International Patent Protection: Time for a fully EU Functioning Supra-National Patent Mechanism

• Author: Donal Loftus
• Position: Lecturer in International Trade Law, Commercial Law and Contract Law School of Law, University of Salford, Greater Manchester, England.
• Pages: 176-186

JICLT

Journal of International Commercial Law and Technology

Vol. 6, Issue 3 (2011)

176

International Patent Protection: Time for a fully EU Functioning Supra-

National Patent Mechanism

Donal Loftus

Lecturer in International Trade Law, Commercial Law and Contract Law

School of Law, University of Salford,

Greater Manchester, England.

d.loftus@salford.ac.uk

Abstract. Larger industrial companies have become increasingly global in their functions

and aspirations. With regard to patents, it is increasingly common for a multinational co mpany to

face alleged infringing acts committed by the same competitor in several countries. Securing

international patent protection both at the acquisition and the enforcement stage is the corollary

to the cross border exploitation o f patents. The regulation of transnational trade and the

international exploitation of patent rights have brought about international agree ments concerning

these closely related issues, such as international patent gra nting power, international

harmonization of patent laws and uniform systems of j urisdiction and choice of law rules

applicable to patent enforcement a s well as other areas. However, there is an increasingly strained

relationship between international patent acquisition and enforcement

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which is the dominant

focus of this paper. Whilst a network of international agreements facilitates the grant of

increasingly similar patent rights in many countries, cross border patent enforcement through the

application of the relevant private inter national rules has been very weak. From a private

international law perspective, the legal independence and terr itorial limitations of patent rights

has severe implications for the application of the relevant jurisdictional and choice of law rules.

Therefore, cross-border adjudication has indeed been challenged in the patent area. This paper

seeks to focus on the problems associated with acquiring and enforcing patent rights at a multi-

jurisdictional level, particularly within the EU.

1. What is a Patent?

A patent is a set of exclusive rights granted by a state to an inventor or his assi gnee for a limited period of time

in exchange for disclosure of an invention. The procedure for granting patents, the requirements placed on the

patentee and the extent of the exclusive rights var y widely between countries according to national laws and

international agreements. Typicall y, however, a patent applic ation must include one or more claims defining the

invention which must be new, inventive, and useful or industrially applicable. The exclusive right granted to a

patentee in most countries is the right to prevent others from making, u sing, selling or distributing the patented

invention without permission. A patent provides the right to exclude others

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from making, using, selling,

offering for sale, or importing the patented invention for the term of the patent, which is usually 20 years from

the filing date

3

.

Under the World T rade Organisation’s (WTO) Agreement on Trad e Related Aspects of Intellectual Property

Rights, patents should be available in WTO member states for any inventions, in all fields of technology.

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Examples of particular types of patents for inventions include bio logical patents, business method patents,

1

Thomas, R (1996) Litigation beyond the Technological Frontier, Comparative Approaches to Multinational Patent Enforcement.

Law & Policy in International Business. Volume 27, 277-280.

2

Herman v. Youngstown Car Mfg. Co. 191 F. 579, 112 CCA 185 (6

th

Cir. 1911)

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Article 33 of the Agreement on Trade-related aspects of Intellectual Property Rights, Annex 1C to the Agreement Establishing the

World Trade Organisation 1994 (Hereinafter TRIPs Agreement)

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Article 27.1 TRIPs Agreement, 1994