The need for a common European patent protection
In contrast to many areas of law with cross-border implications, patent law in the European Union mostly has remained stuck in the territoriality principle. Each EU member state is responsible for granting and enforcing patents. It is true that there is an international treaty, the European Patent Convention (EPC), which centralizes the granting process of a bundle application at the European Patent Office (EPO). However, this also results in national patents alone.
An international treaty for a multinational patent analogous to the EPC does not exist. In the EU treaties, there is a primary legal basis for a common protection of intellectual property in Art. 118 TEU. However, this has not yet been used for operational cross-border regulations for patents. The existing secondary legislation, in particular the Brussels Ia Regulation, does not provide a starting point for this either.
This was different at the beginning of the century. On the basis of the Brussels Convention on jurisdiction and enforcement (a predecessor of the Brussels Ia Regulation), it was possible as the owner of a patent to sue an infringer at the latter’s general place of jurisdiction (i.e. his domicile or seat). This was known as the spider-in-the-web-doctrine. In addition, it was possible to bring a patent infringement action at the place of the damaging event or, on the basis of the forum of litigation, also at the general place of jurisdiction of another defendant. In principle, this is still possible today on the basis of the Brussels Ia Regulation.
However, the practical realization of such cross-border proceedings has come to a standstill due to two decisions of the ECJ.
In a first decision, the ECJ ruled that the national splinters of a European bundle patent, which would be infringed in different contracting states, cannot be enforced on the basis of their contiguity before a single member state court, for example at the place of jurisdiction of the headquarters of the alleged infringer (ECJ, July 13, 2006 – C-539/03, Roche Nederland et al. v. Fredrick Primus and Milton Goldenberg). On this basis, cross-border infringement proceedings are excluded. This nullified the spider-in-the-web-doctrine.
In a second decision, the ECJ ruled that the assessment of the validity of a patent is subject to the exclusive jurisdiction of the relevant courts of the state in which the patent was granted. This applies irrespective of whether invalidity is asserted by way of an action or by way of a defense in infringement proceedings (ECJ, July 13, 2006 – C-4/03, GAT v. LuK). As soon as a defendant raises a corresponding objection in infringement proceedings, the infringement court in a foreign country relative to the country in which the patent was granted must stay its proceedings until the court with exclusive jurisdiction over the validity of the patent in suit has ruled on the validity of the patent in suit. This was adopted accordingly by the European legislator in the Brussels Ia Regulation without linking the defense to further preconditions, e.g. by defining a time limit within which an action for revocation would have to be brought. Correspondingly destructive for cross-border infringement proceedings, a plea for invalidity of the patent in suit can be filed without the infringing defendant asserting the plea being obliged to actually challenge the existence of the patent.
A cross-border nullity action is also not possible due to the lack of a European jurisdiction for assessing the validity of patents. The only remaining alternative for a European bundle patent is an opposition at the EPO according to Art. 99 EPC. However, this must be filed within a period of nine months after grant and thus often does not offer a permissible means of depriving a patent infringement action of its basis.
In order to provide cross-border patent protection, work has long been underway to detach substantive and procedural patent law from the territoriality principle and to offer a European Unitary Patent together with corresponding jurisdiction for infringement and validity of the Unitary Patent. The EU Unitary Patent, which is currently in the ratification process together with a Unified Patent Court, is the latest version of these efforts. It would offer considerable opportunities to effectively protect technical inventions in addition to national patent protection.
Author: Dr. Martin Kuschel
