OJ EPO SE 5/2015, p24 - Stefan LUGINBÜHL

Lawyer, International Legal Affairs, PCT, DG5

Report on proceedings

The 17th patent judges' symposium took place from 9 to 12 September 2014 in Tallinn, capital of Estonia. The event was jointly organised with Estonia's justice ministry, which had chosen the "Mektory" technology centre as venue. That gave the participants of national courts from 25 EPC contracting states, Montenegro, Japan, the EPO boards of appeal and the Court of Justice of the EU the opportunity to find out at first hand about the latest developments in technological fields holding particular promise for the future. This apt setting also proved highly conducive to fruitful debate about the possible practice of the future Unified Patent Court (UPC) in various areas of patent law. Here the focus during the symposium's first day was on the relationship between the future UPC and the EPO's boards of appeal – a major issue which will need to be explored further at future events. The second day was devoted to the latest developments in supplementary protection certificates (SPCs), allowable amendments to applications or patents under Article 123(2) and (3) EPC, and the customary case study. The symposium ended with the traditional reports updating participants on recent developments in patents and patent litigation at national level. Dinners were held in the "Energy Discovery Centre", a museum of modern technology, and – in striking contrast – the "Mustpeade maja" medieval banqueting hall, to the sound of Estonian bells.

Opening the symposium, Kai Härmand (Deputy Secretary General, Ministry of Justice, Tallinn) welcomed the participants and gave an overview of Estonia's court and patent litigation system, including modern e-filing arrangements which the future UPC might be able to draw on.

Andres Anvelt (Estonian Minister of Justice) then gave a welcome address highlighting the major impact the European Union was having on Estonia and the development of the country's judicial system. He also reported that Estonia was making good progress towards ratifying the UPC Agreement, with both the justice ministry and the Estonian patent office playing their part. IP protection was extremely important for Estonia.

Ants Kull (chairman, Civil Chamber, Supreme Court of Estonia) explained that as a small country with 1.3 million people and few natural resources, Estonia depended for its economic success on using knowledge. In the EU, it currently ranked 14th and 21st for innovation and economic strength respectively, so it could not afford to sit back. With a few exceptions, the EU economies were finding it hard to grow. Improvements were needed, especially in the economic exploitation of inventions. Laws were the foundation for building innovative countries, but could not actually produce innovations themselves. The judges' symposium had the important task of debating contentious legal issues, and driving European case-law harmonisation forward.

Raimund Lutz (EPO Vice-President DG 5, Legal/International Affairs, Munich), in his own welcome address, emphasised the EPO's long tradition of co-operation with the judicial authorities in the EPC contracting states. The symposium had always aimed at promoting co-operation amongst judges in Europe. With the UPC on the way, these regular exchanges between judges at EPC contracting state courts and members of the EPO's boards of appeal would become even more important. The EPO would support the UPC Agreement's implementation by providing technical assistance and helping to train would-be judges. Another major EPO contribution towards successful implementation of the EU patent package was its "PatentTranslate" machine translation service. This was already operational, and every day was providing thousands of external users and EPO examiners with better access to the prior art. Mr Lutz also highlighted the progress being made by the Select Committee on the legal and financial aspects of the EU unitary patent; concrete renewal-fee figures should be on the table very soon.

Rounding off this set of informative opening speeches, Matti Pätts (Director General, Estonian Patent Office, Tallinn) said patent judges were confronted every day with the challenge of keeping up to speed on technological developments.

Wim van der Eijk (EPO Vice-President DG 3 and chairman of the Enlarged Board of Appeal, Munich) reviewed recent developments in the EPO's boards of appeal. Looking ahead to the UPC, a harmonised approach to interpreting patent law was very important. That meant raising the awareness of national judges and board of appeal members about the need to take account of each other's decisions. Such case-law harmonisation was also promoted by conferences and symposia like this one, enabling judges to exchange views. Turning to the boards' workloads, he said the number of incoming appeals had fallen since 2012, but the number of cases settled was up by nearly 8% for the first eight months of 2014. Even so, processing times for pending cases would continue to rise. However, parties and courts could ask for accelerated processing. Some 49% of all appeals in ex parte proceedings succeeded in whole or in part. After summarising the rulings given by the Enlarged Board during the previous two years, he concluded with a few words about co-operation between DG 3 and national judges, especially the latter's positive contribution through involvement on the Enlarged Board of Appeal.

I. First working session

With Margot Fröhlinger (EPO principal director for patent law and multilateral affairs, Munich) in the chair, Johannes Karcher (judge at the Federal Patent Court, Munich), Carl Josefsson (senior appeal judge at the Svea Court of Appeal, Stockholm) and Sir David Kitchin (Lord Justice, Court of Appeal of England and Wales, London) updated participants on the work to implement the UPC Agreement.

Johannes Karcher explained that the UPC Preparatory Committee had divided its work up into five areas. He was co-ordinating the Legal Group, which was in turn composed of seven teams: "Rules of procedure", "Registry and registrars", "Legal aid", "Court fees and recoverable costs", "Rules of the committees", "Mediation and arbitration" and "Litigation certificate". The "Rules of procedure" team, consisting of 15 EU member-state delegations, had now held three meetings to discuss the 16th draft of the rules of procedure. Once the team's discussions were over, the European Commission would be consulted on the draft's compatibility with the acquis communautaire, and the 17th draft would then be produced. After that there would be a public hearing, leading if necessary to further amendments to the draft. The final draft rules of procedure would then be presented to the Preparatory Committee. Mr Karcher also gave details about various proposed amendments to these rules (especially the planned "opt-out"), the possible languages in first-instance proceedings before the local divisions of the UPC, and injunctions.

Next, Carl Josefsson spoke about the preselection and training of candidates interested in being judges at the UPC. A call for expressions of interest had led to more than 1 300, one third for the position of legally qualified judge (LQJ), the other two thirds for that of technically qualified judge (TQJ). 170 of the would-be LQJs were rated "eligible", i.e. already familiar with substantive patent law and having proven patent-litigation experience. Many of them were even "particularly eligible". Another 180 were rated formally eligible, i.e. in need of further training in substantive patent law, patent litigation, or both. Of the would-be TQJs, 340 had been rated "eligible" or "particularly eligible". Training for judges would be starting soon at the UPC's training centre in Budapest, with the support of the EPO Academy. For LQJs, this would involve training in substantive patent law and in infringement and revocation proceedings. Court internships and language training were also planned. For TQJs, the training would focus on judges' actual work, e.g. basic fairness rules, the conduct of proceedings and other aspects of civil proceedings. Also, for both groups, there would be case studies concerning the UPC's procedural law.

Sir David Kitchin talked about developing a common judicial culture and judgecraft at the UPC. In achieving that, general standards of judicial conduct, effective case and court management, and the judgments issued would all be very important. The general standards of conduct should cover, in particular, judicial independence, impartiality, integrity, propriety, competence and diligence, personal relationships and perceived bias, and activities outside court. Case management turned on general issues such as proportionality or the need for an oral hearing of the counterparty, but also for example on the appraisal of evidence, and on decisions following requests for seizure or provisional measures. All these matters would be an integral part of the culture of the new court. The written judgments themselves should be as brief and clear as possible. But it was also helpful to consider to whom they were addressed, including the losing party and the general public.

The ensuing general discussion showed that training future UPC judges to adopt a uniform approach to drafting their judgments, despite differing national styles and cultures, would be vital. The high legal and technical complexity of patent litigation meant that the judges' language expertise would also be crucial, and therefore needed to be built up. Margot Fröhlinger made it clear that such language training was primarily up to the contracting states, but the EPO would make technical glossaries of patent-related terms available.

Comparison and interaction between EPO boards of appeal and national courts – state of play and solutions for the UPC

After the introductory presentations on the UPC, Sir Richard Arnold (judge in the Chancery Division, High Court, London), William Chandler (member of an EPO technical board of appeal, Munich), Marie Courboulay (vice-presiding judge, 3rd chamber, Paris Regional Court), Klaus Grabinski (judge, Federal Court of Justice, Karlsruhe) and Rian Kalden (judge, Court of Appeal, The Hague) conducted a panel discussion on a number of issues where a common European approach has still to be found and the UPC will need to come up with solutions.

(a) A patent held in a binding ruling to have been infringed is subsequently revoked. What happens next – national practice and what will the UPC do?

Sir Richard Arnold gave an introduction describing what would happen in such circumstances in the UK, in particular following the recent judgment in Virgin Atlantic Airways Ltd v. Zodiac Seats UK Ltd ([2013] UKSC 46, [2014] AC 160), which had overruled various older decisions. But there were still a number of open questions. For example, the Supreme Court had not decided what happens if the defendant has already paid damages to the patentee by the time the patent is revoked or amended. It was also unclear whether a defendant who unsuccessfully challenged a patent's validity in infringement proceedings could subsequently file a separate revocation action against the same patent. Lastly, if the defendant could not file revocation proceedings, could it legitimately procure a third party to do so?

Rian Kalden said that in the Netherlands the revocation decision's retroactive effect (Article 68 EPC) would mean that damages already received for infringement would have to be repaid.

Marie Courboulay explained that under French law, in contrast, final infringement decisions could not be revisited, so their enforcement could not be set aside, or damages refunded once paid. But she thought it would be a good idea if the UPC stayed the enforcement of infringement rulings until it had decided on any parallel revocation proceedings pending before a national court for the same patent.

Klaus Grabinski said Germany had various ways, depending on the state of the proceedings, of preventing enforcement or seeking restitution of damages already paid. As for the UPC, Rule 354(4) of the latest draft rules of procedure provided for staying the enforcement of an infringement judgment if revocation proceedings were pending against the same patent, but not for refunding damages already paid. That would therefore depend on national law. Several members of the audience then said they would like to see EPO opposition proceedings speeded up; they took so long that national courts were having to issue infringement judgments rather than simply stay their proceedings pending the outcome of the opposition. That led seamlessly on to the next topic:

(b) Subsidiarity of revocation actions in cases of pending opposition or appeal proceedings before the EPO – national practice and what will the UPC do?

Introducing this topic, Marie Courboulay described practice in France, where there was no legal obligation to stay the proceedings if an opposition or appeal had been filed at the EPO. If the parties could not agree that they should be stayed, the court would decide, bearing in mind the opposition or appeal's likelihood of success, the parties' interests in a stay and whether they had requested accelerated proceedings at the EPO, and the EPO's revocation rate. In France, proceedings were stayed in only one quarter of cases. It was pointed out, in the ensuing discussion, that infringement courts too could request acceleration of opposition or appeal proceedings.

Rian Kalden explained the Netherlands' practice, which was very similar to France's. Whether national proceedings were stayed depended also on whether they were for infringement or revocation.

Sir Richard Arnold said UK courts were likewise not obliged to stay proceedings; that was up to the judge. Under new national guidelines, the main issue for judges taking such decisions was how long the proceedings seemed likely to take, and not least whether the EPO's decision could be expected reasonably soon. Another was "commercial certainty".

Klaus Grabinski said that in Germany it was not possible to sue for infringement if an EPO opposition had been filed (or could still be). This approach was based on Germany's system of "bifurcation", i.e. different proceedings for infringement and validity. In Germany, infringement proceedings were stayed if it was highly probable that the patent was not valid. In parallel proceedings, it was therefore important that EPO opposition divisions or boards of appeal should be able to provide national infringement courts with their provisional opinion on validity.

Rian Kalden added that in the Netherlands, if an opposition was pending, preliminary injunctions were often requested, and the main proceedings then stayed. The UPC could do likewise. In the ensuing discussion, the audience supported Klaus Grabinski's proposal.

(c) Binding effect of board of appeal (BoA) decisions to uphold a patent? Reciprocal persuasive effect of BoA and national decisions? Impact of the UPC?

Rian Kalden explained that a BoA decision maintaining a European patent was not binding on courts in the Netherlands. Often, different arguments were put to national courts, which also had more means of taking evidence than the boards of appeal. Dutch courts certainly did not ignore the legal arguments set out in BoA decisions, although they did find that the boards' approaches to the law sometimes varied – in which case the national courts had to opt for one approach or the other. The first-instance patent court in the Netherlands normally followed BoA practice, and if it did not want to do so it would explain why. Whether national decisions were equally persuasive for the boards was hard to say. But it would be good if BoA decisions could indicate whether national-court decisions had been taken into account and, if they were departing from a specific national decision, explain why.

William Chandler explained that board members normally reflected critically on national decisions and case law, without however expressly saying so in their own decisions.

Marie Courboulay said practice in France was like that in the Netherlands. The EPO and its boards of appeal, including the Enlarged Board, formed a patent-granting authority, not a court. Furthermore, French courts were often presented with new submissions and evidence in response to the reasons given in the EPO's decisions.

Klaus Grabinski added that parallel proceedings were quite common. That raised the issue of how to deal with decisions taken by other courts. Often these proceedings concerned harmonised substantive patent law. So judges needed to address such parallel decisions in both factual and legal terms.

Sir Richard Arnold explained that practice in England and Wales resembled that in the Netherlands: the courts were in no way bound by board of appeal decisions. The case law, however, should be followed. UK courts were not bound in parallel proceedings, because they were often faced with different evidence and therefore decided differently. The panel's explanations provoked a lively response from the audience, some of whom thought the national courts and the boards of appeal should devise a uniform practice for handling auxiliary requests. Others said they often felt that proceedings before the boards were too slow. Still others countered that often the parties deliberately used delaying tactics. Besides, national courts could always ask the boards to accelerate their proceedings.

(d) Patentability of computer-implemented inventions (CIIs) – state of play and developments

William Chandler's introduction, after a general overview of the state of play and latest developments, focused on the boards' approach to the patentability of CIIs, and the main differences compared to practice in the USA, the UK and Germany. Marie Courboulay said France's approach was now very like the EPO's. Rian Kalden added that the Netherlands mainly followed German practice, i.e. only the invention's technical elements were taken into account, and if they were inventive then the invention was patentable.

(e) Inventive step: problem-solution approach – is there still room for harmonisation?

Klaus Grabinski explained the EPO's problem-solution approach: first, identify the "closest prior art"; second, ascertain the "objective technical problem to be solved"; third, decide whether the claimed invention would have been obvious to the skilled person, given the prior art and the objective technical problem. In Germany, in contrast, the closest prior art was not the sole starting part for examining inventive step, and "obviousness" was also assessed differently: for a solution to be regarded as obvious to the skilled person, additional pointers, incentives or other reasons were normally required, going beyond the technical problem identified and suggesting that solutions be sought along the lines of the invention. Exceptionally, this was not necessary if it was clear to the skilled person what had to be done.

Rian Kalden said the Netherlands too applied the problem-solution approach, but sometimes a strict application was problematical: in some circumstances, specific prior art could not be taken into account for determining inventiveness, even though it should be.

Marie Courboulay said France likewise normally took this approach, but there might be times where alternatives were appropriate.

Sir Richard Arnold said that the UK took a slightly different approach to determining inventive step. First, identify the notional "person skilled in the art" and that person's relevant common general knowledge; second, identify the inventive concept of the claim in question or, if that cannot readily be done, construe it; third, identify what differences, if any, exist between the matter cited as forming part of the "state of the art" and the inventive concept of the claim or the claim as construed. The question then was: do those differences, viewed without any knowledge of the alleged invention as claimed, constitute steps which would have been obvious to the person skilled in the art, or do they require any degree of invention?

William Chandler said that in most cases the problem-solution approach led to the right result.

II. Second working session

Latest case law on supplementary protection certificates (SPCs) – duration of patent-term extension, scope of protection

The second working session took place under the experienced chairmanship of Martine Regout (judge, Court of Cassation, Brussels). In an introduction,

İlhami Güneş, (judge, Civil Law Court of IPR, Izmir), explained the EU's legal basis for SPCs, their purpose and the conditions for granting them. However, Turkey did not actually award SPCs.

Massimo Scuffi (judge, Supreme Court, and President of the District of Aosta, Milan) explained the developing case law on SPCs, especially at the CJEU, with particular reference to extensions of the term of pharmaceutical patents and to the connection between SPCs and the scope of protection. The CJEU tended to leave important questions unanswered.

Rian Kalden then talked about the CJEU's latest case law on SPCs, especially Eli Lilly v HGS (C-493/12), Georgetown University v Octrooicentrum Nederland (C-484/12) and Actavis v Sanofi (C-443/12), including open questions for the national courts now required to implement these decisions.

III. Third working session

What amendments are permissible to comply with Article 123(2) and (3) EPC?

Manfred Vogel (court councillor (Hofrat), Supreme Court, Vienna) chaired the third working session. Fritz Blumer (EPO Legal Board of Appeal member, Munich) and Klaus Bacher (judge, Federal Court of Justice, Karlsruhe) were the two speakers for this topic, namely EPO and German practice regarding amendments permissible under Article 123(2) and (3) EPC.

Fritz Blumer explained that these provisions aimed to strike a balance between freedom of the applicant/patentee and protection for third parties. Article 123(2) EPC concerned allowable limitation of an application's technical content, and he presented clear practical examples of such limitation, i.e. where the subject-matter is not extended beyond the content of the application as originally filed. His conclusion was that Article 123(2) EPC was complied with if the application or patent as amended did not contain any subject-matter which would be novel compared with the text as originally filed. In contrast, the main aim of Article 123(3) EPC was to protect third parties against extension of scope. Giving further examples, his conclusion here was that Article 123(3) EPC was complied with if the scope of protection of the amended patent did not cover any embodiment which was not covered by the patent as granted.

Klaus Bacher began by describing the various ways in which patents could be amended after grant, in EPO proceedings and in Germany. On Article 123(3) EPC, the Federal Court of Justice had developed the "infringement test", i.e. the protection conferred was extended if acts which did not infringe the patent as granted would infringe it as amended. He also talked in particular about whether Article 123(3) EPC precluded amendments in the equivalence range, before setting out very clearly the German case law on non-permissible amendments under Article 123(2) EPC, and concluding that there were no fundamental differences between the Federal Court of Justice's decision-making practice and that of the EPO boards of appeal.

IV. Fourth working session

"Extractor hood" case study

As usual, the afternoon of the symposium's second day was spent on the case study, with Dieter Stauder (former professor at Robert Schuman University, Strasbourg, and the study's co-author) chairing the proceedings. Dieter Brändle (President, Swiss Federal Patent Court, St. Gallen) and Tobias Bremi (second ordinary judge, Swiss Federal Patent Court, St. Gallen, and the study's lead author) set out the case. After intensive discussion in three language groups (English, French and German) and presentation of the conclusions, the outcome was as follows:

Did the UPC have jurisdiction to rule on infringement and revocation of the Swiss part of the European patent? The majority answered no. For infringement and revocation of the unitary patent, the majority concluded that the UPC did have jurisdiction. At same time, the majority view was that the UPC would have jurisdiction for all infringing acts, because although the product was being offered for sale in Switzerland only it might also be sold in Estonia.

Turning to infringement and revocation, the majority thought the patent had been infringed, but had to be revoked for lack of inventive step. Commendably, all the participants had realised that this case turned on the interplay between infringement and revocation. If the claims were interpreted narrowly, the patent was valid, but not infringed. Whereas if they were interpreted broadly, the patent would have been infringed but would have to be revoked.

V. Fifth working session

Recent developments in European and national patent legislation and case law

Dieter Brändle reported on three decisions taken since 1 January 2012 by the Swiss courts with exclusive jurisdiction for infringement and revocation proceedings. The three cases concerned the criteria for equivalence, the duration of patent protection, and the partiality of part-time judges.

Beate Schmidt (President, Federal Patent Court, Munich) gave a brief introduction summarising the cases received and judgments issued by her court, followed by a concise account of why it had asked the CJEU for a preliminary ruling in an SPC case (C-11/13) and an explanation of what the CJEU had decided.

Yvonne Podbielski (lawyer, Legal Research Service of the EPO boards of appeal, Munich) summarised developments in the boards' case law, especially G 3/14 (a referral to the Enlarged Board concerning claim clarity in opposition proceedings) but also recent decisions on exclusions from patentability in biotechnology, and briefly presented an important ruling on double patenting involving a parent application's claim and a Swiss-type claim in the divisional.

Sophie Darbois (judge, Court of Cassation, Commercial, Financial and Economic Division, Paris) said that between 30 May 2012 and 30 May 2014 her division had issued about 60 judgments on patent cases, including significant ones in new areas involving requests for limitation of patent claims or for reinstatement of patent rights in connection with appeals against decisions taken by the head of INPI (French patent office). She then talked about two SPC-related cases. The first concerned the conditions for granting an SPC, the second related to requests for provisional measures prohibiting the marketing of generics shortly before an SPC expired.

Richard Hacon (specialist circuit judge, Intellectual Property Enterprise Court (IPEC), London) briefly described recent patent-related case law in England and Wales: first the Supreme Court judgment in Schütz (UK) Ltd v Werit (UK) Ltd, and then four decisions taken by the Court of Appeal. The Schütz case was about the meaning of "makes" in patent infringement. The Court of Appeal cases concerned: the effect of central amendment of a patent (Samsung v Apple); inventive step and the technical contribution to the art; the grant in error of a European patent for a contracting state the applicant had not wanted to designate; and English courts' jurisdiction to hear applications for declarations of non-infringement.

Next, Gabriella Muscolo (former IP judge, now commissioner, Italian Competition Authority, Rome), talked about two orders in re Samsung v Apple, heard by Milan's IP court (now commercial court). The cases had been highly complex, involving 103 patent families (covering thousands of patents) and raising problems related to standards-essential patents and FRAND licensing. She then described a case concerning the Italian courts' jurisdiction over an action for a negative declaration on counterfeiting in cross-border patent litigation also involving the German part of the patent. Lastly, she presented one case of contributory infringement, and another concerning competition law.

Edger Brinkman (judge, Court of Appeal, The Hague) said that between June 2012 and June 2014 Dutch courts (three instances) had ruled on 125 patent cases. He then presented a number of important judgments, on inventive step and novelty, added matter, patentability exceptions, and Article 69 EPC (scope of protection).

Andreia Liana Constanda (judge, High Court of Cassation and Justice, Civil Section, Bucharest) summarised recent developments in Romanian case law. She discussed a decision on the validity of a provisional protection certificate granted under Romanian law, two cases concerning novelty, a case about the effect of non-payment of renewal fees, and the latest case law on SPCs in Romania.

Peter Strömberg (President, Court of Patent Appeals, Stockholm) gave an overview of changes proposed in Sweden for jurisdiction over IP litigation, including patents. Under the draft legislation, the District Court of Stockholm would handle all civil actions and administrative cases concerning patents (and other IP rights and competition law). Its decisions could then be challenged before the Svea Court of Appeal.

VI. Closure

At the close, after symbolically passing the European Patent Judges' Symposium torch back to the EPO, Kai Härmand thanked the participants for the outstanding presentations and discussions.

Wim van der Eijk said that once again the symposium had been a great success. Over the last three days, there had been some stimulating and informative presentations, and a great deal of debate. He thanked the Estonian Ministry of Justice for its faultless organisation of the symposium at an extremely interesting location, and for the smooth co-operation with the EPO. He was already looking forward to the next symposium, in 2016. In the meantime, judges should remember that the case they were hearing might well also feature before the courts in other countries too.