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

Date01 January 2010
Towards a Compete Construction of an
International Patent Protection System:
The Case for a Supra-National Patent
Mechanism in the EU
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.
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