Dr. Thomas W. ReimannIP Practice in Japan

AIPLA Midwinter Meeting Las Vegas, January 2012

Latest Patent Development in the European Union

Overview

• Unified Patent Court and Unitary Patent Protection

• Latest developments in litigation cases• Doctrine of Equivalence – reshaped but still

alive• News on FRAND• Design Rights – fast track to an injunction?

© AIPLA 20122

Unified Patent Court and Unitary Patent Protection - Development

• 1975/1989: (Amended) Community Patent Convention not ratified• 2000-2004: Proposals for Community Patent Regulation failure to agree on details• 2005 – today: new debate – still no final decision:• February /March 2011: enhanced cooperation procedure

introduced (EU Member States except Spain & Italy)• March 2011: CJEU: creation of a Unitary Patent Court

incompatible with EU law• May 2011: Italy & Spain sue against trilingual system• September 2011: Parliament approves continuation of

negotiations © AIPLA 20123

Unified Patent Court and Unitary Patent Protection - Development

• November 2011: Draft of the Agreement is published• 5. December 2011: Competitiveness Council fails to agree on

final text• 16. December 2011: Polish Presidency acknowledges failure to

reach an agreement• February 2012: decision to be expected???

3 basic components:1.Proposed Regulation for the creation of unitary patent

protection2.Proposed Regulation regarding applicable translation

arrangements3.Draft Agreement regarding Unified Patent Court and Draft

Statute © AIPLA 20124

Proposal regarding Unitary Patent Protection

• Special agreement within the meaning of Article 142 EPC (Art.1)• Identical scope of protection, unitary character, unitary effect (Art.3)• Right to prevent direct and indirect use of invention (Art. 6-7)• Rules on limitation and exhaustion (Art. 8-9)

© AIPLA 20125

Structure of the envisaged Unitary Patent Court

• Court of 1st Instance: • Central division (location still not decided: Munich? Paris?

London? Milan?...)• local and regional divisions• Panels with multinational composition• Pool of Judges

• Court of Appeal

© AIPLA 20126

Competence of the envisaged Unitary Patent Court

• Jurisdiction for:• European patents with unitary effect• European patents• In force at the effective date• Opt-out option according to Art. 58 during transitional

period of 5 years

• referrals to the CJEU (Art. 14 b)

© AIPLA 20127

Shortcomings and Criticism

• inexperienced local divisions reduction of quality and efficiency• complex and administratively burdensome structure• court fees/litigation costs still unclear – important especially for SMEs• where are the highly qualified judges supposed to be found?• transitional period of 5 years too short• more opt-out/opt-in flexibility favorable• unpredictable number of referrals to the CJEU – no experience / time-consuming• rules of procedure unclear• high risk of forum shopping – disadvantages for potential patent infringers (high translation and travel expenses)

© AIPLA 20128

Latest litigation cases: News on FRAND

FRAND – fair, reasonable and non-discriminatory terms for licensing of standard essential patents German Federal Supreme Court (KZR 39/06- Orange-Book-Standard) established strict requirements for FRAND-defense:• irrevocable, binding offer of licensee – exact

amount of royalty can be left to equitable discretion of the licensor which can be controlled by court upon request of licensee

• deposit of payment for ongoing royalties• regular payments, rendering of accounts © AIPLA 20129

Latest developments in substantial law: News on FRAND

Latest case law: Mannheim District Court in Motorola v. Apple (7 O 122/11): Does the license-offer also have to deal with damages for use in the past?Facts:• Apple made an offer for a license, but reserved the

right to contest the validity of the patent in suit “when, insofar and for as long as” Motorola would seek damages for past infringement above a FRAND rate

• Apple also has a nullity action pending against the patent in suit © AIPLA 201210

Latest developments in substantial law: News on FRAND

Decision: Apple`s offer not sufficient for a FRAND-defense: damages limited to FRAND royalty rate give infringer unjustified advantage compared to a regular licensee (recent article by Presiding Judge Meier-Beck of Federal Supreme Court: damages up two double amount of regular royalty or more) Open questions:• Can FRAND offer be limited to patent in suit or does it have to

cover all (world-wide) standard-essential patents in the portfolio of licensor?

• Does willful infringement preclude FRAND defense?• Nullity action besides FRAND defense possible? Pay back if patent

invalid? © AIPLA 201211

Latest litigation cases: Design rights – fast track to an injunction?

• Recent case law in Germany: Apple v. Samsung (14c O 194/11)• Facts:

• Apple is proprietor of a community design right for a tablet computer reflecting the design of the “iPads“

• Samsung sent its “Galaxy Tab“ to different German magazines, which tested and reported about it

Duesseldorf District Court granted a preliminary injunction (appeal pending)

© AIPLA 201212

Latest litigation cases: Design rights – fast track to an injunction?

High potential of Design rights: • extend IPRs to the visual design of objects which are not purely technical• unexamined IPR – only formal criteria are examined during the registration process – statutory but rebuttable assumption of validity• relatively low costs• strategic importance in a variety of technical fields

important additional protection besides other IPR’s

© AIPLA 201213