National governments are now preparing in earnest for the
introduction of the Unitary Patent that will give one-stop
protection across the EU, and for the Unified Patent Court that
will provide the way of enforcing patents on a European-wide
basis. The system is projected to go live in 2015, although
many commentators consider a 2016 start date more
In response to concerns about over-centralisation and access
to justice, it has been agreed that the UPC will sit as a
series of local and regional divisions across the EU. However,
each local/regional division will have an international
composition of judges and have international jurisdiction. The
court also has a Central Division dealing mainly with issues of
patent validity and declaratory actions.
There has already been considerable horse-trading over the
location of the Central Division.
A last-minute compromise was reached whereby the
headquarters is in Paris with chambers in London and Munich.
Now the focus has switched to the setting up of local and
regional divisions. Countries have the right to set up local
divisions (but will have to pay for them) or may join together
in larger regional divisions if they prefer.
The UK, Germany, France, Holland, Belgium and Italy each
intend to set up local divisions. A Scandinavian regional
division (including the Baltic states) is planned as are two
regional divisions covering Central Europe (including the Czech
Republic, Hungary and Slovakia) and Eastern/Southern Europe
(including Romania, Bulgaria, Cyprus and Greece). Most
divisions apart from France and Italy will work in English, at
least as an optional language.
For countries that wish to be seen as centres of innovation
in Europe, it is important to remain at the heart of the new
European patent project. The influence which any given country
may wield in the evolution of the new system will largely
depend on two factors: how many cases are heard in that country
and the composition of the judicial panels that preside over
those cases. Here, it is important that each country accurately
assess its existing level of patent litigation. There are two
primary reasons for this:
- First, although every country has the right to set up a
local division (if it is prepared to pay for it) a country
may only host a second or subsequent local division/s (up to
a maximum of four) for every 100 cases commenced in that
jurisdiction in each year of the three years immediately
preceding the Agreement coming into force.
- Second, if less than 50 patent cases are commenced in a
given country in those years, its judicial panels will have a
majority of foreign judges (so for example, a judicial panel
in the Belgian division would have one Belgian national and
two judges drawn from an international pool).
Of the "big three" European economies, Germany has been the
quickest off the mark in positioning itself as a major centre
of infringement litigation. Germany considers that it is
entitled to four local divisions based on the number of cases
filed in Germany. French figures suggest that France may be
entitled to at least two local divisions.
Statistics for activity in the patents courts in the UK have
been harder to come by.
Some estimates (based on historical data up to 2008) have put
the number of cases commenced in the UK as lower than 50 a
year, which would relegate the UK to the "third division"
of countries that would not even have a majority of their own
nationals sitting on their local judicial panels. This hardly
seems a fair reflection of the prominent role the UK currently
plays in international patent litigation.
In view of the lack of up-to-date statistics, Powell Gilbert
(with the support of patent judges and the cooperation of other
member firms of the IPLA)
has carried out a comprehensive survey of court records for
2011 and 2012. This is the first time that court records have
been analysed systematically to capture the true level of
litigation activity in this sphere. Physical searches were
carried out of the files of the High Court, noting parties,
numbers of patents in issue and whether validity and
infringement were both in issue. Cross checks were carried out
with the court diary and online databases to ensure a complete
a record as possible. This was combined with recent assessments
of Patents County Court activity compiled with the assistance
of the Court and an assessment of the number of patent claims
filed in Scotland and Northern Ireland. Finally, disputed
patent claims filed at the UK IPO were counted.
Patent litigation in the UK
|Patents in issue
Equivalent" cases-----This is a range since Helmers and
McDonagh (2013) estimate 61.5% of infringement claims
(and 40% of revocation claims) have a counterclaim while
the IPLA estimates 75% of cases to have
||327 - 371
||318 - 362
The results of this survey indicate two things: -
- a) existing estimates of activity in the English courts
have been too low; and
- b) if cases are counted in the same way as in Germany,
the recorded claims in the UK increase substantially (it is
the practice of the German courts to split patent cases by
patent and sometimes by party, as well as treating claims for
revocation as separate to any infringement action. This leads
to a multiplicity of individual claims).
In summary, this comprehensive survey has found that more
than 150 patent cases have been commenced in the UK courts in
each of the years 2011 and 2012 (entitling the UK to more than
one local division). If statistics are compiled on the same
basis as that used in the German courts, the number of
individual "claims" exceeds 300, making the UK one of the most
active patent jurisdictions in Europe.
Of course, a simple counting of cases only gives part of the
picture in assessing the relative prominence of individual
jurisdiction for resolving international disputes. In this
regard it was noted in a recent
comparative study for the Centre for European Economic
Research that 26% of claims litigated in the UK are also
litigated in other jurisdictions while the proportion of
international disputes in Germany is extremely low (only about
2%). Also, the proportion of European (as opposed to national)
patents litigated in the UK is much higher than in Germany (81%
compared with 42% patents litigated) and approximately half of
the claims filed in Germany relate to German utility products
rather than patents.
It is inherently difficult to model the likely levels of
activity in the various local and regional divisions of the
UPC. However, it is clear that the UK is a major jurisdiction
for resolving complex, high-value international disputes. The
UK has one of the branches of the Central Division of the UPC
and with sufficient investment in its local division or
divisions can play a prominent role in the new court