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Concerns over Europeanisation of IP law

With the Unitary Patent on the horizon, more voices are expressing reservations about the role of both judges and EPO. Should we be worried?

Throughout Europe, patent practitioners are preparing for the Unitary Patent and Unified Patent Court, the consensus being that they will be with us some time in 2016 or 2017. Increasingly, discussions are turning from the theoretical pros and cons of the new systems to how they will work in practice, such as to what extent courts will bifurcate infringement and validity (on which see my recent blog post).

Daniel-AlexanderIn recent weeks, I’ve heard provocative contributions to the debate from two of the UK’s most experienced IP practitioners – Daniel Alexander QC of 8 New Square (pictured, right) and Gordon Harris of Wragge Lawrence Graham & Co.

Alexander (one of the UK’s top IP-specialist barristers who has also been tipped as a future High Court judge) spoke at a seminar hosted by Herbert Smith Freehills last week on the “Europeanisation of IP Law”, something he has many concerns about.

In particular, he highlighted how long it has taken for areas that have been harmonised in the EU (such as trade mark and copyright law) to settle down, and how there has often been a lot of confusion on the way. This is partly due to the way the Court of Justice of the EU works (such as its non-specialist nature, the divergence in national approaches to referrals, the lack of dissenting judgments, confidential submissions and the absence of amicus briefs).

Alexander, who has of course tried many cases before the Court, compared it to a jury – a panel of non-specialists trying their best to make sense of highly technical material.

Looking ahead to the UPC, he fears that these characteristics may also be evident on the panels of that Court, which is likely to have some judges with little patent experience at least at first instance (as a result of the need for geographical diversity). As a consequence, he said he has “real reservations about this project”.

I know he’s not the only person to express such views, but as a senior barrister he brings a particular insight and eloquence to the question.

Gordon Harris’s concerns, expressed at a seminar hosted by his firm last week, relate to the role of the EPO in granting Unitary Patents. Harris is a long-time supporter of the principles behind the Unitary Patent and UPC, but recent experience has led to him having fundamental concerns.

These stem from the extensive litigation over airline seats between Virgin Atlantic and Contour (confusingly also known at various times as Premium and Zodiac). Harris acted for the latter throughout the litigation, which arose over the UK designation of a European patent – a designation that the applicant did not request and which was only granted due to an administrative error at the EPO. (He explains this saga in more detail in an article on his firm’s website.)

Despite seven years of litigation, including a decision of the UK Supreme Court, successive courts agreed that they could not correct that error as it was an administrative decision. This means, said Harris, that “the EPO is above the law”.

Under the Unitary Patent Regulation, the EPO is responsible not just for examining and registering Unitary Patents, but also maintaining the register and collecting annuity fees. Harris is worried that the proposed system lacks a “proper constitutional framework”. This is a concern, incidentally, that he shares with Spain’s government – as expressed in its challenge to the new system at the CJEU (cases C-146/13 and C147/13).

Neither Alexander nor Harris are reactionaries who fear any kind of change, and I believe both welcome initiatives that could improve the patent system in Europe. But their strongly expressed views on the potential problems of what is proposed reflect widely held concerns. Reassurance that such concerns are being addressed would be welcome.

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