The Patent Litigation Law Review: Editor's Preface

Although patent litigators should always be mindful that patent litigation has, with some justification, been called the 'pathology of the patent system' – not so much as a criticism but more in recognition of how remarkably little patent litigation there is – when seen in relation to the ever increasing number of patents in force at any one time, patent litigation is also the anvil on which patent law is forged. This is because the 'black letter' law of patents tends to be terse by comparison to most other areas of law, and it is only with experience of how courts and tribunals interpret such law and apply it that one can start to appreciate its true scope and effect.

This, in part, explains how such similarly expressed statutory provisions as one finds in different patent laws can sometimes result in such different outcomes in different jurisdictions – disparities that are all the more evident when they concern the same product or process, and patents that, though in different jurisdictions, are all members of the same family, and are all intended to protect the same invention. As it becomes increasingly common for patent disputes to proceed in multiple jurisdictions, these differences in outcome have become ever more apparent.

Such disparities are not only a consequence of differing substantive laws, or differences in interpretation of similarly expressed laws, they can also be a consequence of the considerable procedural differences between jurisdictions, the nature of which is outlined in this Review. However, the Review does not only summarise patent litigation procedures: the respective contributors to it, as leading practitioners in each of their jurisdictions, also focus on recent developments in substantive patent law as demonstrated by the most important recent court decisions in their respective jurisdictions, meaning that this Review also provides insight into the current controversies that affect patent law generally.

The events of the past 18 months have not left patent litigation unscathed, and it will be interesting to see how the changes that the pandemic has brought, such as remotely conducted hearings, survive the much-hoped-for return to normality. Some indication of the strength of views engendered by this issue is provided by the arguments before the European Patent Office's Enlarged Board of Appeal in Case G 1/21 regarding the legality of mandating online hearings during the pandemic. In rejecting in July 2021 the challenge to the validity of this measure, the Enlarged Board was careful not to express a more general opinion about the legality of mandating such hearings.

The pandemic has also been used as a pretext for certain interests to push for a waiver of the patent and trade secrets provisions of the Agreement on Trade-Related Aspects of Intellectual Property Rights, of which discussions are now taking place in the World Trade Organization, despite it not being intellectual property that has impeded the roll-out of vaccines, and the manifest need for effective patent protection to incentivise the continuing search for new and improved medical treatments.

In the European Union, the big news this summer came in June 2021 when the German Federal Constitutional Court made an order regarding the constitutional challenge mounted to German adherence to the Agreement on a Unified Patent Court (UPCA). The order has the effect of allowing Germany to participate in the UPCA and the Protocol on the Provisional Application of the UPCA. German participation in those measures is a necessary prerequisite to their entry into force.

This decision provides for the prospect of the UPCA entering into force in the second half of 2022. The UCPA will allow (but not as yet mandate) traditional European patents to be litigated in a single court covering much of the European Union.

Such entry into force will also trigger the entry into force of EU Regulations that establish a new type of European patent, the European patent with unitary effect, which will allow patentees following the European route to opt for a single patent covering all the EU Member States that participate in the UPCA, as opposed to the traditional European patent, which has effect as a bundle of national patents. Litigation over this new type of patent will only be possible in the Unified Patent Court.

However, not all is plain sailing as not only must the UPCA regain its lost momentum, but it also appears that its implementation will proceed without formal amendment of the UPCA, despite it containing provisions that assume UK involvement in it. As the United Kingdom, as a result of its withdrawal from the European Union, can no longer participate in the UPCA, this may be seen as introducing a measure of uncertainty in respect of its legal basis. We should, however, know much more by the next edition of this Review.

Trevor Cook
Wilmer Cutler Pickering Hale and Dorr LLP
New York
October 2021

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