Dr. Thomas W. Reimann IP Practice in Japan AIPLA Midwinter Meeting Las Vegas, January 2012 Latest Patent Development in the European Union

Overview Unified Patent Court and Unitary Patent Protection Latest developments in litigation cases Doctrine of Equivalence – reshaped but still alive News on FRAND Design Rights – fast track to an injunction? © AIPLA

Unified Patent Court and Unitary Patent Protection - Development 1975/1989: (Amended) Community Patent Convention  not ratified : Proposals for Community Patent Regulation  failure to agree on details 2005 – today: new debate – still no final decision: February /March 2011: enhanced cooperation procedure introduced (EU Member States except Spain & Italy) March 2011: CJEU: creation of a Unitary Patent Court incompatible with EU law May 2011: Italy & Spain sue against trilingual system September 2011: Parliament approves continuation of negotiations © AIPLA

Unified Patent Court and Unitary Patent Protection - Development November 2011: Draft of the Agreement is published 5. December 2011: Competitiveness Council fails to agree on final text 16. December 2011: Polish Presidency acknowledges failure to reach an agreement February 2012: decision to be expected??? 3 basic components: 1. Proposed Regulation for the creation of unitary patent protection 2. Proposed Regulation regarding applicable translation arrangements 3. Draft Agreement regarding Unified Patent Court and Draft Statute © AIPLA

Proposal regarding Unitary Patent Protection Special agreement within the meaning of Article 142 EPC (Art.1) Identical scope of protection, unitary character, unitary effect (Art.3) Right to prevent direct and indirect use of invention (Art. 6-7) Rules on limitation and exhaustion (Art. 8-9) © AIPLA

Structure of the envisaged Unitary Patent Court Court of 1st Instance: Central division (location still not decided: Munich? Paris? London? Milan?...) local and regional divisions Panels with multinational composition Pool of Judges Court of Appeal © AIPLA

Competence of the envisaged Unitary Patent Court Jurisdiction for: European patents with unitary effect European patents In force at the effective date Opt-out option according to Art. 58 during transitional period of 5 years referrals to the CJEU (Art. 14 b) © AIPLA

Shortcomings and Criticism inexperienced local divisions  reduction of quality and efficiency complex and administratively burdensome structure court fees/litigation costs still unclear – important especially for SMEs where are the highly qualified judges supposed to be found? transitional period of 5 years too short more opt-out/opt-in flexibility favorable unpredictable number of referrals to the CJEU – no experience / time-consuming rules of procedure unclear high risk of forum shopping – disadvantages for potential patent infringers (high translation and travel expenses) © AIPLA

Latest litigation cases: News on FRAND FRAND – fair, reasonable and non-discriminatory terms for licensing of standard essential patents German Federal Supreme Court (KZR 39/06- Orange-Book- Standard) established strict requirements for FRAND-defense: irrevocable, binding offer of licensee – exact amount of royalty can be left to equitable discretion of the licensor which can be controlled by court upon request of licensee deposit of payment for ongoing royalties regular payments, rendering of accounts © AIPLA

Latest developments in substantial law: News on FRAND Latest case law: Mannheim District Court in Motorola v. Apple (7 O 122/11): Does the license-offer also have to deal with damages for use in the past? Facts: Apple made an offer for a license, but reserved the right to contest the validity of the patent in suit “when, insofar and for as long as” Motorola would seek damages for past infringement above a FRAND rate Apple also has a nullity action pending against the patent in suit © AIPLA

Latest developments in substantial law: News on FRAND Decision: Apple`s offer not sufficient for a FRAND-defense: damages limited to FRAND royalty rate give infringer unjustified advantage compared to a regular licensee (recent article by Presiding Judge Meier-Beck of Federal Supreme Court: damages up two double amount of regular royalty or more) Open questions: Can FRAND offer be limited to patent in suit or does it have to cover all (world-wide) standard-essential patents in the portfolio of licensor? Does willful infringement preclude FRAND defense? Nullity action besides FRAND defense possible? Pay back if patent invalid? © AIPLA

Latest litigation cases: Design rights – fast track to an injunction? Recent case law in Germany: Apple v. Samsung (14c O 194/11) Facts: Apple is proprietor of a community design right for a tablet computer reflecting the design of the “iPads“ Samsung sent its “Galaxy Tab“ to different German magazines, which tested and reported about it Duesseldorf District Court granted a preliminary injunction (appeal pending) © AIPLA

Latest litigation cases: Design rights – fast track to an injunction? High potential of Design rights: extend IPRs to the visual design of objects which are not purely technical unexamined IPR – only formal criteria are examined during the registration process – statutory but rebuttable assumption of validity relatively low costs strategic importance in a variety of technical fields important additional protection besides other IPR’s © AIPLA