Towards a Complete Construction of an International Patent Protection System: the Case for a Supra-National Patent Enforcement Mechanism in the EU

• Date: 01 January 2010

Towards a Compete Construction of an

International Patent Protection System:

The Case for a Supra-National Patent

Mechanism in the EU

DO NAL LOFT US*

Introduction

Larger industrial companies have become increasingly global in their

functions and aspirations. They operate in as many countries as is possible

to recover the high costs of commercialising new products and processes.

With regard to patents, it is increasingly common for a multinational

company 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 of patents. The regulation of transnational trade and the

international exploitation of patent rights have brought about international

agreements concerning these closely related issues, such as international

patent granting power, international harmonisation of patent laws and

uniform systems of jurisdiction and choice of law rules applicable to patent

enforcement as well as other areas. However, there is an increasingly strained

relationship between international patent acquisition and enforcement1

which is the dominant focus of this article.

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 international

rules has been very weak. This article seeks to focus on the problems

associated with enforcing patent rights at a multi-jurisdictional level. From

a private international law perspective, the legal independence and terri -

torial 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.

* Donal Loftus BA, LLB, LLM. Lecturer in Contract Law, Commercial & Consumer

Law and Interna tional Trade Law at the University of Salford’s School of Law,

Manchester, UK.

1Thomas, Litigation Beyond the Technological Frontier, Comparative Approaches to

Multinational Patent Enforcement (1996) 27 Law & Pol’y Int’l Bus 277, 280.

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To address this issue it will first be necessary to briefly discuss what a

patent is, the effects it has, the motivations embodied in the patent system

followed by a discussion of the governing laws which show a trend towards

global harmonisation whilst the issues of enforcement will be discussed

which demonstrate a lack of globalisation in relation to the international

protection of patents which is strongly desired owing to the increasing

global nature of commerce.

What is a Patent?

A patent is a set of exclusive rights granted by a state to an inventor or his

assignee 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 vary widely between

countries according to national laws and international agreements.

Typically, however, a patent application 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, using, selling or

distributing the patented invention without permission. A patent provides

the right to exclude others2from 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 date3.

Under the World Trade Organisation’s (“WTO”) Agreement on Trade

Related Aspects of Intellectual Property Rights, patents should be available

in WTO member states for any inventions, in all fields of technology.4

Examples of particular types of patents for inventions include biological

patents, business method patents, chemical patents and software patents. In

some jurisdictions, other types of intellectual property rights are referred to

as patents, for example, industrial design rights are known as “design

patents” – such set out to protect the visual design of objects that are not

purely utilitarian. The breeders of plants have rights which are often

referred to as “plant patents” whilst utility models or “Gebrauchsmuster”

are sometimes called “petty patents” or innovation patents. This article

focuses in the main on patents relating to inventions.

2Herman v Youngstown Car Mfg Co 191 F 579, 112 CCA 185 (6th Cir 1911).

3Article 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].

4Ibid, Article 27.1.

138 DON AL LO FTU S

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