Monday, 16 February 2015

Does a lack of judicial review initiated by third party pose a threat to the unitary patent?

Does a lack of judicial review initiated by third party pose a threat to the unitary patent? This question was raised by Gordon Harris based on an experience he had with such a situation (found via an article by James Nurton).

At the EPO a third party has only limited possibilities to attack a patent based on alleged administrative errors of the EPO; Before grant the only procedural option is to file third-party observations (Art. 115 EPC) and after grant one may file an opposition (Art. 99 EPC). The problem is that one is not a party with the first option and that one may raise only a limited--mostly substantive--list of issues with the second option (Art. 100 EPC).

National judges could potentially rectify such errors, but they are bound by a similarly limited set of objections as well, and may moreover not be willing to review administrative decisions of the EPO either.

In a lengthy court case between Virgin and Zodiac this played a role. The EPO had granted a patent for the UK against the applicant's explicit wish not to designate the UK.

Efforts to correct this error of the EPO turned out to be fruitless. The appeal boards rejected a request for correction of the decision to grant filed during opposition on the basis, that the opposition division is not competent to do so. The situation in the national courts was similar.

In the end, the court cases were unsuccessful for the patent proprietor, but because the patent was found not to be infringed.

Presumably also the unified patent court will refuse to review administrative decisions of the EPO.
The article awaits with interest the outcome of Spain's petition to the CJEU regarding the unitary patent. Indeed, Spain has complained against this. In its legal challenge against the unitary patent, Spain complains of 'Breach of the values of the rule of law in so far as a regulation has been established on the basis of a right granted by the European Patent Office, whose acts are not subject to judicial review.' (Case C-146/13, in the words of the official summary)

No verdict has been reached yet, but  advocate-general has published it conclusion. The conclusion seems to point into a different direction. The opinion notes that "La protection unitaire que le règlement attaqué organise ne prend donc effet qu’après que le brevet européen est délivré et aussi longtemps que celui-ci est maintenu en vigueur. Ce règlement se borne ainsi à attribuer aux brevets européens une qualité supplémentaire, à savoir l’effet unitaire, sans affecter la procédure réglée par la CBE (24), que les États membres de l’Union en tant qu’États parties à cette convention sont tenus de respecter."

 [ for some reason the opinion is translated in 22 languages except English; in my translation:

The unitary protection that the Regulation organizes therefore takes effect only after the European patent is granted and for so long as it is kept in force. This regulation is thus limited to assigning to European patents an additional quality, namely the unitary effect without affecting the procedure set by the EPC (24), that the EU Member States as States parties to the Convention must respect.

The  Court of Justice of the EU does not have to follow the conclusion of the advocate-general, but often does so. With this opinion it does not look likely that they will revoke the unitary patent on this ground.

At present it looks it that also under the unitary system administrative errors cannot be judicially reviewed at the initiative of third parties. Frankly, I'm not directly convinced, even by this extreme case, that this is a situation that needs to be addressed. As they say: Hard cases make bad law.

[This posts was prepared only on the basis of the information found in this article and the public file at the EPO. We also blogged about the Board of appeal's decision T 1495/09]

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