Cross Border Enforcement of Patent Rights: An Analysis of the Interface Between Intellectual Property and Private International Law

by Marta Pertagas Sender

Oxford Private International Law Series, 2002
Oxford University Press, Hard back, pp313
ISBN : 0-19-924969-5

Reviewed by:
Professor Philip Leith
Queens University, Belfast

1 . Introduction

Cross-border issues in IP are a legal technicians dream and a patent owner's nightmare. It is an issue which is at the very heart of the European ideal and yet seems intractable - that is, in a marketplace which is unified, how can rights which are not-unified be litigated and enforced in a commercially sensible manner. The Brussels Convention is the legal mainstay helping decide correct forum, but for a number of reasons has never really been popular with IP rights holders, particularly relating to patent rights. Pertagas Sender enters this arena with a comprehensive analysis.

2 . The Brussels Convention

To understand the criticisms of the Brussels Convention we must remember that patent rights remain national, even though they may have been applied for, examined and granted in a European framework. This has meant that they must be enforced nationally. The history of these rights in Europe (where the judiciary in some countries have little expertise in judging their validity) together with the concentration of industrial expertise in some European countries has meant that owners have preferred to litigate where there is expertise. Infringers, on the other hand, might prefer a judiciary who are not so expert (or, as the London court is being accused, of being anti-patent owner) hoping for a more random judgment or a judgment which meanders through the system. This latter is epitomised by the 'Italian Torpedo' whereby an infringer can initiate validity hearings in Italy with the specific aim of slowing down the process to a near halt. The Brussels Convention does not take into account these tactical issues in such a specialised field as patent rights.

Pertagas Sender's work originated in a PhD dissertation and does show this to some extent. It is highly detailed, covering the topic well and is as readable as any text on cross-border patent rights could be. It is a text which has entered a field where there are other books - for example Wadlow's Enforcement of Intellectual Property in European and International Law. Waldlow's work is broader, dealing with all IP issues, and Pertagas Sender's is - as the title suggests - focussed on patent rights.

3 . A Legal Framework for Extraterritorial Jurisdiction

The argument being run by Pertagas Sender is that there is a legal framework for extraterritorial jurisdiction. This, of course, would be a useful tool for patent holders. A successful judgement in one country - even though based on a national right - could be used to enforce those rights in other countries without having to undergo the expense and uncertainty of litigation in a variety of courts with a variety of approaches to patentability. In the text, she covers well the technical problems of implementing such cross-border judgments, and also deals well with the opposition to them. Opposition is certainly rife - there was much ruffling of feathers when the Dutch courts began to hand out injunctions which had effect across Europe.

Her short concluding chapter sums up the argument:

'On the basis of the foregoing analysis, it is now possible to describe the phenomenon of cross-border patent enforceability in no more than three epithets. First, cross-border patent enforceability is a necessary step in the internationalization of patent law. Second, it is an available enforcement tactic under the current jurisdictional standards. Third, it's development is as yet unpredictable because it depends upon the ability of national court to cope with difficulties associated with international litigation, such as having recourse to different legal systems'.

I think this is correct, and that Pertagas Sender's argument substantially justifies it. However, the question remains whether this is a welcome conclusion. The fact that cross-border judgments can be got, but that we can't really predict what that judgment might be, hardly helps all litigants. It is also the case that - as a lawyer's paradise - such technical arguments are really the resource of the well funded rights owner. The situation which practitioners constantly note - that 'patents are for big players' - is exacerbated here, through requiring even more legal argument and expertise to enforce a right.

4 . In Search of a European Solution

Compare this with the UK Patent Offices attempts to encourage patent applications - adverts in the national press etc. Would applicants really be encouraged to enter a system which offers them only legal complexity when they want to enforce rights in the European marketplace? I think they would be as well to stay local. Such advice may help the small industrial enterprise, but does little for the development of industry in Europe - where 50% of patent applications come from outside Europe, and usually from large enterprises which can more effectively utilise these legal tactics.

The real answer to cross-border patent litigation and enforcement has to be a European solution, with technical expertise expanded throughout European courts and a centralised appellate system. Pertagas Sender's first argument - that cross-border enforceability is a necessary step - is certainly correct, but the detail and force of her argument should send us all off to argue for a proper European patent system based upon a truly European patent.

This is a Book Review published on 6 December 2002.

Citation: Leith P, 'Cross Border Enforcement of Patent Rights: An Analysis of the Interface Between Intellectual Property and Private International Law, by Marta Pertagas Sender', Book Review, The Journal of Information, Law and Technology (JILT) 2002 (3) <http://elj.warwick.ac.uk/jilt/02-3/leith.html>. New citation as at 1/1/04: <http://www2.warwick.ac.uk/fac/soc/law/elj/jilt/2002_3/leith/>.