Patent Dependency Under European And European Union Patent Law A Regulatory Gap

Technological progress generally is not disruptive but sequential. Innovations build on prior innovations, typically by presenting improvements or complements. Under patent law, such follow-on innovation meets with an obstacle if the use of the invention underlying it infringes a prior patent, and if, for one reason or another, the owner of that prior patent prefers, as it may, to refuse granting a license. It is only in case the follow-on (or “second”) invention involves an important technical advance of considerable economic significance in relation to the invention claimed in the prior (or “first”) patent that in Europe, in accordance with Art. 31 TRIPS, national patent laws provide for a right of the owner of the second patent to obtain, by way of a decision of the patent office or of a court, a dependency license. By contrast, the EU's system of unitary patent protection does not provide for a dependency licensing regime. Instead, Reg. 1257/2021 on the European patent with unitary effect refers the matter to national law. This means that despite the importance of its invention the owner of a dependent patent will never obtain a mandatory license covering the Internal Market but only territorially limited national licenses for which it must apply separately in each Member State, go through multiple different procedures and comply with different national requirements. The absurdity of such hindering of follow-on innovation in the Internal Market by regulatory abstention is no less as regards national patents that the European Patent Office grants as a bundle in the form of the European patent and that are now additionally held together by the uniform infringement rules of the Unified Patent Court Agreement. After all, that category of a European patent is supposed to represent an equivalent alternative to the unitary patent and, therefore, ought to meet the same Internal Market requirements. Therefore, this study proposes to harmonize Member States' dependency licensing regimes and to complement the system of unitary patent protection accordingly. To this end, it presents the common principles of national regimes, analyzes the particular need for and characteristics of modern mandatory licensing rules and discusses the deficits of alternative approaches that might be available under EU competition law. A particular stress is put on distinguishing dependency licensing from compulsory licensing in the public interest, and on the functional complementarity existing between incentivizing inventions by patent protection and stimulating follow-on innovation by mandatory licensing regimes.

'It is no longer possible to practice, teach, or study purely domestic intellectual property law within Europe. European intellectual property norms now structure protection throughout the continent (and even beyond). Paradoxically, what might seem as a simplification of legal rules has created a maze of new complexities substantive, institutional and methodological. This collection by some of the leading scholars in European IP manages to capture that complexity without sacrificing clarity. Canvassing the entire field with a rich array of contributions, the book both highlights the roots of European IP law and asks important fundamental questions about where it is going. One can only hope that it is read by anyone with a hand in the future development of European IP law.' Graeme B. Dinwoodie, University of Oxford, UK 'Christophe Geiger has put together a very fine collection of essays by many of the very best scholars in European intellectual property law. The essays explore the basis, extent, as well as the successes and failings of regional harmonization of trade marks, geographical indications, copyright, designs, patents and remedies. The celebrated cast of authors naturally discuss, in addition to the various directives and regulations on each topic, the Treaty provisions on exhaustion of rights and competition (and their interpretation), relevant provisions on legislative competence, Article 17(2) of the Charter, other fundamental rights, and the growing case law of the Court of Justice. There is essential material here for anyone interested in European intellectual property law, as well as ideas for the improvement and further development of European IP law.' Lionel Bently, University of Cambridge, UK Constructing European Intellectual Property offers a comprehensive assessment of the current state of intellectual property legislation in Europe and gives direction on how an improved system might be achieved. This detailed study presents various perspectives on what further actions are necessary to provide the circumstances and tools for the construction of a truly balanced European intellectual property system. The book takes as its starting point that the ultimate aim of such a system should be to ensure sustainable and innovation-based economic growth while enhancing free circulation of ideas and cultural expressions. Being the first in the European Intellectual Property Institutes Network (EIPIN) series, this book lays down some concrete foundations for a deeper understanding of European intellectual property law and its complex interplay with other fields of jurisprudence as well as its impact on a broad array of spheres of social interaction. In so doing, it provides a well needed platform for further research. Academics, policymakers, lawyers and many others concerned with establishment of a regulatory framework for intangibles in the EU will benefit from the extensive and thoughtful discussion presented in this work.

A new patent right for Europe (the European Patent with Unitary Effect) and a new European enforcement and invalidation regime (the Unified Patent Court) are expected to come into operation soon, potentially as early as 2015. Existing patents granted by the European Patent Office (EPO), as well as those granted in the future, will automatically come under the jurisdiction of the new Court, unless opt-out rights are exercised. These measures represent one of the most complex and ambitious legal reforms in the field of European intellectual property since the creation of the EPO in 1977. For applicants and proprietors used to the current European system of national patents and national courts, the new system will present both opportunities and challenges in developing, maintaining and leveraging a cost-effective patent portfolio. For manufacturers, distributors and end-users, the new system will subject their activities to the jurisdiction of a new court, with unique and possibly unfamiliar powers and procedures. Decisions must therefore be made as to how best to take advantage of the possibilities afforded by the new system. Applicants and proprietors are already asking themselves questions such as: Should I start to register European patents as European Patents with Unitary Effect when they become available, or should I continue with national validation? For which European patents and applications should I make use of the opt-out to keep litigation in the national courts? Should I consider reverting to national filings instead of using the EPO? How will the new Unified Patent Court be structured, and how will it work? What choices will I have in future as to where to litigate – should I choose a national court or the UPC to enforce or invalidate a European patent? This Handbook provides both guidance for the strategic decisions which will have to be taken and a detailed reference manual to the law and practice of the new system.

The creation of the Unified Patent Court (UPC) is the most prominent change in the European legal landscape for the last four decades. This book explains how the new system works in practice and how to make the best use of its provisions. It offers readers an in-depth and comprehensive commentary on the legal mechanisms of the upcoming ratified European Patent Law, and advice on potential problems that users of the forthcoming regulations may face. The book first describes the creation of the Unified European Patent Law and how its four new legislative texts interact. The new legislative texts are then explained and commented on in detail, rule by rule, with diverse approaches and perspectives from a practitioner team comprising patent litigators, European patent attorneys, law professors and patent judges. The Commentary takes into account the practical needs of users of the new system on both the prosecution and enforcement sides, addressing substantive and procedural problems. This book is the most authoritative text on the Unitary Patent and Unified Patents Court, and an invaluable tool for practitioners in this rapidly developing area of law.

As of 1st of June 2023, after years of negotiations, setbacks and postponements, the Unitary Patent Package (UPP) enters into force: the European patent with unitary effect (EPUE) becomes a reality and the Unified Patent Court (UPC) starts its activities.Regrettably, the patent regime put in place is not a genuine EU system. Adopted through an enhanced cooperation procedure, it firstly does not include all EU Member States. Secondly, the conditions and the procedure for granting EPUE is in the hands of the European Patent Office, an international organization to which EU is not a party. Lastly, the substantive provisions and the litigation proceedings are defined by an international treaty (the UPC Agreement) to which EU is not a member, and by national laws for the remaining aspects. Such system carves patent law out of the EU legal and judicial orders and reduces the roles of the EU Parliament and Court of Justice. Challenges are numerous in terms of complexity, harmonization objectives, legality, business advantages and wider societal, economic and legal concerns, to name a few.With twenty-eight contributions from academics and practitioners, this book starts with putting the new system into historical, comparative and institutional contexts (Part I) before highlighting some issues under EU law and the perspective of EU integration (Part II). The institutional, jurisdictional and procedural questions raised by the UPC are then addressed (Part III), as well as the innovation and markets issues (Part IV). The last contributions discuss possible improvements and alternatives to the Unitary Patent Package (Part V).

This book provides a comprehensive overview of European Patent Law. It presents a critical analysis of the European patent law system and the proposed changes to it. The book explores the strengths and weaknesses of the European Patent Convention, and the interaction between the national and the European level, as well as across borders.

The book is explaining in detail the current discussion regarding the unification of European patent law. It explains the current national legal practices in Europe, describing the legal and factual issues and the different approaches to achieve unification. The book manages to show the complex situation and the different opinions from the beginning of the discussion in a clear and comprehensive manner without requiring previous knowledge of the reader and is therefore to be recommended for everyone interested. Jochen Pagenberg, LL.M. Harvard, President EPLAW, Germany and Thomas Schachl, LL.M., Attorney-at-law, Germany In his detailed study, Stefan Luginbuehl critically examines the latest efforts to establish a common European and EU patent litigation system and suggests possible alternatives to such a system. Due to the lack of a European patent court, both the EPO and national judges interpret European patents and European patent law. This results in diverging interpretation across Europe and costly litigation for patent holders. Stefan Luginbuehl s proposals to promote the goal of a uniform interpretation of patent law and ease the difficulties are timely and highly insightful. Dealing with important legal and political issues related to European patent litigation and the establishment of a common patent litigation system, this book will appeal to practitioners, patent litigators, patent attorneys and judges specialised in patent litigation. Academics teaching and learning IP (patent law), private international law, or international civil procedure, will find this study interesting as the book deals with important aspects of national and international patent litigation, as well as procedural and structural questions related to the establishment of a patent court for Europe.

In practice and jurisprudence in European competition law, it is especially difficult to define the boundaries of patent abuse as an offence. In this thoroughly researched book, the author answers the question of when and how an application for a blocking patent can amount to an abuse of a dominant position under Article 102 TFEU. Drawing on legal literature and European Union (EU) case law, the presentation analyses a constellation of blocking patenting strategies and proposes potential remedies where abuse is involved. With detailed descriptions of the characteristics of potentially abusive and non-abusive behaviour regarding applications for blocking patents, the book provides the following and more: a comprehensive analysis of the case law of the EU courts on the abuse of a dominant position in cases which involve intellectual property rights; insights on how patenting strategies affect competition with a particular focus on the application of blocking patents; an overview of the developments in doctrine and practice which led to the current understanding of the seemingly conflictual goals of competition and intellectual property law; and insights on the difficulties of defining relevant markets and establishing whether an undertaking holds a dominant position. The book illustrates the mechanisms of blocking patenting strategies with examples from the pharmaceutical industry because blocking strategies have particular relevance in applying for patents in that context. A test scheme for analysing the application of a blocking patent under Article 102 TFEU is included. Additionally, the book provides an outlook on the topic of patents and shortages of supply in light of the COVID pandemic. Practitioners and policymakers requiring an understanding of the conceptual framework of the abuse concept within EU competition law and how it relates to patent strategies will welcome this invaluable book. They will not only be able to set the conduct of applying for blocking patents into the Article 102 TFEU context but also have decisive tools to approach questions on the intersection of patent law and competition law in the EU.

Patents as an Incentive for Innovation Edited by Rafal Sikorski & Zaneta Zemla-Pacud Patents are a reward for human inventiveness. A well-functioning patent system must provide incentives for innovation, safeguard dynamic competition and protect the public interest – a balancing act fraught with difficulty in the ‘connected’ global world. This ground-breaking book is the first to deeply analyse how patent law today performs its function of stimulating innovation in the crucial sectors of healthcare, agriculture, artificial intelligence and communications technology. Patent specialists, practitioners and scholars from various jurisdictions thoroughly describe how patent rights can be deployed to incentivize investments in researching and developing socially critical innovations without sacrificing the public’s interest in sharing the benefits that are produced. Among the emerging issues of patent rights investigated are the following: protectability and morality of according private rights over material derived from the human body; licensing on fair, reasonable and non-discriminatory (FRAND) terms; the supplementary protection certificate (SPC) manufacturing waiver; patent eligibility of artificial intelligence-related inventions; excessive enforcement of patents by patent assertion entities; enforcement of second medical use innovations; the so-called farmer’s privilege, the farm-save seed exemption, and breeders’ rights; international trade regulations and their influence on patent systems; human enhancement technologies and the consequences of patenting them; specifics of patent protection for biologic medicines; challenges posed by artificial intelligence for the disclosure requirement in patent law; and standard essential patent licensing, particularly in the context of the 5G standard. Perspectives taken into consideration by the authors include protectability criteria, length and scope of the granted protection, mechanisms for dealing with the friction between generalized application and specialized concerns, and rights enforcement. These aspects are analysed on the domestic, international and global levels. The COVID-19 pandemic has highlighted the urgent need to strike the right balance between innovation and access in healthcare and other technologies, a need rooted in patent law. Because the problems discussed – and solutions offered – in this collection of expert essays are of tremendous practical and cultural significance, the book will be of immeasurable value to practitioners, policymakers and researchers in patent law and other fields of intellectual property law.

This book is the first to analyze the compliance of different types of a breeder's exception to patent rights with article 30 of the Agreement on Trade-Related Aspects of Intellectual Property Rights. This type of exception allows using protected biological matter for breeding new varieties of plants. The breeder’s exception is widely accepted under plant variety legislation, but it is not common under patent laws despite the fact that patent rights often cover plant varieties. Only few European countries have adopted such an exception. After the entry into force of the Agreement on a Unified Patent Court, the exception will be mandatory for all European Union Member states. Based on a legal and economic approach, this book offers guidance to those countries that need to incorporate a breeder's exception into their national patent systems and suggests the importance of the exception for promoting plant breeding activities.