justice, Germany
I. European Patent System 1. European Patent Office Procedure up to grant Opposition/Appeal procedure Opposition has to be filed within 9 months after grant, Art. 99 (1) EPC Revocation of the European Patent 2. National Courts (separate proceedings or together in one proceeding) Infringement Revocation Revocation of the respective national part of the European patent 2
II. Overlap of jurisdiction 1. Validity of European Patents BoA decide on grounds for opposition pursuant to Art. 100 EPC. a) Lack of Patentability, Art. 52 57 EPC b) Insufficient disclosure, Art. 83 EPC c) Extension beyond the application as filed National courts decide on grounds for revocation pursuant to Art. 138 EPC a) Lack of Patentability, Art. 52 57 EPC b) Insufficient disclosure, Art. 83 EPC c) Extension beyond the application as filed d) Extension of scope of protection, cf. Art. 123 (3) EPC e) Non-Entitlement under to the European patent under Art. 60 (1) EPC (unlawful depriviation) 3
2. Infringement of European Patents BoA have to interpret patent claims before deciding on grounds for opposition pursuant to Art. 100 EPC. Interpretation of claims may also be necessary in order to avoid an extension of the scope of protection as required by Art. 123 (3) EPC. National courts have to interpret claims before deciding on patent infringement as on patent revocation. 4
III. Subsidiarity of Revocation actions? No, in a) U.K. Court of Appeal in Glaxo/Genentech [2008] Bus LR 888: stay should normally be refused if the question of validity is likely to be resolved significantly earlier. Supreme Court in Virgin Atlantic/Zodiac [2013] UKSC 46, para. 38: These guidelines should be reexamined. Court of Appeal in IPCom/HTC [2013] EWCA Civ 1496, para. 68: A stay of national proceedings may be refused if some commercial certainty would be achieved at a considerably earlier date. b) Netherlands stay of proceedings in the discretion of the court, sec. 83 Dutch Patent Act. c) France possibly stay of revocation proceedings, cf. Art. L 614-15 Code de la propriété intellectuelle. 5
III. Subsidiarity of Revocation actions? Yes, in a) Germany, sec. 81 (2) German Patent Act b) Austria, sec. 11 Austrian Patent Treaties Introduction Act (Patentverträge- Einführungsgesetz) 6
IV. Binding effect of BoA decisions to uphold the patent? No, in a) Germany, Bundesgerichtshof, decision of 4 May 1995 X ZR 29/93, GRUR 1996, 757 - Zahnkranzfräser b) U.K., Court of Appeal, 20 March 1998 Buehler Ag/Chronos Richardson, IIC 1999, 312 c) Netherlands d) Austria, 11 Patentverträge-Einführungsgesetz 7
V. Persuasive effect of BoA decisions? Yes, in a) Germany, Bundesgerichtshof, decision of 15 April 2010 Xa ZB 10/09, GRUR 2010, 950 = IIC 2011, 363 (English translation) Roller forming machinery (Walzenformgebungsmaschine): German courts have to take notice of decisions handed down by the divisions and boards of the EPO or by courts in other EPC contracting states and which essentially concern the same issue. If necessary, they have to address the grounds which led to a divergent result in the prior decision. This also applies when legal issues are concerned, e.g. obviousness, added matter or the doctrine of equivalence. 8
b) U.K., Supreme Court, judgment of 2 November 2011, Lord Neuberger, para. 84 Human Genome Science Inc. v Eli Lilly; judgment of 25 February 2009, Lord Walker para. 35 Generics (UK) Ltd v H Lundbeck A/S. In a number of recent decisions of the House of Lords, attention has been drawn to the importance of UK patent law aligning itself, so far as possible, with the jurisprudence of the EPO (and especially decisions of its Enlarged Boards of Appeal). National courts may reach different conclusions as to the evaluation of the evidence in the light of the relevant principles. There will be sometimes a Board decision which a national court considers may take the law in an appropriate direction, misapplies previous EPO jurisprudence or fails to take a relevant argument into account. 9
VI. Persuasive effect of decisions of national courts? Yes, TBA, decision of 15 November 2006 T 154/04 3.5.01, referring to EBA, decision of 5 December 1984 G 05/83 In the interest of national and international rules of law, the boards of appeal will take into consideration decisions and opinions given by national courts in interpreting the law. Nevertheless, in the proceedings before the EPO such considerations do not exonerate a BoA from its duty as an independent judicial body to interpret and apply the EPC... 10
VII.Example of harmonisation between EPO and German Courts: Computer implemented inventions Essentially same approach with regard to Technology requirement, Art. 52 (1) EPC A method meets the technology requirement when it is designed to process, record or transmit data by a technical apparatus. Patentability, Art. 52 (2) lit. c) and d) EPC A method is not excluded from patent protection only because it involves a computer program or a presentation of information as long as it has technical character/solves a technical problem Inventive step, Art. 56 EPC When assessing whether the invention involves an inventive step only those elements are to be considered that determine or, at least, influence the solution of the technical problem/are a technical feature. 11
VIII.Example for non-harmonisation: The inescapable trap 1. Patent claim as granted includes subject-matter that was not disclosed in the application as filed which is a ground for revocation, Art. 138 (1) c) EPC. 2. Can added matter be removed? 3. No according to EBA G 1/93 Deletion would result in an extension of the scope of protection after grant prohibited, Art. 123 (2) EPC. 4. It depends according to the German Federal Court of Justice (BGH - Xa ZB 14/09 Winkelmesseinrichtung) If the added matter leads only to a limitation to what has been disclosed as in invention in the application as filed it may remain in the claim but will be disregarded with regard to patentability (novelty, obviousness). If the added matter leads to a different invention ( aliud ) with regard to what has been disclosed as an invention in the application the claim has to be revoked. 12
IX. Conclusion 1. There is a different approach of national courts to deal with parallel pending EPO opposition proceedings. 2. In states where infringement and validity are decided in one proceeding courts tend to evaluate the timing of the opposition proceeding and stay when a decision in the opposition proceeding can be expected in reasonable time. 3. In states where infringement and validity are decided in split proceedings courts tend to evaluate the likelihood of success and stay when the opposition is very likely to succeed. 4. National courts tend to decide material patent law issues in favor of a harmonised approach but still differences remain with regard to some issues. 13