Contents Bibliography Table of cases
CHAPTER 1: International Patents
2 Application for Patent in multiple countries
3 International Legal Protection
4 International Patent Treaties
CHAPTER 2: Paris Convention
2 Subject Matter
CHAPTER 3: Patent Convention Treaty
CHAPTER 4: European Patent Convention
CHAPTER 5: Recent developments
3 (Substantive) Patent Law Treaty
4 EAPO, ARIPO & OAPI
5 EC Community Patent
CHAPTER 6: Cross-border enforcement
1 Cross-border patent enforcement strategies
2 Cross-border patent infringement defences
3 Selecting the governing law
4 Recent developments
CHAPTER 7: Conclusions
APPENDIX I: Basic principles 1 Introduction
2 The origin of patents 3 Patentability
4 Procedure 5 Scope of monopoly
6 Property rights and exploitation 7 Revocation
APPENDIX II: Sample PCT Application
APPENDIX III : Sample EPC Application
“Columbus was not the first who discovered America,
but he patented it as the first.”
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 facie - beneficial 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.
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.
Dublin in April 2003
Choice of forum in patent disputes (1995) EIPR 498.
Patent Law and European Patent Convention (1991)
Intellectual Property (1996)
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?]
Cross-border injunctions: Are the Dutch getting support? (1996) PatW 16.
Crash Course on 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
A Handbook on Patents (1971)
International Intellectual Property Litigation (1998)
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)
Rechtsfolgen von Patentverletzungen im europäischen Patentrecht [Legal consequences of patent infringement in European Patent Law] (1987)
Book review (Fawcett/Torremans; Intellectual Property & Private International Law) (1998) IPQ 444
Venetian Patents (1450-1550)
(1948) 30 J.P.O.S. (Journal of the Patent Office Society) 166
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
Patentgesetz - Gebrauchsmustergesetz (Kommentar) [German Patent Act (Annotated Version)]
European patent law: law and procedure under the EPC and PCT (2002)
Cross-border jurisdiction in patent infringement proceedings (1996) EIPR 654
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
Cross-Border Business Litigation
 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)
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
The Brussels Convention and intellectual property (1987) EIPR 351
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
PCT Applicant’s Guide – Volume I
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,  ECR 1147
- ECJ Case 51/75, EMI Records/CBS United Kingdom  ECR 811
- EJC, Case C-21/76, Handelskwekerij Bier/Mines de Potasse d'Alsace,  ECR 1735
- ECJ, Case C-33/78, Somafer/Saar-Ferngas,  ECR 2183
- EJC, Case C-189/87, Kalfelis/Schröder,  ECR 5565
- ECJ, Case C-183/90, Van Dalfsen/Van Loon,  ECR I-4743
- EJC, Case C-68/93, Shevill/Presse Alliance,  ECR I-415
- ECJ, Case C-51/97, Réunion européenne a.o./Spliethoff’s Bevrachtingskantoor BV and the Captain of the ‘Aablasgracht’ ship,  ECR I-6511
- EJC, Case C-7/98, Krombach/Bamberski,  ECR I-1935
- ECJ, Case C-412/98, Josi Reinsurance/Universal General Insurance Company,  ECR I-5925
- ÖOGH (Austrian Supreme Court), GRUR Int. 1994, 324 – Sockelplatte
- 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
- 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
(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
- 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
- Supreme Court of Sweden, 14 June 2000, Flootek,  GRUR Int 178
- Coin Controls v Suzo International  FSR 660
- Chiron v Evans Medical  FSR 863
- Fort Doge v Akzo Nobel,  FSR 222
- Pearce v Ove Orup Partnerships and others  WLR 779
Chapter 1 Internationa l Patents
The Ideal of a “World Patent”
illustration not visible in this excerpt
As introduction, however, an example may show the importance of an international protection of patents in a globalised world: The ‘Inventos Ltd’ invented (and manufactures) the original ‘Swiss Army Bagel’. Inventos is a local small size business in Co. Kilkenny, but it patented the ‘Swiss Army Bagel’ at the Irish Patent Office under the Patent No. 9,624,888. At present, the ‘Swiss Army Bagel’ is just known (and distributed) in the region of Kilkenny.
Inventos plans to expand its business to Western Europe and North America. The directors of Inventos ask their company’s solicitor Roger Ryan how Inventos could protect the ‘Swiss Army Bagel’ against 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.
2 Application for a Patent in Multiple Countries
i) National Privileges granted by National Standards
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
3 International Legal Protection
Dimension of Protection from an International Point of View
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 law3, 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.
4 International Patent Treaties
The Main Treaties
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
- 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.
Chapter 2 Pari s Convention
First International Cooperation in Industrial Property Rights
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.
2 Subject Matter
Right of Priority
i) Equal Treatment
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).
ii) Right of Priority
The right of priority concerns patents, (and utility models, where they exist), industrial designs, and trademarks. On the basis of a regular first application file in one of the contracting States, the applicant may, within a certain period of time (12 months for patents and utility models), apply for protection in any of the other contracting States. These later applications will be regarded as if they had been filed on the same day as the first application (Article 4). Thus claiming the filing date of the first application as the effective filing date of the later applications, which means no one else can apply for a patent in another country pretending he was first in applying with this invention.
iii) Common Rules
The Convention contains a number of common rules on the protection of various areas of industrial property. For example, patents granted in different contracting States are independent of each other (Articles 4 bis). Each country of the Union shall have the right to take legislative measures providing for the grant of compulsory licenses to prevent the abuses which might result from the exercise of the exclusive rights conferred by the patent (Article 5 (2)), for example, unfair competition matters (see Appendix I.6).
Forfeiture of the patent shall not be provided. Excepted are cases where the grant of compulsory licenses would not have been sufficient to prevent abuses.
The Paris Convention harmonises to some stage the proceedings for the forfeiture or revocation of a patent (Article 5 (3) and (4)).
Once a product is patented in a country, the patentee shall have all the rights, which are accorded to him by the legislation of the country, even he is merely importing the product to the foresaid country (Article 5quater).
iv) National Administration
Each contracting State must maintain a special industrial property service and a central office for the communication to the public of patents, (utility models), industrial designs and trademarks (Article 12).
Step to Globalise Capitalism
The impacts of the treaty were immense. From 1883 on, a product could (in industrial property terms) ‘freely’ circulate in several industrialised countries, without the danger of infringement and unprotected misuse of research investments. It was a big foot step to “globalise” nineteenth century capitalism.
Upon today, the Paris Convention still provides important effects to patent applications.
The applicant gains time to decide on applications for patent protection in other countries and time to make the necessary preparations (e.g. translations). The application procedure for a patent is – especially for small size business — a notable cost factor.6 An applicant can first apply for a patent in one of the member states without losing the “novelty” of the invention, i.e. the applicant keeps the priority of an earlier application for applications in all subsequent states.
The inventor can apply for a patent in just one country and afterwards publish his invention in a journal or show it at an exhibition. In the examination process of the later applications only publications that exist before the filing date of the earlier application are considered.
On the other hand, the term a patent is granted for is generally 20 years. After the application for a patent in one member state of the Paris Convention the patentee has up to one year to decide in which countries he additionally wants to apply for patent protection. Because most countries calculate the patent term from the actual filing date in that country, the patentee can stretch the term in some countries up to 21 years.
Still nationally isolated applications
The Paris Convention was – according to the time of its settlement – a big step. But it was pretty far away from the ideal of a “world patent” drafted before.
The Convention does not either define the subject-matter to be protected, the rights to be conferred, permissible exception, or the minimum term of protection.
Furthermore isolated application and isolated examination processes are necessary in each designated country. The degree of protection depends, still, on the national legislation and jurisdiction standards.
Chapter 3 Paten t Cooperation Treaty
Internationally centralised Filing and Application
A patent is granted by a national patent office or by a regional office that does the work for a number of countries, such as the European Patent Office (EPO) or the African Regional Industrial Property Organisation (ARIOPO). Under such regional systems, an applicant requests protection for the invention in one or more countries, and each country decides as to whether to offer patent protection within its borders. The Patent Cooperation Treaty (PCT) provides the filing of a single international patent application which has the same effect as national applications filed in the designated countries. An applicant seeking protection may file one application and request protection in as many signatory states as needed. The Patent Cooperation Treaty (PCT) was signed in 1970. The World Intellectual Property Organisation (WIPO) administers the PCT and accepts patent applications for the 1187 different member states of the treaty. The International Bureau of WIPO and it’s headquarter are located in Geneva.
The PCT does not eliminate the necessity of prosecuting the international application in the national phase of processing before the national (or regional) patent offices, but it facilitates such prosecution in several important respects by virtue of the procedures carried out under the PCT.
The PCT procedure can be divided in two major phases: The International Phases and the National Phases.8 During the International Phases the International Bureau of WIPO checks the formalities of the application, carries out an international search and (optionally) the international preliminary examination. In comparison to a direct application at a national patent office, this procedure provides an automatic deferral of national processing which is entailed to give the applicant more time and a better basis for deciding whether and in what countries to further pursue the application.
illustration not visible in this excerpt9
STEP 1: Filing of the International Application and its Processing
The Applicant files an “International Application”10 to the International Bureau via a national patent office. The PCT treats applications for patents for inventions, inventors’ certificates, utility certificates, utility models, and various kinds of patents and certificates of addition (Article 2(i) PCT). The applicant can desire the grant of a patent in all (or selected) countries or “regions” (ARIPO, Eurasian, European or OAPI patent) that are member to the PCT (Article 2(i) and (ii), 3(i) PCT).
Any international application has two main effects. The first effect is the same consequence of an international application as that of a national (or regional) application (Article 4(1) (ii), 11(3), 64(4), Rule 4.9). It occurs on the date accorded as the international filing date in the designated states. The second effect is that no designated Office may process or examine the international application prior to the expiration of 30 months from the priority date. If international preliminary examination has been demanded, the delaying effect is even 10 months longer (Articles 39 (1), 40 (1) PCT). The international application must contain the following elements: request, description, claim or claims, one or more drawings (where drawings are necessary for the understanding of the invention), and an abstract (Articles 3 (2), 7 PCT). The language of the request must be in a language which is both a language accepted by the receiving office and a language of publication (Chinese, English, French, German, Japanese, Russian or Spanish), and the text matter of the drawings (if any) and the abstract may be in the language in which the international application is to be published (Article 3(4) (i), Rule 12.1, 48.3(b) PCT).
STEP 2: International Search Report
During the PCT procedure the International Bureau checks formalities, there is a single publication, and a single search is carried out on this, by an internationally recognised searching organisation (Usually the US Patent and Trademark Office, the European Patent Office or the Japanese Patent Office) (Article 20 PCT).
STEP 3: Publication of the International Application and Transfer of Application to the National (Regional) Patent Offices
Within 18 months after the priority date the PCT application will be published by the International Bureau (Article 21 PCT). If the applicant decides to continue the application process the International Bureau forwards the application papers together with the search report to the various designated national patent offices. This modus operandi is called “Chapter I” procedure (hereinafter referred to as “PCT I”).
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
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 Union. These conventions/regulation do neither deviate from International Private law in this respect.
3 Laddie J, Fort Dodge v Akzo Nobel,  FSR 222
5 Status on October 15, 2002; http://www.wipo.org/treaties/ip/paris/
6 The avarage costs of European Patent as at 1 July 1999 in 8 states for a 10 year term are 29,800 EUR; in which 4,300 EUR (14%) are EPO fees, 5,500 EUR (18%) for Patent Attorneys, 11,500 EUR (39%) translation costs and 8,500 EUR (29%) national renewal fees (Cook, A User’s Guide to Patents, 2.26))
7 Status on January 15, 2003; http://www.wipo.int/treaties/registration/pct/index.html
9 Adopted from Däbritz, Patents (1994), Appendix 3.0
8 The expressions “International Phase” and “National Phase” are not actually used in the PCT, but they are convenient, short expressions which have become customary to be used.
10 Sample Application see Appendix II