Patent litigation in Europe Gordon Harris Partner, Head of Intellectual Property

Patent litigation in Europe  An overview of patent litigation in Europe  Introduction to common law legal systems  Basics on patent litigation in the UK & US  Introduction to civil law legal systems  Basics on patent litigation in France & Germany  The future UP & UPC system

‘Common law’ origins System for resolution of disputes with routes in England reaching back to Anglo-Saxon times; Oral tradition; oral evidence Continued after the Norman conquest of 1066 Changes successively introduced – the seeds of the modern system were sown by Henry II, who ruled from 1154 to : Assize of Clarendon ordered judges to travel the country and replaced many local customs with new judge- made law that was ‘common’ to all in the country Accusatorial system; pleadings Judges experienced advocates

England & Wales – outline of the modern legal system English ‘common law’ legal system - Sources of law - judge made law - judges’ interpretation of codified law which binds lower courts and later decisions of the same court - Judicial decisions binding on lower and later courts - Generally, everything is permitted that is not expressly prohibited - Oral hearing of disputes; oral testing of evidence - Judges experienced advocates - Service by litigants on litigants; disclosure

England & Wales – patent disputes Disputes regarding validity and/or infringement must be brought in 1) High Court (Chancery Division)’s Patents Court, or 2) Intellectual Property Enterprise Court (IPEC) - Court involvement in case management - Standard rules govern disclosure, evidence (including fact, expert, experiments) with some narrowing; tailored - Generally one oral hearing on the merits, although written evidence in chief and skeleton arguments used too - Approx months to first instance trial

Common law reaches England & Wales Former British colonies or protectorates including - - Ireland, United States (except Louisiana), Canada, Australia, New Zealand, South Africa, Singapore, India (most states), Hong Kong, Bangladesh, Pakistan, Israel, Uganda Scotland has a hybrid system

US – a common law system Similar early history and underlying principles to the English legal system Independence & written constitution Some aspects of the common law system have since diverged. For patent disputes this leads to some notable differences with English procedure; - greater use of preliminary hearings for evidence & law - disclosure – more extensive in US patent disputes - juries – play a role in patent disputes in some states Much similarity remains

Civil law legal systems Most of continental Europe Former colonies or protectorates of continental European countries including – - Angola, Bolivia, Brazil, Chile, Congo, Guinea, some Indian states, Lebanon, Libya, Vietnam, Venezuala East Asian countries – China, Japan, South Korea

Civil law systems – typical features Written constitution based upon specific codes; courts specific to underlying codes Only legislative enactments binding for all - notable exceptions eg tort law in France Fairly brief judicial decisions Writings of legal scholars can influence the courts Judicial career an alternative to, rather than the culmination of, an adversarial legal career Judicial panels may include technical judges or experts

Civil law systems – typical features Compared to common law systems generally - more prescriptive - more inquisitorial - greater use of inquisitorial procedures, disclosure not used - court service of documents more common/compulsory - less reliance on oral hearing - less weight given to parties’ evidence - less reliance on single substantive hearing - greater consideration of disputes upon the papers

France – patent disputes First Instance Court of Paris has exclusive jurisdiction over patent disputes regarding infringement/validity - court investigative procedures employed eg saisie contrefaçon; no disclosure - litigation procedure mostly in writing, the trial being an opportunity for lawyers to emphasise and synthesise key issues of the case - no cross-examination of fact /expert witnesses - approximately 24 months to 1 st instance decision

Germany – patent disputes Bifurcated system - 12 regional courts with jurisdiction re infringement - nullity actions must be brought at the Federal Patent Court Facts and evidence included with initial filing Court directs schedule of written procedure No disclosure; other mechanisms eg Düsseldorf Praxis Oral hearing of approx. half a day; court indicates the issues to be considered explored 9-15 months to first instance judgment

Partial harmonisation of patent law in Europe European Patent Convention 1973 resulted in some harmonisation of the law relating to patents: - European Patent Office (EPO) - European patents – EPO grants bundle of national patents; centralised opposition - criteria for validity i.e. novelty, inventive step, sufficiency - infringement & post-grant validity a matter for national courts Community Patent Convention attempt to create a unitary right which failed, but much harmonisation of codes relating to infringement resulted

Patent grant and litigation in Europe – the present National patentsEuropean Patents Prosecuted in and granted by national IP offices for individual country Prosecuted in and granted by European Patent Office (EPO) for countries ‘designated’ by the applicant Eg UKIPO grants UK Eg EPO grants EP(UK) , EP(DE) , EP(NL) etc National in scopeEach designation of the EP is national in scope Each country has its own courts, law (despite partial harmonisation of code), traditions, and litigation procedures Each country has its own courts, law (despite partial harmonisation of code), traditions and litigation procedures

Patent grant and litigation in Europe - the future Agreement on a Unified Patent Court (UPCA) signed by 25 participating member states of the EU - not all EU states - not signed by Spain, Poland [and Croatia] - not all EPC states – the 10 non-EU EPC states not eligible Open to all EU member states to accede to the system System will come into force 4 months after ratified by 13 th participating state including France, Germany & UK - so far, ratified by France, Austria, Belgium, Denmark, Malta Sweden, Luxembourg, Portugal Will come into force in countries that have ratified

EPC states (green) EPC state

EU Member States (yellow) EPC state EU member state

UPCA signatories (orange) EPC state EU member state UPCA signatory

UPCA signatories which have ratified so far (red) EPC state EU member state UPCA signatory UPCA ratified

Court of Justice of the European Union (CJEU) Luxembourg Court of Appeal Luxembourg Court of First Instance Registry Luxembourg Central Division Local DivisionsRegional Divisions Sub-Registries Seat Paris Physics & Materials Section London Life Sciences & Chemistry Section Munich Mechanical & Engineering Located in Contracting states Any subject matter For two or more contracting states Any subject matter Court structure

Unitary Patent Ratification of the UPCA will also trigger the Unitary Patent Regulation coming into force Unitary Patent (UP) - - a sole, unitary patent right with effect across relevant countries - within the exclusive jurisdiction of the UPC Relevant countries are those which have, at the date of patent grant - joined the Enhanced Cooperation group - ratified the UPCA

Patents with unitary character EP – non UP statesEP – UP statesUP (UP states only) Prosecuted in & granted by EPO Eg EP(ES) Eg EP (UP) Eg UP Each designation of the EP is national in scope EP (UP) designations have unitary character across UP states at relevant time - Granted EPs, pending EPAs, new EPAs UP granted covering signatory states at relevant time Each country has its own licensing laws, courts and litigation procedures Opt-out: each country’s own laws, courts for duration(?) No opt-out: UPCA/UPC and national property laws, default German law UPCA/UPC and national property laws, default German law

Language of UPC proceedings Parties may agree to use the language of the patent; President may impose language of patent following application from one party (Article 49) Revocation action: - Central division = language of patent (Rule 46(1)) unless parties have agreed to bring the action before a local or regional division (R46(2)) - Possible translation requirements (Rule 271(7) and Service Regulation 1393/2007), power to dispense (Article 51(1)), interpretation facilities (Article 51(2)). Declaration of non-infringement - Central division, language of patent

Language of UPC proceedings Infringement action - Central division - Language of patent, but possible translation requirements (Art 51(3), Rule 271(7), Service Regulation) - Local/regional division - Designated language of division; where more than one designated language it is Claimant’s choice but Rule 14(2)(b) - for domiciled defendant where no jurisdiction elsewhere by infringement location, D’s local language - Preliminary objection (Rule 19) - note President may decide on use of language of patent Art 49(5) - Counterclaim for revocation – implications of bifurcation/retention

Expected local divisions & designated language(s) Expected local divisionExpected designated language(s) UK x2 (London, Scotland)English Germany x4 (Düsseldorf, Munich, Mannheim, Hamburg) English & German France (Paris)English & French Netherlands (The Hague)English & Dutch Denmark (Copenhagen)English & Danish Belgium (Brussels)English, German, French & Dutch Finland (Helsinki)English, Finnish (& Swedish?) Italy (Milan)Italian IrelandEnglish AustriaGerman

Expected designated language of regional divisions Expected regional divisionExpected designated language(s) Sweden, Lithuania, Latvia, Estonia (Swedish-Baltic regional division, Stockholm) English Romania, Bulgaria, Cyprus, Greece? Slovenia? Czech Republic, Slovakia? Hungary ? Croatia? ?????? Portugal??

UPC system Hybrid system of litigation - Judges - Cross-examination & disclosure available but oral proceedings expected to be briefer than English system, with greater reliance on written submissions - Pleadings more akin to IPEC / German system than traditional English system - Bifurcation possible but not mandatory - Court service of documents

UPC Rules - structure The Rules of Procedure are in their 18 th draft 382 Rules: Parts, Chapters, Sections, Rules - application and interpretation of the rules (1-9) - procedures before the court of first instance (10-159) - evidence ( ) - provisional measures ( ) - procedures before the court of appeal ( ) - general provisions ( ) - fees and legal aid ( )

UPC Rules – procedure Opt-out - a race Service & supply of orders, decisions, written pleadings and other documents service - by the Registry “as soon as practicable” - for written pleadings this is after examination by the registry for compliance with relevant rules - estimates for procedural timetable factor in no delay at the registry Court fees remain to be fixed

UPC Rules – procedure A claim is initiated by filing a Statement of Claim - an expansive document - includes argument, facts relied upon and supporting evidence The subsequent written procedure: - defence; reply to statement of defence; rejoinder to the reply Judge-rapporteur manages the ‘interim procedure’, then the ‘presiding judge’ takes over management After service of the statement of defence, judge- rapporteur to consult with the parties and set dates of interim and oral hearings

UPC Rules – interim relief Application for ‘provisional measures’ may be filed before or after main proceedings on the merits filed - again, an expansive document - examination stage, possible oral hearing - protective letters can be filed by a defendant who anticipates an application for provisional measures - how quickly can an interim injunction be obtained in urgent cases?

UPC & UP: issues of concern Opt-out Interim injunctions Court fees UP renewal fees Entry into force unlikely before 2017