Publications
European IP Bulletin, Issue 9, February -
Patents
Patents
5. NEW PATENTS BILL INTRODUCED INTO THE HOUSE OF LORDS
The Patents Bill (Bill No.18) is starting life as a Private Members' Bill in
the House of Lords, after being introduced on 15 January 2004 by Lord Davies
of Oldham on behalf of Lord Sainsbury.
One of the aims of the Bill is to fulfil UK obligations to bring legislation
into line with international conventions and particularly the EPC. The
opportunity is taken also to bring in some other amendments in keeping with
the stated aim of the government to strengthen the hand of proprietors in
defending their rights.
One area of controversy dealt with in the EPC amendments was the exclusion
of methods of medical treatment as lacking industrial applicability.
However, the new Bill deals with this issue in an independent new s.4A. This
new section maintains the scope of the old exclusion, and merely clarifies
an inconsistency in the reasoning for disallowing patents for methodology of
medical treatment. The new provision maintains the exclusion of such an
invention; the clarification that this does not apply to products used in
such inventions; allowing first medical use for known products; allowing
subsequent “specific” uses of known products in such inventions.
For proprietors, defences to actions for, and clarification of, allowed
threats have been introduced. For example, where a person has infringed the
patent by making or importing, threats may be made by the proprietor in
respect of his other infringing acts (s.70(4)(b)). Threats may be allowed
where the proprietor has used “best endeavours” to discover who the primary
infringer is. Also the Bill would enable easier enforcement of damages
orders by introducing access to the county courts in England and Wales and
equivalent systems in Scotland and N.Ireland (s.61(7)).
Sections of the Act relating to amendments to patents after grant, relief
for partially valid patents and revocation are also amended in the Bill.
These recognise the application of principles under the EPC and provide a
mechanism of interaction between national proceedings and the European
Patent Office. Minor amendments to the law on co-ownership and employee
inventor’s rights to compensation make up the remainder of significant
amendments to the Act introduced by the Bill.
The amendments in the Bill are particularly welcome in that they avoid
upsetting the delicate nature of s.1, which defines what may and may not be
considered a patentable invention, and is already the subject of much
controversy. Notably, the proposal to update s.1 to incorporate the words
“in all fields of technology” from the EPC has not been included in the
Bill. There remains the prospect of further pressure to s.1 if the draft EC
Directive on computer-implemented inventions becomes law.
The issues of threats and damages enforcement were not raised as part of the
UK Patent Office’s (UKPTO) consultations and clearly stem from the
government’s policy to strengthen the hand of IP owners. There is seemingly
an attempt to balance this by introducing a new power to request opinions of
patent validity direct from an examiner at the UKPTO. However, the opinion
will not be binding on any court, and most likely the Court will retain its
significance and expense as the forum where third parties must defend
themselves.
6. EUROPEAN COMMISSION PROPOSES COMMUNITY PATENT COURT
On 2 February 2004, the European Commission (EC) presented its proposal
(IP/04/137) for two Council Decisions for the constitution and establishment
of a Community Patent Court vested with jurisdiction to resolve Community
Patent disputes concerning validity and infringement claims.
These proposals are part of the broader campaign of setting up of single
Community Patent, valid across the whole of Europe, which was first mooted
by the EC in 2000 (IP/00/714). At present, disputes relating to national
patents, including those derived from a European patent granted via the European Patent Office (EPO) come before the various national courts which
have jurisdiction in dealing with issues of validity and infringement
actions. This dispute resolution frame work entails high transaction costs,
multiplicity of proceedings and legal uncertainty for applicants, because of
different patent laws and procedures applicable in each Member State.
Under this backdrop, the present proposals aim to ensure greater
harmonisation of patent law and to provide jurisdictional arrangements for
dispute resolution concerning the proposed Community Patent. It will also
remove the aforesaid disadvantages suffered by the present applicants
seeking patent protection. The first proposal aims at conferring
jurisdiction on the European Court of Justice (ECJ) to adjudicate Community
Patent disputes concerning validity and infringement. However, issues
concerning the licensing and ownership of patents will still be wrested in
the national courts of each Member State.
The second proposal will establish the Community Patent Court under the
aegis of the ECJ, whose seven judges will be appointed by the Council of
Ministers. A specialised chamber within the Court of First Instance (CFI)
will act as an appellate body to hear appeals against the decision of the
Community Patent Court. However, in exceptional cases a review against the
decisions of the CFI will lie to the ECJ.
However, as Internal Market Commissioner Frits Bolkestein has opined, unless
the Community Patent Regulation itself is accepted, the finalisation of
jurisdictional arrangements will not yield any tangible and immediate
benefits. Though in March 2003 the EU’s Competitive Council reached a broad
political consensus on Community Patent Regulation, it failed to adopt it in
November 2003 due to disagreement over the time period within which
translations of claims can be filed.
The creation of a single Community Patent and a unified adjudication system
will provide a quicker, cost-effective and inventor-friendly procedure to
protect new inventions across all EU Member States; once established, it
will increase the attractiveness of the EU as a competitive knowledge-based
market.
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