Patent Litigation in Europe – Now and in the future 12 June 2013 Kings College London Trevor Cook

Page 2 © Bird & Bird LLP 2012 What happens at present in Europe ●Multiple types of patent, each with only national effect National designations of EP patents -Capable of centralised opposition within 9 months of grant National patents Utility models (unexamined pre-enforcement, typically shorter term) -In most jurisdictions, but not eg UK -NB scope in DE to spin UM out of an allowed EP application ●Multiple jurisdictions At least one court in each country Applying, with national effect, the same black letter substantive law -Sometimes in subtly different ways … Under widely varying procedural regimes … -Harmonised to an extremely limited degree by virtue of the enforcement Directive

Page 3 © Bird & Bird LLP 2012 What happens at present in Europe - Statistics ●Harhoff (2009) PL and busiest jurisdictions (ie =>50 “cases” pa) -DE: 220 (Validity), (Infringement) p.a. -FR: 459 cases (2005), 487 cases (2006) -IT: cases p.a. -NL: 50 cases p.a. -PL : 20 cases p.a. -SE: cases p.a. -UK: 153 cases (2004), 54 cases (2005) ●Figures to some extent reflect wide differences as between number of EPs validated by country ●My queries about these figures Their largely anecdotal nature given their sources What is meant by a "case" – eg how many patents in it? How many of these cases get to court?

Page 4 © Bird & Bird LLP 2012 Reasons for differences in European patent litigation ●Differences in substantive law as to infringement despite Article 69 EPC and Protocol to it Slowly being resolved, with DE & GB approaches converging, although inclusion of reference to “ equivalents ” in Protocol to Article 69 EPC by EPC 2000 has not assisted, especially in other jurisdictions Different approaches to "file wrapper estoppel" – NL Yes, DE & GB No ●Differences in substantive law of validity despite our all since 1978 applying EPC 1973 (now EPC 2000) Slowly being resolved, such as DE adopting "photographic" approach to novelty in line with the EPO and other national jurisdictions ●Procedural differences as between jurisdictions, eg … Of greatest significance in practice, eg Split system in DE (and in PL) Differences in attitude to interim remedies Need to “ clear the path ” pre generic pharma launch in the UK Approach to remedies, eg as to use of standards essential patents when FRAND royalty has not been agreed

Page 5 © Bird & Bird LLP 2012 Some primarily procedural reasons for differences in European patent litigation - overview ●Structure of the Court System – split or not? ●Specialisation of judges, and nature of decisions ●Appellate structure, and scope to introduce new evidence on appeal ●Attitude to amendment / limitation ●Scope for use of Criminal Law and Customs Provisions ●Forum shopping within jurisdictions ●What actions can one bring and against whom? ●Attitude to splitting up issues ●Evidence gathering ●Experts and experiments ●Speed to final resolution on the merits and attitude to interim relief ●Level of and recoverability of legal costs ●Remedies including approach to injunctive relief in standards essential cases ●Attitudes to granting pan European relief and to its local effect when granted elsewhere

Page 6 © Bird & Bird LLP 2012 The Unitary Patent and Unified Patent Court ●Unitary Patent dependant on establishment of Unified Patent Court ●Entry into force of Unified Patent Court International agreement, not an EU measure Agreement envisages 2014 but 2015 at earliest in practice ●Scope (if Poland participates fully) Applies to -New Unitary Patent granted by the EPO (having effect for all of EU except Spain and Italy) -National designations (for all of EU except Spain) of “bundle EPs” granted by the EPO (subject to opt out) -Single judgment applying to Unitary Patent or to all designations of bundle EPs No application to -National patents or utility models -National designations of bundle EPs outside EU, or for Spain -National designations of existing or already applied for bundle EPs where patentees have opted out during first seven years

Page 7 © Bird & Bird LLP 2012 The Unified Patent Court - Structure ●First instance (3 judges, inc at least one from central panel) Central Division -Split between Paris London and Munich Local Divisions -Possibility of more than one per Member State for some -Or, as an alternative to local divisions Regional Divisions covering more than one Member State ●Court of Appeal (5 judges, Luxembourg) ●Court of Justice of the EU? No formal appellate role as such -cf CTM, CUDR and CRDR on appeal from General Court But degree of CJEU supervision in practice unclear as Unified Patent Court is a creation of Member States and is thus subject to EU law

Page 8 © Bird & Bird LLP 2012 The Unified Patent Court – Jurisdiction SubjectDivision Comment InfringementLocal or Regional if any (otherwise Central), unless defendant outside territory of contracting Member States when can be Central Declarations of non-infringement Central Stayed if infringement action started within three months Provisional and protective measures and injunctions Local or Regional if any (otherwise Central), unless defendant outside territory of contracting Member States when can be Central RevocationCentral Unless infringement action already on foot But infringement action may be started in a Local or Regional division, the powers of which are unaffected by the revocation action having been brought Counterclaims for revocation Local or Regional if any (otherwise Central), unless defendant outside territory of contracting Member States when can be Central Local or Regional division has discretion whether to hear counterclaim, refer counterclaim to central division (staying infringement action or proceeding with it), or, but only with agreement of parties, referring the whole matter to Central division

Page 9 © Bird & Bird LLP 2012 The Unified Patent Court – Some likely problems ●Added overall complexity over at least the short and medium term as a result of UPC being an overlay on existing structure ●Jurisdictional asymmetry in UPC favours patentees Local and Regional Divisions that bifurcate infringement and validity will attract patentees Especially if they are reluctant to stay infringement proceedings pending validity determination -Who will establish the "Eastern District of Texas" in the EU? ●No scope for potential defendants to "clear the path“ unless not selling anywhere in EU Local and Regional Divisions can always frustrate such attempts ●Jurisdictional asymmetry favours development of Local and Regional Divisions (whether or not they bifurcate) over Central Division ●How will this be paid for and retain access to justice? ●Uncertainty as to an untested tribunal allied to a degree of optionality ●Uncertainty as role of Court of Justice of the EU

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