An inside view of the patent microcosm

The first article was written [5] by Jochen Pagenberg and is called “EUCJ - Little Hope for an EU Patent Court after the CJ Opinion”. It was posted about one month after the European Court of Justice (ECJ1 [6]) Opinion on the incompatibility with EU Treaties of the unified patent litigation system, as envisioned previously by the Council. In this post, Pagenberg gave his view about what can be accepted as the way forward. One week later, Winfried Tilmann replied [7] with an article called “EUCJ - More Hope for the European Patent Court”, based on his own interpretation of the ECJ Opinion, which he had already published [8] on the EPLAW Patent Blog. Finally, ten days later, Pagenberg came up with a reply [9], in a third post called “EUCJ - New Hopes for a European Court?”, on points where both lawyers' interpretations were differing.

So, what are these “hopes” for an EU Patent Court? Why is there a need for “hopes” in the first place? And why could there be “little”, “more” or “new” hopes? The answer is straightforward when one considers whom these hopes are for. Indeed the point of view expressed in this series of posts is the one of European patent lawyers. As the title of the present article suggests, these are players of the “patent microcosm”2 [10]. Therefore, their hopes are to work in a European patent system which would best fit their own interests.

In the views of members of the patent microcosm, the current European patent system is not working in the best way. On the one hand, they are certainly very happy to have the European Patent Office (EPO) as a one-stop shop for the granting procedure; through the case law of its internal Boards of Appeal (BoAs), the EPO has been able to gradually extend patentable subject matters, opening up some new markets for patent practitioners. Also, the governance of EPO has been the subject of many critics [11], notably due to the fact that the EPO supervisory and legislative body, the Administrative Council of the European Patent Organisation (EPOrg), is almost entirely composed of heads of national patent offices (NPOs), more or less competing with each other, since half of the renewal fees receive by EPO is redistributed to NPOs. This has been denounced [12] to lead “EPO administration to focus on the quantity rather than the quality of the granted patents”. But the patent microcosm seems to be very satisfied with that.

On the other hand, and while they have made the EPO itself a member of the “patent microcosm” in its own right, these reasons of satisfaction for the patent microcosm are limited to the pre-grant stage of European patents. Once a European patent has been granted, it is dispatched in many national patents, which are to be enforced before each and every national court. In no way such regular national courts can bee seen as being part of the patent microcosm. Thus, the patent microcosm hopes to build up a unified jurisdiction where European patents would be enforced, once for all, for the whole territory of all Contracting States. And of course, if this Court was built up inside the patent microcosm, this hope would become a perfect dream. Conversely, the patent microcosm's nightmare would be a unified court outside of its realm. The substantive issue for the patent microcosm is to have a unified Patent Court that shares its way of thinking and its interests, that is: an extra-judicial patent litigation system.

The European Patent Litigation Agreement (EPLA) was the previous attempt to make the patent microcosm's dream come true. EPLA was a project drafted by the EPO to set up a unified jurisdiction which would have shared governance body with EPO and where judges would have been members of EPO Boards of Appeal (BoAs). No doubt that every dubious patent granted by the EPO would have been easily enforceable before the EPLA Court. Unfortunately for the patent microcosm, the EPLA dream was killed by the requirement for European Union to be part of the agreement, since patent law is partialyincluded in the EU acquis.

So the next attempt to build up a unified patent jurisdiction, called European and European Union Patent Court (EEUPC) was proposed by the European Commission and the Council of EU. It was more or less the same proposal as EPLA, with the difference that EU would have been part of the agreement and that this patent court would have got exclusivity for litigations not only on traditional EPO European patents, but also on what was called at the time “EU patents”, which have become “unitary patents” now that the hope to cover the whole EU has vanished into an enhanced cooperation process.

But that was until a regular court – the ECJ, a court which is outside the patent microcosm for sure – had the opportunity to give a legal opinion about the EEUPC project. On March 8th 2011, the ECJ stated [13] that EEUPC “would alter the essential character of the powers which the Treaties confer on the institutions of the European Union and on the Member States and which are indispensable to the preservation of the very nature of European Union law”.

So the discussion between the two members of EPLAW is all about examining the consequences of the ECJ Opinion and how to overcome the concerns expressed by the Court in order to still build up a unified patent court which would be as close as possible to the patent microcosm's dream, and of course as far as possible from its nightmare. To say it another way, on the patent microcosm's dream scale, is there still little, more or new hopes?

As Pagenberg and Tilmann agree, the main objection raised by the ECJ was that the envisaged EEUPC would have been outside the EU legal and jurisdictional framework. Therefore, both also agree that any solution should be drawn with EU Member States only, excluding countries which are contracting States of the European Patent Convention3 [14] (EPC), but which are not included in EU. Both lawyers do not seem to have any objection about such a restriction. After all, who does really care about Switzerland, Liechtenstein, Monaco, Turkey, Iceland, Croatia, Norway, Macedonia, San Marino, Albania or Serbia?

The other point of agreement between Pagenberg and Tilmann is a bigger concession. The point is that:

The decisions of the EPO concerning patents can only currently be reviewed by the internal chambers of appeal created within the EPO, excluding any judicial appeal before an external court. There is no possibility of the European Court of Justice ensuring the correct and uniform application of Union law to proceedings taking place before the chambers of appeal of the EPO. […] The European Union should not either delegate powers to an international body or transform into its legal system acts issued by an international body without ensuring that effective judicial control exists, exercised by an independent court that is required to observe Union law and is authorized to refer a preliminary question to the Court of Justice for a ruling, where appropriate […] The draft agreement, read in the light of all the measures contemplated concerning patents, does not satisfy the requirement of ensuring effective judicial control and a correct and uniform application of Union law in administrative proceedings concerning the granting of Community patents.

Actually, this point doesn't come directly from the ECJ Opinion, since the ECJ didn't say a word about this. But it was raised by the opinion of the Advocates General [15]. The silence of the ECJ comes from the fact that this precise issue wasn't referred to the Court and that there was no need for the ECJ to examine the topic in order to conclude on the overall incompatibility of the envisaged EEUPC with EU Treaties. Nevertheless, both Pagenberg and Tilmann seem to find that the Advocates General's objection is still valid. Tilmann even considers that “in view of the existing obligation on the EU-EPC Member States (the great majority of the EPC membership) arising out of Art. 267 TFEU to refer relevant questions to the EUCJ, and applying the rules of the Vienna Convention on the Law of Treaties regarding the binding effect of a membership's practice for the institution administering a Treaty, the EPO is already at present entitled and indeed obliged to refer such questions to the EUCJ”.

Since decisions of EPO internal Boards of Appeal have driven the European patent policy over the last decade, an overview by an independent court can only be, in our views, very welcomed. Maybe Winfried Tilmann is right that EPO is already required to refer relevant questions to the ECJ, but for the sake of legal certainty this should be clearly spelled out. We have proposed [16] an amendment for this purpose stating that “The participating Member States shall ensure effective legal protection before a national court against any administrative decision of the European Patent Office”.

The main disagreement between Pagenberg and Tilmann lies in the means to achieve their dream. That is: how to comply with requirements spelled out by the ECJ while keeping up with the dream to end up with a unified patent litigation system that would be as much as possible inside the patent microcosm? The ECJ has ruled that such jurisdiction could not escape the guarantees set up in EU jurisdictional order to comply with EU law. Usually, the proper interpretation and application of EU law lies in the cooperation between national courts and the ECJ. National courts have to refer to the ECJ issues that could potentially be in conflict with EU law. Some penalties could be imposed to Member States that have failed to refer to the ECJ for a preliminary ruling, or that have passed regulations or judgements contrary to EU law. The impact is that any unified patent litigation system would have to also refer issues to the ECJ and Member States should be held liable for not doing so and for any breach of EU law by the patent court. Therefore the question that divides the two EPLAW members is: what should be the subject of a mandatory referral to the ECJ?

Tilmann's opinion is that such matters are limited to interpretation of EU law, and that the patent microcosm “must not fear the EUCJ interfering to a substantial degree with the practice of the [patent court]. The EPC-rules will not have to be referred by the PC to the EUCJ as long as the EPC has not incorporated EU law (BioTech-Directive) and as long as the EU will not become a member of the EPC.” He also lists – non exhaustively — elements of EU law that “such jurisdiction cannot avoid applying (Enforcement Directive, BioTech Directive; Proof rules; Brussels Regulation etc.)”

On the contrary, Pagenberg fears much about an overview by the ECJ of the unified patent litigation system. He doesn't want at all the ECJ to become “a third instance in questions of interpretation of substantive patent law”. Thus his deepest fear is to have substantive patent law becoming part of the EU legal order, which is something that “can perhaps not be prevented”.

It should be noted that in his first post, dated before the Commission has published its regulation implementing enhanced cooperation in the area of the creation of unitary patent protection [17], Pagenberg was thinking that it could happen because “The Unitary patent as it is being contemplated will be an EU title, even if it will not cover the whole EU […] even if the grant of an EU patent is not an act of EU law, one could expect that after its coming into existence it will be judged during its further life under EU rules”. While on his reply to Tilmann's critics, that was written after the Commission's proposal was known, he concluded that after all “the Commission’s latest proposal for a Regulation does not include the grant of an EU title anymore which is granted by the EPO”.

Anyway, the issue of substantive patent law becoming part of EU law seems to be very sensitive, judging by the strong words used by Pagenberg against it:

If an unrestricted access of EU instances to patent law is institutionalized, with respect to procedure as well [as] the underlying substantive law to be applied, this would open the door to a new legal order of patent law within the EU. […] This would have the consequence that the CJ would in the future have competence – except in case of clear rules to the contrary – to decide on a great number of substantive law issues of the EPC whenever Unitary patents are at stake. This would considerably extend the competence of the CJ and the Commission into the field of European patent law, and users would be confronted with concepts of “EU inventive step”, “EU scope of protection”, “EU equivalence“ developed by the case law of the CJ. And would the EPO not follow the interpretation of the CJ also with respect to EPC patents, as would the national courts, even if EPC patents have to be judged?

The reasons for this strong position against the integration of substantive patent law inside EU legal order seems to come from a mixture of conservatism and corporatism:

If one does not wish to see patent law as it has been developed and shaped by specialized judges over the last 40 years turned upside down, clear rules must be laid down which define the effects of the future patent rights. If such a project is to remain attractive for users, one must definitely oppose any solution which will change the EPC and which would make its interpretation unpredictable and more costly than it is today. This means that one must work out a solution which maintains the most important corner stone that only experienced patent judges can decide on patent infringement and validity, and this within the shortest possible time and at most affordable cost. This will not be possible with a patent court system integrated into the EU legal order.4 [18]

To make it short, Pagenberg does not trust regular — i.e. not specialized on patents — courts like the ECJ. He thinks that courts which do not belong to the patent microcosm would destroy what has been build for so many years by the patent microcosm itself. Instead Pagenberg wants patent litigations to be settled by patent "judges" whose rulings can be predictable, otherwise he clearly spells out the death of the unitary patent project:

when questions of inventive step and claim interpretation are decided by judges in the CJ who lack patent experience and the technical and legal understanding, which in patent law is a basic requirement for a predictable decision, the system would lose one of its most attractive features, and users will lose interest before the system even takes shape.

Such a distrust of ECJ judges is not surprising coming from the patent microcosm. Actually that's exactly the behaviour described by the director of the legal service of the Council, to depict a microcosm, see footnote 2 [19]: the intervention of a judge who “does not feel bound by habits, assumptions and doctrine”, is seen as “the intrusion a bull in the china shop”, showing “disrespect to the practices of a discipline, I would almost say a corporation, already old”5 [20] As a side note, this description was actually taken from the experience with the Community Trade Mark litigation system, where specialized judges have to cope with to a review by the ECJ. It is quite telling to see [21] that the experience Jochen Pagenberg has with the ECJ with regard to trademarks litigations is one hundred percent of lost cases. Maybe that could explain why he wants to prevent the ECJ to pry into the ten of thousand patents and patent applications filed [22] by his law firm at the EPO.

But even if referrals to the ECJ were limited to points of law, Pagenberg finds that this would be too long, too expensive and too unpredictable. This is true. Such an overview will delay proceedings until the ECJ has given its answer on the compliance to and on the interpretation of EU Law. So it is true that this could increase time and costs of a patent litigation. And if the ECJ answer was predictable, there would be no point in referring a question to the ECJ. But if one goes this way, wouldn't costs, time and predictability of patent litigations be optimal without any judge at all? What is at stake is potential breach in EU Law. Whatever costs and time it should take, checking compatibility with EU law is not avoidable but has to be done. The opinion of the ECJ concluding to the incompatibility of the envisaged unified patent jurisdiction proves that such a check cannot be bypassed. Sorry if this doesn't fit with the patent microcosm's dream.

Pagenberg has an idea to set up a unified patent jurisdiction outside of the ECJ “intolerable” requirements: forget about a jurisdiction inside the EU framework, and go for EPLA! This idea comes from an issue that the ECJ has not raised but that was in the Advocates General's opinion [15]:

60. We should first point out that it is not the competences of the future PC concerning the European patent that pose a problem here: in fact, judicial competences concerning the European patent have always been exercised by the national courts; the Member States are therefore free to assign them to an international body, created by mutual consent and having the vocation of being “their” common court.

Just after the Advocates General's opinion was leaked in August 2010, Pagenberg has read into the above provision [23] to be a green light for an EPLA revival no later than in September 2010:

This reads like an official rehabilitation of the members of the EPLA Working Party who during the discussions on EPLA before 2006 had been accused by the representatives of the Commission at that time of having no right and competence to negotiate without the authorization of the EC alleging that only the European Community had competence for creating an international court, even if only a few members of the Community were willing to join. Now the AGs take exactly the opposite view, and it will be interesting to see where the ECJ stands.

And according to him, since the ECJ hasn't addressed this issue, even stating [24] that “the question at the heart of this request for an Opinion concerns not the powers of the PC in the field of the European patent, but its powers relating to the future Community patent”, the Advocates General's opinion stands, and EPLA is the way to go…

But Winfried Tilmann disagrees. For him, the final paragraph of the ECJ Opinion [13]6 [25] cannot be understood to not encompassed “a centralised European patent jurisdiction (like EPLA). Such jurisdiction cannot avoid applying EU law (Enforcement Directive, BioTech Directive; Proof rules; Brussels Regulation etc.) and, therefore, would also ‘deprive’ the national courts of their ‘power and obligation’ to cooperate with the Court in the interpretation and application of EU law.”

According to our analysis [26] of the ECJ Opinion, Mr. Pagenberg has missed a point. Actually the ECJ has said [27] something about an international court system like EPLA, and this was a clear negative answer:

80. While it is true that the Court has no jurisdiction to rule on direct actions between individuals in the field of patents, since that jurisdiction is held by the courts of the Member States, nonetheless the Member States cannot confer the jurisdiction to resolve such disputes on a court created by an international agreement which would deprive those courts of their task, as “ordinary” courts within the European Union legal order, to implement European Union law and, thereby, of the power provided for in Article 267 TFEU, or, as the case may be, the obligation, to refer questions for a preliminary ruling in the field concerned.

It should be known that Jochen Pagenberg was one of the main proponent and supporter of EPLA [28] and he was very dissatisfied [29] when the European Commission decided not to support such a solution because they thought that Member States could not sign such an agreement alone without infringing on EU competences. Therefore, as soon as the Advocates General mentioned that such an agreement was outside of the EU outlook, he jumped on the oppportunity to push for an EPLA revival, and repeated [30] over [31] and [32] over [33] that this was THE solution. Maybe that's what has made him blind to the ECJ own words?

The EPLAW blog has published a resolution and position paper on proposals for unitary patent and the European patent court [34] which confirm what we have just defined as their main dream: building up an extra-judicial unified jurisdiction, with no regular judges but their own people belonging to the patent microcosm. It is now interesting to see whether their position has been spread inside and accepted by the EU institutions. As we have seen, the idea of an EPLA revival is mainly and almost exclusively pushed by Dr. Pagenberg. This eminent lawyer, despite his poor scoring before the ECJ with regards to trademark litigations, seems to have some influence. His curriculum vitae [35] is indeed impressive: “Jochen Pagenberg is member of the advisory committee of the German Federal Ministry of Justice set up to discuss matters of European patent law. He has served for many years as an expert and sole attorney of the European Working Party for the European Patent Litigation Agreement (EPLA) and has been appointed as a member of the Expert Group as one of five attorneys from the EU. In 2009 Jochen Pagenberg was elected President of the European Patent Lawyers Association (EPLAW) after having served as its vice-president for four years. He is chairman of the special committee on European patent litigation of the AIPPI.” As an expert advising the European Commission [36], it could be interesting to see if its idea of an EPLA revival has found its way towards the Commission's plans. So let's use this idea of an EPLA revival just like a isotopic tracer [37].

We can actually find a first trace of the idea of an EPLA revival, a couple of weeks after the ECJ Opinion, during a meeting of the Legal Affairs (JURI) committee of the European Parliament. The chairman of JURI, Klaus Heiner Lehne, asked the following question to the Commission:

First of all, we know what's happened: there are thoughts being thought in the Commission on the [European] Patent Litigation Agreement, breathing life into that. And then if… Well I mean I suspect that's should be the case. And if it's not the case, well why not?

It is not very surprising that Mr. Lehne was the first communication channel, considering that the conservative German Member of the European Parliament (MEP) is also well known [39] as being employed by Düsseldorf law firm Taylor Wessing [40] as well. And the unitary patent and its unified jurisdiction are clearly on the radar [41] of Taylor Wessing, which already has a record for lobbying the European Parliament [42] about patent issues. It is not unrealistic to consider Klaus-Heiner Lehne as a member of the patent microcosm. It is therefore worrying to see that JURI elected him as rapporteur on the dossier about jurisdictional system for patent disputes, even if it is still uncertain that the European Parliament will ever have a word to say about this dossier7 [43].

One week after, the idea of an EPLA revival was included in a written question [44] to the Commission by the conservative Czech MEP, Jan Březina:

Is it an option for the Commission to revive the European Patent Litigation Agreement (EPLA), which was a predecessor to the solution finally adopted?

As a side note, it should be mentioned that the very same written question also explicitly asked:

Is a new court system needed to make software patents more enforceable in Europe?

The Commission hasn't even addressed the question of an EPLA revival in its answer to this written question, merely admitting [45]

At this stage, the Commission is analysing the opinion of the CJEU and is examining available options and the Commission has not yet taken a position on this matter. It is thus too early to provide the Honourable Member with a definitive answer to his questions relating to the next steps in this file.

This doesn't help much in weighting the influence of the patent microcosm on the Commission. But at least, it can be said that the Commission doesn't take the ideas of the patent microcosm at face value.

More interesting is the reply to Mr. Lehne's oral question by Ms Margot Froehlinger, Director of DG Intellectual Property of the European Commission:

As far as the [European] Patent Litigation [Agreement] system is concerned, the so-called EPLA, we have of course… we are considering this among all the possible options. But going back to the EPLA is not really an option. I would like to recall [that] the European Patent Litigation system, the EPLA, was a common court which was to be set up by a group of Member States, only one third of our Member States, together with Switzerland, and it would have dealt with European patents only. We think it would not be possible, especially not on the basis of the opinion of the European Court of Justice, to entrust a unitary patent protection to something like the court which would have been set up by the European Patent Litigation Agreement. So that would mean that if we want to go back to the EPLA, we would have to abandon the unitary patent protection and create an EPLA type of patent for European patents only. But then we would be again in a situation where we solve only part of the problem. We would create a unified Patent Litigation system for classical European bundled patents, but we could not create unitary protection which is so important in order to reduce costs and complexity for European operators, and especially for our European SMEs. So we think going back to the European Patent Litigation system would be a deadlock, Mr Chairman.

This is a clear failure of the idea of an EPLA revival: the Commission just doesn't buy it! Nevertheless it would be premature to conclude on a weak influence of the patent microcosm on the Commission. The fact is that, even all of their propositions are not taken over, the patent microcosm has at least the opportunity to expose them to the European Commission.

This is confirmed by a post [47] on Jochen Pagenberg's own professional web site, where is related a meeting between the Commission and the expert group composed by some patent judges and attorneys, including Mr Pagenberg – i.e. high representatives of the patent microcosm. It is quite disturbing to see that words reported are exactly the same as those of Pagenber's answer to Tilmann on the EPLAW patent blog. On EPLAW patent blog, about the key issue of substantive patent law being fully included into the EU legal order, Pagenberg was explicitly trying to influence the Commission's agenda:

Much will depend […] how much of the EPC substantive patent law and the harmonized national rules for the “post grant” life of the patent will be entrusted to the CJ as part of the EU legal order. It would therefore be the task of the Commission – with the help of the interested circles – to define exhaustively the areas which would be subject of referral, and describe at the same time by way of non-exhaustive examples the excluded areas of which the patentability conditions, revocation grounds and rules on interpretation and scope of protection are only a few. The goal should be that the EU legal order in patent law should neither be restricted nor expanded by the entry into force of the Agreement and the Regulations connected with it.

And on his professional website, he reported that the expert group of patent judges and lawyers, which Pagenberg belongs to, has advised the Commission that:

by the creation of the unitary patent and the jurisdiction system the present scope of the EU legal order in the field of patent law should neither be restricted nor expanded.

If, as of today, the Commission doesn't seem to embrace every suggestion of the patent microcosm, there is nonetheless a worrying acceptance that the unitary patent should be set up in the interests of the users of the patent system.

This is a major failure coming from a regulating body. A patent is a very powerful legal title giving its owner a – temporary – monopoly allowing her to exclude competitors. Users of the patent system are patent owners and their representatives, i.e. attorneys from inside the patent microcosm. And their primary interest is to get the broadest exclusion as possible over as many subject matters as possible. In order to balance this exception to free competition, society is expected to gain from disclosure and incentives to innovate. Therefore the role of the European Commission, and above all of the EU legislator, i.e. the Council and the European Parliament, should be to guarantee that the interests of the EU society and the EU economy, as a whole, are preserved. Instead of discarding options because, as written black on white in the Commission non-paper [48]: “The first two options would appear not to meet […] the interests of the users of the patent system. […] This is one of the reasons why the users of the patent system are opposed to such a solution. […] Strong opposition to such a solution has continuously been voiced by the users of the patent system […] In the interest of the users of the patent system”, etc., any jurisdiction competent for patent litigations should be able to take into account not only patent law, but also potentially conflicting rights, such as competition law or fundamental rights and freedoms.

As for the incorporation of substantive patent law into the EU legal order, we do not share the patent microcosm's views and we do not think that neither the Commission, nor the European Parliament, nor the Council, should work exclusively “with the help of the interested circles”. On the contrary, we have proposed a series of amendments [16] precisely with the aim of strongly reaffirming the power of the EU to define an innovation policy that would benefit European economy, society and citizens – and not only to those of the patent microcosm. We are in the opinion that this cannot be achieved if powers with regards to the patent law are delegated to an institution which lives outside the EU legal and political order. Therefore, the unitary patent should be clearly defined as an EU legal title, in conformity with the legal basis authorizing the regulation on the unitary patent8 [49]. Moreover, the legislative power of the EU with regard to substantive patent law should be guaranteed.