Cutting Back Patent Over-Enforcement - How to Address Abusive Practices Within the EU Enforcement Framework

Author:Alain Strowel - Amandine Léonard
Position:Prof. Alain Strowel, UCLouvain and Université Saint-Louis, KULeuven, Munich IP Law Center, attorney, Brussels and Dr. Amandine Léonard, Emile Noël Postdoctoral Fellow at the Jean Monnet Center, NYU School of Law. Affiliated researcher at the KULeuven, Centre for IT&IP Law, imec (CiTiP). The authors acknowledge financial support from IP2Innovate...
Pages:3-25
SUMMARY

The debate over the degree of flexibility at the disposal of national courts in Europe to grant, deny, or tailor, injunctive relief in patent litigation seems to be a never-ending story. In most jurisdictions, absent exceptional circumstances, findings of infringement lead national courts to grant, quasi-automatically, an injunction. However, some scholars as well as industry players, have argued that in light... (see full summary)

 
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Cutting Back Patent Over-Enforcement
2020
3
1
Cutting Back Patent Over-Enforcement
How to Address Abusive Practices Within the EU Enforcement
Framework
by Alain Strowel and Amandine Léonard*
© 2020 Alain Strowel and Amandine L éonard
Everybody may disseminate this ar ticle by electronic m eans and make it available for downloa d under the terms and
conditions of the Digital P eer Publishing Licence (DPPL). A copy of the license text may be obta ined at http://nbn-resolving.
de/urn:nbn:de:0009-dppl-v3-en8.
Recommended citation: Ala in Strowel and Amandine Léonard, Cut ting Back Patent Over-Enforcement – How to Addre ss
Abusive Practices Wit hin the EU Enforcement Framework, 11 (2020) JIPITEC 3 para 1.
remedy. However, most recently, the German Ministry
of Justice published a draft amendment to the German
Patent Act providing some guidance on the role of pro-
portionality vis-à-vis the rules of injunctive relief.
The issue of flexibility and injunctive relief is symptom-
atic of a broader debate regarding potential over-en-
forcement practices by right holders and the means to
overcome or reduce the negative effects of these prac-
tices. Overall, this article examines how the origins and
justifications of the Enforcement Directive, which focus
on fighting piracy and counterfeiting, may affect the ap-
plicability of the principle of proportionality in the ever-
changing context of patent law. How national courts
have (or have not) relied on different mechanisms to in-
fuse more flexibility in case of over-enforcement prac-
tices by right holders. And finally, how the principle of
proportionality as well as the principle of the prohibition
of abuse of rights may serve national courts in this en-
deavour of limiting excesses in patent litigation.
Abstract: The debate over the degree of flexibility at the
disposal of national courts in Europe to grant, deny, or
tailor, injunctive relief in patent litigation seems to be
a never-ending story. In most jurisdictions, absent ex-
ceptional circumstances, findings of infringement lead
national courts to grant, quasi-automatically, an in-
junction. However, some scholars as well as indus-
try players, have argued that in light of recent changes
in litigation behaviour as well as technology develop-
ments, a general principle of proportionality should play
a more prominent role vis-à-vis injunctive relief. It is in
particular with reference to Art. 3(2) of the Enforcement
Directive that such claims have been made.
If UK courts have been inclined to consider that, un-
der certain circumstances, a balance of interests may
take place before granting a permanent injunction, Ger-
man courts on the other hand have firmly stood on the
ground that the principle of proportionality should not
interfere with the right of patent holders to obtain such
A. Introduction
1 Intellectual property (IP) laws have been designed
to provide an incentive for creative, inventive, and

to control the market access of protected goods or
services. To ensure that the substantive IP laws were
effectively applied in the European Union (EU) and
that innovation and creativity were not discouraged,
the European legislator adopted in 2004, just before
the EU enlargement to 10 new Central and Eastern
European countries, the Directive 2004/48 on the
enforcement of IP rights (hereafter, the Enforcement
Directive or IPRED)1.
* Prof. Alain Strowel, UCLouvain and Université Saint-Louis,
2 Undeniably, the harmonisation of the effective civil
means of enforcing IP rights (IPRs) is important for
the success of the internal market as well as for the
KULeuven, Munich IP Law Center, attorney, Brussels and
Dr. Amandine Léonard, Emile Noël Postdoctoral Fellow
      
researcher at the KULeuven, Centre for IT&IP Law, imec
      
IP2Innovate       
article remain those of the authors.
1 Directive (EC) 2004/48 of the European Parliament and the
Council of 29 April 2004 on the enforcement of intellectual
property rights. O.J. L 157/45, 30/04/2004. (Enforcement
Directive or IPRED).
Keywords: Patent litigation; Flexibility and Injunctive Relief; Proportionality; Abuse of Rights; Patent Assertion
Entities; Patent Trolls; Article 3(2) Enforcement Directive; Directive (EU) 2004/48
2020
Alain Strowel and Amandine Léonard
4
1
objectives of substantive IP laws. The Enforcement
Directive has been interpreted and applied in ways
that strengthen the system of protection in favour
of right holders. Great emphasis has been put on one
     
  
     
holders2. However, the pursuit of such a high level
of protection may lead to an imbalanced system of
litigation and could generate new opportunities for
over-enforcement practices. Several commentators
in Europe have highlighted these risks of (overly)
strong IP enforcement tools, especially in the patent
3
3
The risk of over-enforcement is quite well discussed
and documented in the United States (US). For
the past 10 years, US commentators have claimed

      
new uses of patents are inappropriate as they keep
pushing the system further away from its initial
objectives4. The rise of actors on the enforcement
scene such as Non-Practicing Entities (NPEs) (also
called Patent Assertion Entities (PAEs) or patent
trolls) has been at the heart of the debate5. Such
2 See in particular recitals 3, 8 and 10 of the Enforcement
        
       
the fundamental right protection of intellectual property
(under Art. 17(2) Charter of EU fundamental rights) in the
recent case law of the Court of Justice of the EU (CJEU), has
on the whole strengthened the substance and enforcement
of intellectual property rights. For a review of this case law,
see A. Strowel, ‘Article 17 – La propriété intellectuelle’ in
F. Picod and S. Van Drooghenbroeck (eds), Charte des droits
fondamentaux de l’Union européenne. Commentaire article par
article (2nd ed. Larcier, 2019) 429.
3 R.M. Hilty, ‘The role of enforcement in delineating the scope
 
Competition Research Paper No. 15-03 < https://papers.
ssrn.com/sol3/papers.cfm?abstract_id=2602221> accessed
27 Jan. 2020. X. Seuba, The Global Regime for the Enforcement
of Intellectual Property Rights (CUP 2017). D. Krauspenhaar,
Liability Rules in Patent Law – A Legal and Economic Analysis,
(Springer 2015).
4 E.g. B. Love, ‘Bad Actors and the Evolution of Patent Law’
(2015) 101 Va. L. Rev. 1.
5 M.A. Lemley and R.C. Feldman, ‘Is Patent Enforcement

Lemley, ‘The Sound and Fury of Patent Activity’ (2018) Olin
Stanford Working Paper Series No. 521 <https://papers.
ssrn.com/sol3/papers.cfm?abstract_id=3195988> accessed
27 Jan. 2020. D.L. Schwartz and J.P. Kesan, ‘Analyzing the
role of non-practicing entities in the patent system’ (2014)
       
phenomenon is not limited to the US and these
actors are also present on the European scene.6
Those entities do not necessarily bring many cases
before the courts (see infra the analysis of the
      
in the pre-litigation phase and the negotiation
      
   
many threats and burdens on businesses caused
by the risks of patent enforcement and remedies
might remain unnoticed. Nevertheless, the risks of

by some measures provided by the Enforcement
Directive which, as will be reminded (see infra),
was primarily meant to grant to copyright and
trademark owners new ways to combat piracy and
counterfeiting.
4
  
in particular on the capacity (or lack thereof) of the
Enforcement Directive to provide certain tools and
remedies to defendants in patent infringement cases
which may be victim of over-enforcement practices
     
contend that, due to the fact that the Enforcement
Directive has mainly been drafted with the view
    
     
between  commercial parties operating
within the normal course of business. Therefore,
we argue that, under particular circumstances such


fast changing technological environments, courts
 
enforcement claims are considered and in particular
in the balancing processes leading to the imposition
of permanent injunctions. The second part of this
paper reviews a sample of cases involving dubious
 
of patents in Europe and the tools used by national
courts to limit or sanction these practices. The

been) adopted by all sorts of patent holders (PAEs or

Patent Intermediaries: Platforms, Defensive Aggregators
and Super-Aggregators’ (2013) 27 J. Econ. Persp 45. R.P.
Merges, ‘The Trouble with Trolls: Innovation, Rent-Seeking,
and Patent Law Reform’ (2009) 24 Berkeley Tech. LJ 1583.
6 N. Thumm and G. Gabison (eds), ‘Patent Assertion Entities in
Europe: Their impact on innovation and knowledge transfer
in ICT markets’ (2016) JRC Report <https://ec.europa.eu/
digital-single-market/en/news/study-patent-assertion-
entities-europe>, accessed 27 Jan. 2020. Darts-IP Report.
‘NPE Litigation in the European Union: Facts and Figures’
(Feb. 19, 2018) <https://www.darts-ip.com/npe-litigation-
>, accessed 27
Jan. 2020.

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