tag:blogger.com,1999:blog-2352189175211648260.post5802540084440315684..comments2023-10-24T14:45:41.342+02:00Comments on K’s Law: R 1/10 – Independenceorhttp://www.blogger.com/profile/07992102028406713066noreply@blogger.comBlogger5125tag:blogger.com,1999:blog-2352189175211648260.post-68944600875818525952011-04-13T03:06:57.790+02:002011-04-13T03:06:57.790+02:00Another relevant decision is Pozzoli SPA v BDMO SA...Another relevant decision is <a href="http://www.bailii.org/ew/cases/EWCA/Civ/2007/588.html" rel="nofollow">Pozzoli SPA v BDMO SA</a> in which again Jacob LJ participated. Here the question was whether Art. 32 TRIPS forced the Court to grant permission to appeal:<br />"6. (...) Consider a case where a national Supreme Court, contrary to all decisions below, for the first time holds a patent invalid. Does Art.32 really require that there be a means of judicial review of this? Mr Mellor was forced to so submit. He postulated that the way round this would be for the Supreme Court having reached the decision that the patent is invalid to remit the case to the lower court so that it would be that court which actually revoked the patent so that there could be an appeal to the Supreme Court all over, thus complying with the Art. 32 requirement of a judicial review. Keene LJ aptly described this as a "dog's breakfast" solution.<br /><br />7. The problem would not arise if one read Art. 32 as applying only to administrative or political decisions. Mr Mellor sought to rebut such a reading by reference to other provisions of the Treaty. These were Art.62.3 (requiring that certain "final administrative decisions [which include revocation of a patent] shall be subject to review by a judicial or quasi-judicial authority.") and Art. 41(4) (providing that "parties to a proceeding shall have an opportunity for review by a judicial authority of final administrative decisions, and … of at least the legal aspects of initial judicial decisions on the merits of the case"). Mr Mellor submitted that Art. 32, in referring to "any decision to revoke" must include judicial decisions to revoke, not merely administrative or other decisions because these other Articles recognise the distinction between administrative and judicial decisions.<br /><br />8. If right, his submission means the Treaty requires the "dog's breakfast" solution or something similar. (...)"<br /><br />The Court did not decide on this, since it considered that the decision not to grant permission to appeal already qualified as a judicial review. (In that case, maybe the possibility of filing a petition for review already sufficies as well?)Myshkinnoreply@blogger.comtag:blogger.com,1999:blog-2352189175211648260.post-92163825909217294242011-04-13T02:11:06.911+02:002011-04-13T02:11:06.911+02:00Compliance of the EPC with Art. 32 TRIPS is discus...Compliance of the EPC with Art. 32 TRIPS is discussed in <a href="http://www.epo.org/law-practice/case-law-appeals/pdf/t940557eu1.pdf" rel="nofollow">T 557/94</a>, point 1.3:<br />"(...) Reading Article 32 TRIPS in the context of the usual structure of judicial review in the contracting states of the EPC and the EPC itself, this provision guarantees an instance for judicial review in revocation proceedings. Ordinary legal construction (e.g. Article 31 to 33 of the Vienna Convention for the Law of Treaties) forbids overly literal interpretation which is clearly outside what can conceivably be based on the meaning of the provision taken in context.<br /><br />Article 32 TRIPS does not oblige the reviewing instance to remit the case for continuation of proceedings to the first instance in cases where the first instance did not revoke the patent and the reviewing instance intends to deviate from the decision of the first instance."<br /><br />The question is also treated by the EBA in <a href="http://www.epo.org/law-practice/case-law-appeals/pdf/g970001ep1.pdf" rel="nofollow">G 1/97</a>, point 5. The EBA seems to be of the view that opposition and appeal proceedings form part of the grant procedure, and that therefore Art. 62(5) TRIPS takes precedence over Art. 32 TRIPS as far as the EPC is concerned. I don't find this argument persuasive at all, since I cannot imagine that TRIPS was intended to distinguish between opposition proceedings under the EPC and revocation proceedings under national laws.<br /><br />In <a href="http://www.bailii.org/ew/cases/EWHC/Admin/1996/390.html" rel="nofollow">Lenzing AG's European Patent</a> (also referred to in R 1/10) Jacob LJ himself has addressed the point. The situation was that of a revocation in an appeal against a rejected opposition, see par. 5 and par. 13. Lenzing had argued that the provisions of the EPC concerning the Boards of Appeal are in breach of Art. 32 TRIPS (par. 61, stage (9)). Jacob rejected this argument in par. 93-105, essentially by explaining why the Boards qualify as courts. It seems he shared T 557/94's interpretation of Art. 32 TRIPS, but this is not really explained.Myshkinnoreply@blogger.comtag:blogger.com,1999:blog-2352189175211648260.post-59219490283284823332011-04-08T18:27:21.423+02:002011-04-08T18:27:21.423+02:00The argument is maybe not as absurd as it might se...The argument is maybe not as absurd as it might seem given that the same argument was used in a discussion on the case law of the BoA by Robin Jacob LJ in Munich. However, Jacob questioned the EPO's procedural rules by referring to Article 32 TRIPS, saying "An opportunity for judicial review of <b>any</b> decision to revoke or forfeit a patent shall be available." This is not the case if the patent is revoked after an appeal against an unsuccessful opposition (for more, see my blog GermanIP on blogger.com).Michael Thesenhttps://www.blogger.com/profile/11216937613426928728noreply@blogger.comtag:blogger.com,1999:blog-2352189175211648260.post-49346812470443928382011-04-06T15:06:02.085+02:002011-04-06T15:06:02.085+02:00I sometimes wonder whether the petitioner really e...I sometimes wonder whether the petitioner really evaluates his chances of success before filing his petition.<br /><br />On the other hand, if the EBA would have followed his arguments, could it then, also as a no-court, set aside the decision of the BoA?pat-agoni-ahttps://www.blogger.com/profile/14383461539323071512noreply@blogger.comtag:blogger.com,1999:blog-2352189175211648260.post-77661929321912408302011-04-06T01:13:41.208+02:002011-04-06T01:13:41.208+02:00"Moreover, the contracting states to the EPC,..."Moreover, the contracting states to the EPC, which are organised as states founded under the rule of law almost without exception"<br /><br />I'd like to know which EPC contracting state forms the exception!<br /><br />I knew there have been unsuccessful complaints to the ECHR before, but I was not aware of the Rambus/Germany case. Rambus seems to have mistaken the right to be heard for the right to amend its case. I don't think there are many courts that allow parties to make so many amendments to their case as the Boards of Appeal do (though admittedly patent proceedings are a bit special in this respect).<br /><br />Anyway, I was wondering today why the ECJ's opinion on the (in)compatibility of the draft agreement for a European Patent Court with EU law does not also imply the incompatibility of the EPC with EU law. As I understand it, the problem with the European Patent Court system would be that those courts would have to safeguard the proper application of EU law instead of the national courts. Why is this not a problem with the Boards of Appeal (which have even explicitly denied having the power to refer questions to the ECJ)? The only reason I can think of is that the national routes still exist, so that applicants more or less voluntarily give up their right to a proper application of EU law... I'm not convinced that the ECJ would accept this when prompted.Myshkinnoreply@blogger.com