Thursday, 5 August 2010

Should we consider EPO and foreign rulings? The German position

An article for International Law Office, "Patent court required to consider EPO decisions" by Nora Keßler (Klinkert Zindel Partner, Germany), published online last month, comments on a decision of the German Bundesgerichtshof (the civil Supreme Court) that the Bundespatentgericht (the Federal Patent Court, right) is required to consider European Patent Office (EPO) decisions, as well as those of courts of other European Patent Convention member countries if they pertain to similar issues, including whether an invention is novel and inventive.

After explaining this decision in some detail the author comments:
"This decision is remarkable. The Supreme Court could have limited itself to ruling that, in the case before it, the Federal Patent Court should have considered the EPO decision. Instead, the Supreme Court established as a rule that courts must consider EPO decisions. Furthermore, the court also held that the same would apply to decisions issued by the courts of other European Patent Convention member states.

Unfortunately, the effect of the decision is somewhat mitigated by the Supreme Court's holding that, although the courts are required to consider EPO decisions and those rendered in other European Patent Convention member states, the deviation of a national court from such decisions does not constitute grounds to appeal to the Supreme Court. From the perspective of harmonization, such a ruling might have been desirable".
It's interesting to see how the shall-we-or shan't-we debate about referring to decisions of other jurisdictions and of the EPO is conducted in the major European patent-litigating nations. If any reader fancies doing some comparative research on this topic, leading ideally to an article for the Journal of Intellectual Property Law & Practice (JIPLP), I'll be delighted to hear from him or her.


MaxDrei said...

Is this not a striking example of "biting the bullet"?

I'm thinking that it has taken the judges in Germany 30 years to come to the painful realisation that their huge bulk of patent litigation was still proving enough to bring Europe's concept of patentable novelty into line behind "lead dog" Germany. Remind me, what was the name of that recent multi-jurisdictional pharma case, in which the infringement court in Duesseldorf enjoined the infringer on a claim found by the Federal Patents Court to lack novelty, assuring us that it was 100% certain that the Supreme Court in Karlsruhe would in the end find the claim novel. It duly did. And now this.

MaxDrei said...

Error. Sorry about that. In editing my draft, for posting above, I did not notice the absence of one word, which is important out of all proportion to its size.

So, where you read above "still proving enough" think "still not proving enough". Thanks a lot.