Preface

The modern liberal state hesitates to grant monopolies to its citizens. If such privileges are granted nowadays, there has to be a strong justification for thus breaching the principal of equal treatment. All Intellectual Property rights, whether registered like Industrial Designs, Trade marks or not registered as Copyrights or Companies’ Goodwill (Passing off), create monopolies, since the right holder may prevent others from using his thought, the idea or invention.

Since intellectual property is insubstantial and therefore not visible, on the other hand, these rights must be protected by the state in a different way than the rights of property or possession of tangible assets. It is easy and cheap to reproduce intellectual property and - prima faciebeneficial into the bargain. To develop intellectual property by one self is time-consuming and cost-intensive. But people stop doing so immediately if the result of their work is not protected against copying, as there is no incentive to create new intellectual property.

‘Counterfeiting and piracy, and infringements of intellectual property in general, are a constantly growing phenomenon which nowadays has an international dimension, since they are a serious threat to national economies and governments.’ 1

In an international context, this phenomenon takes particular advantage of the national disparities in the means of granting and enforcing intellectual property rights. The degree of protection of intellectual property has therefore direct repercussions on trade and a direct impact on the conditions governing competition in the ‘Global Village’. This situation leads to diversions of trade, distorts competition and creates disturbances on the market. That leads to a loss in confidence in economic circles in the market, and hence to a reduction in investment -and results in hurtful economic and social consequences. The increasing use of the Internet in the Information Society, the immediate access to information and the provision of more and more information in electronic form facilitates infringement of all kinds of intellectual property.

¹ EC commission, Proposal for a ‘Directive of the European Parliament and of the Council on measures and

procedures to ensure the enforcement of intellectual property rights’, 3, 30 January 2002,

http://www.europa.eu.int/comm/internal_market/en/intprop/news/index.htm

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Research and development, manufacture and trade of technical products and articles have become ‘global’ in an extend that mankind has never went through and will grow to an extend that is not foreseeable at the present time. The more the interlocking of international markets increases, the more protection of intangible rights is needed on an international level.

This work is an outline of the recent status of protecting patent rights in an international context. The essay is principally divided into two main parts: (a) Application for and grant of a patent on an international level (Chapters 1 to 5) and (b) cross-border enforcement of patent rights (Chapter 6). For introductory purposes in Appendix I an overview over the basic principles and backgrounds of patent law can be found, which is not part of the work. Appendices II and III provide international sample patent applications.

Once again my special thanks go to Herbert Vogler, former staff of the patent department of Akzo Nobel B.V. / Akzo Nobel Faser AG, for his continuing support, in particular through contributing his views and judgement as a practitioner in questions of patent law in reality and assessing recent developments.

I have endeavoured to state the law and recent information like press releases or negotiations on treaties at April 15, 2003.

Contents

P  r e f a c e  I

Contents   III

B  i b l i o g r a p h y I  V

Table of  cases  VII

CHAPTER 1:  International Patents  1

1.  Introduction  1

2  Application for Patent in multiple countries  1

3  International Legal Protection  3

4  International Patent Treaties  3

CHAPTER 2:  Paris Convention  5

1  Introduction  5

2  Subject Matter  5

3  I m p a c t 6  2

4  P i t f a l l  7

CHAPTER 3:  Patent Convention Treaty  8

1  Introduction  8

2  Procedure  8

3  I m p a c t  1

4  P i t f a l l s 1  2

CHAPTER 4:  European Patent Convention  13

1  Introduction  13

2  Procedure  13

3  I m p a c t 1  5

4  P i t f a l l s 1  7

CHAPTER 5:  Recent developments  19

1  Introduction  19

2  TRIPS  19

3  (Substantive) Patent Law Treaty  21

4  EAPO, ARIPO OAPI  22

5  EC Community Patent  23

CHAPTER 6:  Cross-border enforcement  25

1  Cross-border patent enforcement strategies  25

2  Cross-border patent infringement defences  30

3  Selecting the governing law  35

4  Recent developments  36

CHAPTER 7:  Conclusions  38

APPENDIX I:  Basic principles  AI

1  Introduction  AI

2  The origin of patents  AI

3  Patentability  AIII

4  Procedure  AV

5  Scope of monopoly  AIX

6  Property rights and exploitation  AX

7  Revocation  AXI

APPENDIX II:  Sample PCT Application  AXII

APPENDIX III  : Sample EPC Application  AXIII

III

Bibliography

Adams

Choice of forum in patent disputes

(1995) EIPR 498.

Brouër/Schennen

Patent Law and European Patent Convention

(1991)

Cornish,

Intellectual Property

(1996)

Däbritz

Patente: Wie versteht man sie? Wie bekommt man sie? Wie geht man mit ihnen um?

[Patents: How to understand? How to get? How to deal with?]

(1994)

Ebbink

Cross-border injunctions: Are the Dutch getting support?

(1996) PatW 16.

Engelfriet

Crash Course on Patents

(2002), http://www.iusmentis.com/patents/

EU Comission

Commision Working Document on the planned Community Patent Jurisdiction

30 August 2002, COM(2002) 480 final

European Patent Office

The EPO Guide for Applicants

http://www.european-patent-office.org/epo/pubs/index.htm

Grace

A Handbook on Patents

(1971)

Harriss/Newiss

International Intellectual Property Litigation

(1998)

Hendrick

Grensoverschrijdende maatregelen in het octrooirecht: gereechtvaardigd, of juridisch

imperialisme?

[Cross-border meassures in patent law: Justified, or juridicial imperialism?]

in Intellectuelle eigenaardigheden: Opstellen aangeboden aan mr. (ed. Theo R Bremer)

(1998)

Hess

Rechtsfolgen von Patentverletzungen im europäischen Patentrecht

[Legal consequences of patent infringement in European Patent Law]

(1987)

IV

(Bibliography contd.)

Lea

Book review (Fawcett/Torremans; Intellectual Property & Private International Law) (1998)

IPQ 444

Mandich/Prager

Venetian Patents (1450-1550)

(1948) 30 J.P.O.S. (Journal of the Patent Office Society) 166

Mathely/Benthem

Le Droit européen des brevets et des inventions

[The European Law on patents and inventions]

(1978) Librairie du Journal des notaires et des avocats,VI-466

Mes

Patentgesetz - Gebrauchsmustergesetz (Kommentar)

[German Patent Act (Annotated Version)]

(1997)

Muir/Brandi-Dohm/Gruber

European patent law: law and procedure under the EPC and PCT

(2002)

O’Sullivan

Cross-border jurisdiction in patent infringement proceedings

(1996) EIPR 654

Otte

Internationale Zuständigkeit und Territorialitätsprinzip - Wo liegen die Grenzen der

Deliktszuständigkeit bei Verletzung eines europäischen Patents?

[International competence and principle of territoriality - where are the borders of tortuous

liability in European patent infringement?]

(2001) IPRax 318

Penny

Cross-Border Business Litigation

[2002] Lexpert/American Lawyer Media, 77

Pertegás Sender

Cross-Border Enforcement of Patent Rights

(2002)

Stauder/von Rospatt/von Rospatt

Cross-border protection of European patents

(1998)

Tetzner

Die Verfolgung der Verletzung ausländischer Patente vor deutschen Gerichten unter

Berücksichtigung des EWG-Gerichtsstands- und Vollstreckungsabkommens

[The prosecution of the infringement of foreign patents before German courts with

consideration of the Brussels Convention]

(1976) GRUR 671

Tritton/Tritton

The Brussels Convention and intellectual property

(1987) EIPR 351

V

(Bibliography contd.)

Wadlow

International Enforcement of Intellectual Property Rights

(1998)

World Intellectual Property Organisation (WIPO)

Basic Facts about the PCT

(2002), WIPO Publication No. 433 (E)

http://www.wipo.int/pct/en/basic_facts/basic_facts.pdf

WIPO

PCT Applicant’s Guide - Volume I

(2003), http://www.wipo.org/pct/guide/en/index.html

VI

Table of Cases

Dispute Settlement Body WTO

Panel Report WT/DS114/R of March 2000 in ‘Canada - Patent Protection of

Pharmaceutical Products’.

European Court of Justice

ECJ Case 15/74: Centrafarm/Sterling Drugs, [1974] ECR 1147

ECJ Case 51/75, EMI Records/CBS United Kingdom [1976] ECR 811

EJC, Case C-21/76, Handelskwekerij Bier/Mines de Potasse d'Alsace, [1976] ECR 1735

ECJ, Case C-33/78, Somafer/Saar-Ferngas, [1978] ECR 2183

EJC, Case C-189/87, Kalfelis/Schröder, [1988] ECR 5565

ECJ, Case C-183/90, Van Dalfsen/Van Loon, [1991] ECR I-4743

EJC, Case C-68/93, Shevill/Presse Alliance, [1995] ECR I-415

ECJ, Case C-51/97, Réunion européenne a.o./Spliethoff’s Bevrachtingskantoor BV and the

Captain of the ‘Aablasgracht’ ship, [1998] ECR I-6511

EJC, Case C-7/98, Krombach/Bamberski, [2000] ECR I-1935

ECJ, Case C-412/98, Josi Reinsurance/Universal General Insurance Company,

[2000] ECR I-5925

Austria

ÖOGH (Austrian Supreme Court), GRUR Int. 1994, 324 - Sockelplatte

Belgium

District Court of Brussels, 19 January 2001, Novo Nordisk e.a./DSM, AR 99/3766/A

District Court Brussles, 29 January 1996 (Torre & Tendeur Universel/Roose, Ready

Strtetch & Ital Dibipack (1996) Ing Cons 92

Germany

BGH (German Federal Supreme Court) 3 June 1976, GRUR 1976, 579 — Tylosin

BGH (German Federal Supreme Court) 11 July 1995, GRUR 1996, 109 - Klinische

Versuche

VII

(Table of Cases contd.)

LG (District Court) Düsseldorf, 16 January 1996, (1996) Entsch Düss 1

LG (District Court) Düsseldorf 25 August 1998 (Schußfadengreifer), (1999) GRUR Int 455

OLG (Court of Appeal) Düsseldorf, 22 July 2001, (2001) IPRax 315

Netherlands

District Court The Hague, 23 December 1997, Akzo Nobel/Webster, (1998) IER 75

President District Court The Hague, 15 July 1998, Augustine/Mallinckrodt

District Court of The Hague, 14 May 1997, Chiron/Evans Medical Ltd, (1997) IER 143

Court of Appeal The Hague, 20 May 2000, EKA/Nako, not yet published

Court of Appeal The Hague, 23 April 1998, Expandable Grafts, Ethicon & Corid

Europe/Boston, [1999 FSR] 352

Court of Appeal The Hague 26 November 1998, Evans/Chiron, (1998) IER 135

Court of Appeal of The Hague, 22 January 1998, Evans Medical Ltd/Chiron,

(1998) IER 135

President District Court The Hague, 26 November 1997, Goldschmidt/Elzbieta),

(1998) IER 79

Court of Appeal The Hague, 1 December 1994, Organin Technika-UBI/Chiron,

(1995) IER 15

District Court The Hague, 31 March 1999, Scimed/Guidant, (1999) BIE 445

President District Court The Hague, 26 August 1998, Searle & Monsanto/Merck Sharp &

Dome, (1999) BIE 59

Sweden:

Supreme Court of Sweden, 14 June 2000, Flootek, [2001] GRUR Int 178

United Kingdom

Coin Controls v Suzo International [1997] FSR 660

Chiron v Evans Medical [1996] FSR 863

Fort Doge v Akzo Nobel, [1998] FSR 222

Pearce v Ove Orup Partnerships and others [1997] WLR 779

VIII

As introduction, however, an example may show the importance of an international protection

infringement in Canada, France, USA, Spain and Switzerland. The directors of Inventos are also interested in necessary steps to proceed to preserve once gained protection and indications for hazards and pitfalls.

There are - generally spoken - three requirements (as shown in Appendix I.4) that a patent application has to fulfil upon a patent is granted. (1) The idea has to be novel; (2) it has to be an Inventive Step; and (3) it has to be Industrial Applicable.

Inventos already fulfilled these requirements at the Irish Patent Office. But when an applicant seeks to expand the patent grant to other countries, like Canada, France, USA, Spain and

Switzerland, the applicant has to apply in every of these countries for the grant of the patent, and actually has to fulfil these three general requirements in each country and has to await the examination process of each national authority. Of course, the procedure - especially the novelty search and examination — at every national patent office charges application fees.

On the other hand is the risk that the application does not comply with the local interpretation of the requirements of patentability. Although the Patent Acts of most countries are structured rather comparably, the interpretation of what is novel or industrial applicable follows merely national criteria. ¹ Another difficulty is that once an invention is published anywhere in the world it is not “new” anymore. Part of the national patent application is a publication of the invention (see Appendix I.4.II). Furthermore, competitors could file their coincidental creation in other countries earlier - “first come, first served”.

ii) “World Patent“

For decades experts involved in patents dream of a “World Patent”, that means a single application, a single novelty search and a single examination leads to one patent that protects the invention worldwide against infringement at one single standard. A “World Patent” would facilitate registration as well as protection and defence of patented inventions.

iii) General Rule: Patent law is affair of domestic law and jurisdiction

At present, the international development is many steps before this ideal. The governing principle of International Private Law is e.g. expressed by Article 16(4) of the Brussels Convention on Jurisdiction and Enforcement:

‘Issues related to the registration of a right are exclusively the domain of the country in which that registration took place.’

It is a principle of International Private Law the Protection that a patent right is exclusively affair of domestic (national) law and this principle assures the national courts an exclusive jurisdiction on intellectual property matters. 2

The ‘Convention on Jurisdiction and the Enforcement of Judgements in Civil and Commercial Matters’ (Brussels Convention) of 1968, to which all members of the EU are signatories and the ‘Convention on Jurisdiction and the Enforcement of Judgements in Civil and Commercial Matters’ (Lugano Convention) of 1988, which effectively extends the provisions of the Brussels Convention to European Free Trade Association (EFTA) countries regulate - inter alias — the relation of national intellectual property rights and their exploitation and enforcement on a European level. Since March 2002, the ‘Regulation 44/2001 on Jurisdiction and Enforcement’ (the Brussels I Regulation) largely replaced the Brussels Convention within the European

¹ e.g. Improver Corp v Remington Consumer Products Ltd, 1990 FSR 181; where a British and a German court differed

on the issue of infringement when applying the same principles under the European Patent Convention; even though

both courts were applying the convention correctly.

² Pertegás Sender, Cross-Border Enforcement of Patent Rights (2002), 2.01

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Union. These conventions/regulation do neither deviate from International Private law in this respect.

A patent has several dimensions to serve and to protect the economic interests of the patentee. From an international perspective there are certain dimensions which play a notable role in the international protection of a patent. Summarising the essence of the national patent system (as described in Appendix I) the following facets of a patent have to be focused in the worldwide context:

• Right of Priority/Earlier Filling

• Exclusive right to exploit an invention in a certain jurisdiction

• Disclosure of inventions

• Protection against patent infringement

• Licensing of inventions

• Compensation in case of an infringement

• Enforcement of patent rights and protections rights

All these dimensions are treated in every country in different ways and by different international agreements. Nevertheless, due to the strong interest of the various countries to preserve their own local patent law ³ , the actual protection and defence of a patent has to take place on the local, national level. Task of the transnational level is - at present — solely to try to harmonise and equalise the various different national laws.

The main treaties which try to facilitate an international protection of patents are:

• The Paris Convention for the Protection of Industrial Property of 1883

• The Patent Cooperation Treaty (PCT) of 1970

³ Laddie J, Fort Dodge v Akzo Nobel, [1998] FSR 222

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• Convention on the Grant of European Patents (EPC) of 1973

• Agreement on Trade-related aspects of Intellectual Property Rights (TRIPs) of 1994

• Patent Law Treaty (PLT) of 2000

Since established, these treaties have continuously been reviewed and amended. There are also several secondary important treaties and conventions, which will be mentioned in the following chapters.

Not patent treaties, but inter alias concerned with the enforcement of patents rights are the ‘EC Convention on Jurisdiction and the Enforcement of Judgments in Civil and Commercial Matters, Brussels 1968 (Brussels Convention), the ‘Convention on jurisdiction and the enforcement of judgments in civil and commercial matters done at Lugano’ (Lugano Convention) of 1988 and the ‘Council Regulation (EC) No 44/2001 of 22 December 2000 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters' (Brussels I Regulation) ⁴ . These are to be dealt with in Chapter 6.

⁴ OJ L 012 , 16/01/2001 P. 0001 - 0023

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The “Paris Convention for the Protection of Industrial Property”, signed on March 20, 1883 in Paris, is commonly quoted in the context of introducing the right or priority. Beyond doubt, this regulation is the substantial characteristic of this early international cooperation. But an additional effect was that the competent authorities of the individual countries talked with each other and some anachronisms in the different national Patent Acts were diminished through exchange of experience. Like every other right, the patent law had to develop and this is mostly facilitated by exchanging practice knowledge and the experiences of others — probably the most positive effect of the Paris Convention. The Paris Convention either created the World Intellectual Property Organisation (WIPO) which is located in Geneva.

The Paris Convention is for now signed by 164 member states. ⁵ Unfortunately there is still a number of important states that have not yet signed the treaty; e.g. Taiwan.

In respect of Parts II, III and IV of the Trade Related Intellectual Property Rights (TRIPS) Agreement, WTO Members are obliged to comply with Articles 1 through 12, and 19, of the latest act of the Convention, the Stockholm Act of 1967.

The Paris Convention created an equal treatment of foreign and domestic intellectual property rights. The Convention applies to industrial property rights, including patents, trademarks, industrial designs, utility models, trade names, and indications of source, appellations of origin, and the repression of unfair competition. The Convention provides that, as regards the protection of industrial property, each contracting State must grant the same advantages to nationals of the other contracting States as it grants to its own nationals (Article 2).

⁵ Status on October 15, 2002; http://www.wipo.org/treaties/ip/paris/

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