Wednesday, October 21, 2015

Bennett on Torpedo Actions and the Unified Patent Court Agreement

A "torpedo action" is a declaratory judgment action filed by a potential patent infringement defendant in a European state that is believed to have a slow-moving docket, with the goal of preemptively staying proceedings in a faster forum in which the patent owner is likely to file an infringement action.  I've discussed torpedo actions in my book (pages 253-55) and on this blog (here, here, here and here).  Now Richard Bennett has published an article in the July 2015 issue of Mitteilungen der deutschen Patentanwälte (pp. 301-08) titled Das Übereinkommen über ein einheitliches Patentgericht—das Ende des Torpedos? ("The Unified Patent Court Agreement—The End of Torpedo Actions?").  Here is the abstract (my translation from the German):
The Unified Patent Agreement (UPA) has as its goal the faster and simpler enforcement of patents.  The continued alternative or supplemental jurisdiction of national courts for claims concerning both Unitary Patents and European Patents, however, offers the possibility to present to a national court a question of rights preliminary to an infringement action.  In particular, in view of the interplay of the UPA with the Brussels Regulation (Recast) 2015 the possibility of such preliminary questions is not averted.  In this regard, the UPA achieves its self-imposed goal at best only conditionally.
Mr. Bennett argues that, during the 7-year transitional period provided under article 83 of the Unified Patent Court Agreement, prospective defendants may be able to stay litigation before the European Patent Court by initiating torpedo actions in slow-moving national courts, and that even after that period prospective defendants may be able to stay actions before the EPC by initiating related actions such as actions for a competition law-based  compulsory license.

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