The fragmentation, high costs and uncertainty in the European Patent System could explain some of the difficulties that Europe has in moving towards a more knowledge-intensive economy in order to create jobs and economic growth

1. How to overcome the
challenges facing the
European IPR system?
Victor Rodriguez, Ph.D.
ESOF2012 Dublin

2. Outline
• Relevance of costs for John Smith
• Patent enforcement for John Smith
• Costs
• Uncertainty
• European patents with unitary effect
• Unified Patent Court
• John Smith options
• Conclusions
How to overcome the challenges facing the European IPR system?

3. Relevance of costs for John Smith
SCELLATO ET AL. (2011)
How to overcome the challenges facing the European IPR system?

4. Patent enforcement for John Smith
SCELLATO ET AL. (2011)
How to overcome the challenges facing the European IPR system?

5. Costs
• the initial costs of a patent application to
the EPO covering 12 MS and CH may be
20 times higher than in the US
• the costs of maintaining a patent
protection in the 27 MS may be 60 times
higher than in the US
EUROPEAN COMMISSION (2008)
How to overcome the challenges facing the European IPR system?

6. Costs (continued)
• A case with €1 million in dispute for both
validity and infringement may have a
cumulative maximum cost both in first
and second instances in multiple parallel
litigations across DE, FR, NL, UK 9 times
higher than in the US
VAN POTTELSBERGHE (2009)
How to overcome the challenges facing the European IPR system?

7. Uncertainty
• Contradictory national court decisions
• Contradictory national court and
European decisions
• Contradictory administrative decisions
• Specialised patent courts
• Bifurcation
RODRIGUEZ (2012)
How to overcome the challenges facing the European IPR system?

8. Abridged History
1973 Member States signed the Convention on the Community Patent
1989 The ratification of an amended CPC in 1989 failed again
2000 The European Commission proposed that the Community Patent Regulation deals with Community patent,
common judicial system, and translation
2002 The European Parliament called on the Commission to alter its proposal
2003 A common political approach emerged to tackle centralised jurisdiction and the language problem
2004 The Council acknowledged the agreement on the directive on strengthening the enforcement of IP rights
2007 The Commission released the Communication “Enhancing the patent system in Europe”
2009 The Swedish Presidency of the EU achieved a political agreement on a unified patent litigation system and a
unitary legal instrument for granting patents
2011 Under the Hungarian presidency of the EU, the European Commission proposed a “suggested solution” for a
unitary patent court in the EU, which addressed objections raised by the CJEU
2011 Under the Polish presidency of the EU, there was an agreement on the package comprising two regulations
establishing the unitary patent and the language regime
2012 Under the Danish presidency of the EU, there was an agreement on the location and competence of the
judiciary plus a suggestion to delete Arts. 6 to 8 of enhanced cooperation regulation
How to overcome the challenges facing the European IPR system?

9. European Patents with Unitary Effect
• Registered as such
• Identical scope of protection
• Unitary character
• Uniform protection
• Equal effect
• Limited, licensed, transferred, revoked or
lapsed in all participating MS
EUROPEAN COMMISSION (2011)
How to overcome the challenges facing the European IPR system?

10. Unified Patent Court
• Paris headquarters; London disputes over
pharmaceuticals and life sciences; Munich
disputes over mechanical engineering
• Choice of bringing an infringement action to
the central division if the defendant is based
outside the EU or if a revocation action is
already pending before the central division
EUROPEAN COUNCIL (2012)
How to overcome the challenges facing the European IPR system?

11. Unified Patent Court (continued)
• The unified patent court should not fail by
being another source of contradictory decision
• The unified patent court should not fail by
being a high-cost court
• There is still concern over the costs for for
accessing the court and costs related to
representation
• There is still concern over language
RODRIGUEZ (2012)
How to overcome the challenges facing the European IPR system?

12. Case Study: John Smith options
• National patents vs. Unitary patent
• A single EU patent would reduce patent costs
caused by fragmentation, translation,
maintenance
• National courts vs. Central court
• A centralised patent litigation system would
reduce costs caused by parallel litigation and
ease the uncertainty generated by
contradictory outcomes
How to overcome the challenges facing the European IPR system?

13. Conclusions
• The fragmentation, high costs and
uncertainty in the European Patent
System could explain some of the
difficulties that Europe has in moving
towards a more knowledge-intensive
economy in order to create jobs and
economic growth
How to overcome the challenges facing the European IPR system?

14. Sources
• EUROPEAN COMMISSION (2008) A more research-
intensive and integrated European Research Area
• EUROPEAN COMMISSION (2011) COM(2011) 215/3
• EUROPEAN COUNCIL (2012) Conclusions 29 June 2012
• RODRIGUEZ (2011) Constructing a Unitary Title Regime
for the European Patent System
• RODRIGUEZ (2012) From National to Supranational
Enforcement in the European Patent System
• SCELLATO ET AL. (2011) Study on the quality of the
patent system in Europe
• VAN POTTELSBERGHE (2009) Lost property
How to overcome the challenges facing the European IPR system?