1. Update on European Patent and Trade Mark Law Jennifer Jones, Bird & Bird LLP Carrollanne Lindley, Kilburn & Strode LLP

2. 2012 © Intellectual Property Institute of Canada WHAT YOU SEE IS NOT WHAT YOU GET IP TRANSLATOR and its effect on European practice 2

3. 2012 © Intellectual Property Institute of Canada Communication No 4/03 of the President of the Office of 16 June 2003 ‘’ The 34 classes for goods and the 11 classes for services comprise the totality of all goods and services. As a consequence of this the use of all the general indications listed in the class heading of a particular class constitutes a claim to all the goods or services falling within this particular class. Similarly, the use of a particular general indication found in the class heading will embrace all of the individual goods or services falling under that general indication and properly classified in the same class. For example, the use of the general indication "Pharmaceutical and veterinary preparations" in class 5 will embrace all pharmaceutical preparations regardless of their composition or indication’’

4. 2012 © Intellectual Property Institute of Canada Challenging the orthodoxy - A challenge through the Chartered Institute of Patent Attorneys WHY? A disagreement between official EU trade mark authorities whether the list of products in a trade mark registration ‘means-what-it-says’ (by reading registered product lists simply according to their dictionary significance) - or is to be interpreted more broadly through a ‘class-heading-covers-all’ approach making the class heading a sort of code for “All goods in class XX” and giving trade mark owners greater, and unclear, monopoly rights.

5. 2012 © Intellectual Property Institute of Canada WHICH COUNTRIES? ‘means-what-it-says’ ‘class-heading-covers-all’ Austria, Finland, the Benelux countries,Hungary, Germany, Italy, Denmark, OHIM Spain, France, Sweden, UK and Ireland

6. 2012 © Intellectual Property Institute of Canada If then one EU court applies ‘class-heading-covers-all’ and another ‘means- what-it-says’ for infringement of otherwise identical trade mark registrations the result can be different registration rights in different countries, contrary to the requirement for all EU trade mark rights to be applied in the same, harmonized, way.

7. 2012 © Intellectual Property Institute of Canada The Outcome The Court of Justice judgment supports ‘means what it says’ The Court of Justice in its 19 June judgment concluded that: common approach to the identification of products in any registration national trade mark authorities and OHIM must adopt a uniform interpretation. Specifications must be worded to indicate the nature of the products concerned with ‘’clarity and precision’’’’ Some class headings have sufficient clarity and precision, but others do not. case-by-case assessment. The “class-heading-covers-all” approach, does not make it possible to determine the scope of the protection conferred This is to the detriment of the principles of the free movement of goods in the EU. This confirms the legality of the ‘means-what-it-says’ approach.

8. 2012 © Intellectual Property Institute of Canada The Consequence 1.Existing Community trade mark registrations and applications- Communication No 2/12 states that the applicant deemed to want all the goods or services in the alphabetical list (legally permissible ?). BUT -the alphabetical list may include goods or services not within the class headings at all and so there is no clarity or precision (and quite possibly impermissible broadening). 2.OHIM practice for any new application that uses the class heading, is to require a declaration that the application extends to all of the goods and services in the alphabetical list; otherwise, the literal meaning of any general indication will be applied. Going forward, it will be possible to tick a box to confirm this. 3.National practices - still emerging.

9. 2012 © Intellectual Property Institute of Canada The LINDT bunny cases- not happy bunnies!

10. 2012 © Intellectual Property Institute of Canada 1. The Bad Faith bunny Austria - use by Hauswirth since 1962 - use by Lindt since 1994 2000- Lindt secures CTM registration- action for infringement against Hauswirth. Counterclaim by Hauswirth that CTM secured in bad faith CJEU - requirement for intention

11. 2012 © Intellectual Property Institute of Canada 2. The Non distinctive Bunny A combination of non distinctive elements don’t render a composite mark distinctive.

12. 2012 © Intellectual Property Institute of Canada Stem Cell Research in Europe

13. 2012 © Intellectual Property Institute of Canada Legislation relating to Biotechnology EU Directive on the "legal protection of biotechnological inventions" –Introduced in 1998 to harmonise the laws of the member states Recital 16...patent law must be applied so as to respect the fundamental principles safeguarding the dignity and integrity of the person Art. 5...prohibits patenting of the human body at the various stages of its formation and development Art. 6 (1) "Inventions shall be considered unpatentable where their commercial exploitation would be contrary to ordre public or morality…" (2) …in particular,…considered unpatentable: (c) uses of human embryos for industrial or commercial purposes

14. 2012 © Intellectual Property Institute of Canada WARF patent application 2008 decision of the Enlarged Board of Appeal of the EPO Claimed embryonic stem cell lines derived from embryos, for which the embryos were necessarily destroyed "…the Directive should apply in any case where it can be established from the relevant invention that it serves a therapeutic or diagnostic purpose for the used embryo. Usefulness to the individual embryo presupposes that the used embryo is still in existence and is not irreversibly destroyed." In line with Council press release of July 2006 stating that funding available for research involving human embryonic stem cells, including the procurement of stem cells, but not research activities which destroy human embryos.

15. 2012 © Intellectual Property Institute of Canada Early stages of development Top: development from fertilized egg to blastocyst Bottom: illustrating how the pluripotent cells differentiate into organs Illustration: Mike Jones

16. 2012 © Intellectual Property Institute of Canada Oliver Brüstle v. Greenpeace e.V., C-34/10 Oliver Brüstle argued that the pluripotent stem cells were cultivated from blastocysts and that a blastocyst is not an embryo, and that the pluripotent cells have long been cultivated outside the human body. Greenpeace argued that at the beginning of the chain was a human embryo that was destroyed to harvest the cells. What is meant by "human embryo" within the context of the Directive? Directive does not define "embryo" and divergent opinions in Europe –Greenpeace argued that human life starts with the fusion of sperm and ovum, therefore blastocysts are legally embryos, and against public morality –Brüstle pointed to the UK, France, Spain, Sweden and Denmark: "embryo" defined as fertilised egg 14 days after fertilisation, and noted that the German government largely funded the research

17. 2012 © Intellectual Property Institute of Canada Oliver Brüstle v. Greenpeace e.V. "The context and aim of the Directive thus shows that the EU legislature intended to exclude any possibility of patentability where respect for human dignity could thereby be affected." Any human ovum as soon as fertilised is regarded as a "human embryo" for the purposes of the application of Art. 6(2)(c) since that fertilisation is such as to commence the process of development of a human being. Includes non-fertilised human ovum into which the cell nucleus from a mature human cell has been transplanted and non-fertilised human ovum whose division and further development has been stimulated by parthenogenesis. With respect to pluripotent cells, left it up to national courts to decide if they are capable of commencing the process of the development of a human being, “in the light of scientific developments”.

18. 2012 © Intellectual Property Institute of Canada The result Interpreted by EPO and UK IPO: pluripotent stem cells patentable if removed from a human embryo that is not modified or destroyed. –EPO Chapter II-5 of Part G: "(c) Uses of human embryos for industrial or commercial purposes: A claim directed to a product, which at the filing date of the application could be exclusively obtained by a method which necessarily involved the destruction of human embryos from which the said product is derived is excluded from patentability under Rule 28(c), even if said method is not part of the claim (see G 2/06). The point in time at which such destruction takes place is irrelevant." Induced pluripotent stem cells remain patentable Research methods patentable Specialised nature of the research techniques mean that competitive position is often more dependent on know-how than patent protection.

19. 2012 © Intellectual Property Institute of Canada The Return of the Pan European Injunction

20. 2012 © Intellectual Property Institute of Canada Jurisdiction in the EU – General principles Brussels Regulation Designed to exclude "forum non conveniens" considerations within EU in favour of court first properly seized. –Art. 2: persons domiciled in a member state shall be sued in the courts of that member state Exceptions to domicile rule –Art. 5(3): place where the harmful event occurred or may occur –Art. 6(1): may also be sued where any one of the defendants is domiciled "provided the claims are so closely connected that it is expedient to hear and to determine them together to avoid the risk of irreconcilable judgments" –Art. 22(4): exclusive jurisdiction of member state where IPR is registered

21. 2012 © Intellectual Property Institute of Canada Taking jurisdiction as it was… In the 1990s attempts were made to centralise infringement proceedings by asking one member state court to rule on infringement of other national parts of a European patent. GAT v. LUK: CJEU held that once a defendant raises the defence of invalidity of a patent the pan-European proceeding could not continue, as a binding decision on validity can only rightfully be made by the courts of the member state where the patent is registered. Roche v. Primus: CJEU held no cross-border jurisdiction even when the infringing acts relate to the same product committed by the same defendants in different member states, as the legal situation is different because patent infringement is examined in the light of the relevant national law. Patentee therefore forced to bring its case to courts in several member states if wishing to pursue infringers in more than one country.

22. 2012 © Intellectual Property Institute of Canada Solvay v Honeywell, CJEU, July 2012 Solvay, as the proprietor of a European patent, brought an action before a Dutch court against three companies of the Honeywell Group –Infringement of the national parts of a European patent –1 defendant based in The Netherlands, with the other 2 based in Belgium –Solvay, also based in Belgium, requested the Dutch court to enjoin the three companies until a decision was made in the main proceedings Confirmed that national courts in Europe are not prevented by European legislation from granting pan-European injunctions, provided the co- defendants are accused of infringing with respect to the same product in the same countries (and validity not in issue). (Art. 6(1)) When preliminary relief the rule of exclusive jurisdiction is not applicable. (Art. 22(4))

23. 2012 © Intellectual Property Institute of Canada Taking Jurisdiction after Solvay v Honeywell Pan-European Interim Relief will be possible in patent infringement proceedings Article 6(1) jurisdiction as to multiple defendants will apply in proceedings on the merits on a European patent –Unless different companies (even if in same group) are alleged to infringe in each different jurisdiction –Unless Article 22(4) jurisdiction precludes it Article 22(4) will continue in proceedings on the merits to preclude jurisdiction of courts over infringement of foreign designations of a European patent the validity of which is challenged

24. 2012 © Intellectual Property Institute of Canada ONEL V OMEL 1.Does Use in one member state validate a registration for all? 2.The Advocate General’s opinion. 3.Maintaining or creating a market share.

25. 2012 © Intellectual Property Institute of Canada Streamlining litigation in the EU 1.The PCC 2.HHJ COLIN BIRSS QC 3.The GLEE case

26. 2012 © Intellectual Property Institute of Canada Proposed Unitary Patent System

27. 2012 © Intellectual Property Institute of Canada Patent Legislation in Europe National Patent legislation –s. 27 of PA 1977 requires judicial notice to be taken of the EPC, PCT and CPC and decisions in respect of them European Patent Convention –International agreement, 38 signatories –Centralised exam and grant at the EPO –Basis of substantive patent law throughout Europe –Bundle of national patents Community Patent Convention (not in force) –Single patent having effect throughout the EU

28. 2012 © Intellectual Property Institute of Canada History of Patent Legislation in Europe 1948Council of Europe formed (IT, LX, BE, DE, FR, NT) 1950Committee of Experts on patent law 1951European Coal & Steel Community ("Treaty of Paris") 1958European Economic Community ("Treaty of Rome" or "TFEU") 1963Convention on the Unification of Certain Points of Substantive Law on Patents ("Strasbourg Convention") 1967Brussels Treaty (established European Council and European Commission) 1973European Patent Convention (Munich Convention) 1975 Community Patent Convention (Luxembourg Convention) 1985 Schengen Treaty 1987 Single European Act ("single market") 1993 Maastricht Treaty ("Treaty on European Union" established Euro and EU) 1999 Amsterdam Treaty 2000European Patent Litigation Agreement proposal 2003 Nice Treaty 2009 Lisbon Treaty 2011Enhanced Cooperation of Unitary Patent Protection

29. 2012 © Intellectual Property Institute of Canada The Current System Requirement to translate the patent into national languages (London Agreement) As national rights, validity and infringement can only be challenged in national courts and by way of Opposition proceedings at the EPO. Art. 69 EPC: national courts should apply the law in a uniform manner UK, DE, FR and NL have specialised IP courts References to Court of Justice of the European Union

30. 2012 © Intellectual Property Institute of Canada European Patent with Unitary Effect Application and examination procedure identical for EPC and Unitary patents up to grant. Filed, examined and granted in English, French or German One translation to be filed, always an English text. Further translations only required in the case of a dispute. Post grant proprietor can elect: - bundle of national patents - unitary patent effective in 25 MS (not ES or IT) - a Unitary patent PLUS a European patent designating Contracting States of the EPC Equal effect throughout all 25 MS (not ES or IT) and can only be limited, licensed, transferred, revoked or lapse in respect of all

31. 2012 © Intellectual Property Institute of Canada The Unified Patent Court Exclusive competence for European and Unitary patents - 7 year transition period during which time proceedings for European patent may be initiated before national courts Two tier system: Court of First Instance and Court of Appeal CFI shall have a central division, and local and regional divisions - Local division can be set up in a single contracting state - Regional divisions can be set up for two or more contracting states - Central Division will be located in Paris, with "thematic clusters" in London (chemistry, including pharmaceuticals) and Munich (mechanical engineering) CA based in Luxembourg and appeal de novo Panel of Judges - CFI: multi-national composition of 3 judges (at request technically qualified judge allocated) - CA: multi-national composition of 5 judges (3 legally & 2 technically qualified)

32. 2012 © Intellectual Property Institute of Canada The Unified Patent Court - Jurisdiction RevocationCentralInfringement action may be started in a Local or Regional division or Central Division Declaration of non-infringement CentralStayed if infringement action started within three months InfringementLocal or Regional Unless non-EU defendant or revocation action pending when can be Central Counterclaim for revocation Local or Regional Local or regional has discretion to: -Hear counterclaim; -Refer counterclaim to central division and suspend or proceed with infringement action; or -Refer the whole matter to Central Division (with agreement of parties)

33. 2012 © Intellectual Property Institute of Canada The Unified Patent Court - Procedure Bifurcation of validity and infringement - Concerns over forum shopping - Infringement trial usually faster than revocation, risk of irreversible damage to defendant if injuncted. Mix of common law and civil law - Requests for information, discovery, cross-exam of witness and experts, inspection, and experiments. - Possibility for court appointed experts In force 1 January 2014 or 4 months after deposit of Agreement

34. 2012 © Intellectual Property Institute of Canada Jennifer Jones, Partner, Bird & Bird (London) Jennifer.Jones@twobirds.com