Latest evolutions in the EU and US Patent Systems
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After 30 years of negotiations, the Council of the European Union and the European Parliament agreed on vital elements of a European unitary system of patent protection this year.
The proposal, allowing for the creation of a unitary patent protection, will give rise to two regulations (one of which will deal with the controversial issue of translations) and one international agreement creating the European patent court. A statute for the unified patent court is also in draft form currently.
The proposal aims to reduce the costs and uncertainty of enforcing patents across national borders. The unified court will have exclusive jurisdiction over civil litigation related to infringement and validity for both the "classical" European patents and the European patents with unitary effect, with the main objectives of reducing costs relating to multiple litigations in several countries and preventing conflicting judgments. The court will also be able to request preliminary rulings on points of law from the EU courts in the same way that any Member State court can.
However one notable sticking-point remains.
The cities of Munich, London and Paris are all vying to be the seat of the new patent court. It is expected that the European Parliament will vote on the proposal in the beginning of next year.
After many years of debate, on 16 September 2011, the United States has adopted the Leahy-Smith America Invents Act (AIA), which moves the US patent system closer to the European one.
The most significant shift is the shift from the current first-to-invent system to a first-inventor-to-file (FITF) regime, effective for all patent applications with effective filing dates on or after 16 March 2013.
Next, the AIA introduced a new litigation “joinder” rule. In order to join parties, defendants must be either jointly and severally liable, or the infringement must arise from the same transactions or occurences. The purpose of the new joinder rule is to decrease litigation initiated by Non-Practicing Entities (NPEs - companies that purchase patents without really using them except for suing infringers), who had sued many defendants that are not linked except for having infringed the same patent.
Finally, a change that will have a significant impact on US litigation practice is the “prior commercial use” defence. This defence offers companies significantly broader protection in cases of innocent infringement. Specifically, it will protect companies from infringement claims if they innocently use an infringing process, or make and sell an infringing product that is used in a commercial process, without knowledge of the claimed patent. The defence applies to good faith commercial uses and arm’s length sales and commercial transfers that occurred at least one year before the earlier of (1) the effective filing date of the patent application, or (2) the inventor’s public disclosure.
