The published patent application – a basis for injunctive relief?

The reader of the European Agreement on a Unified Patent Court (UPCA), which might enter into force some day, learns in Article 32(1)(f) that the Unified Patent Court shall have exclusive competence in respect of actions for damages or compensation derived from the provisional protection conferred by a published European patent application. Since the provision expressly mentions “damages or compensation”, the reader becomes aware that there could apparently be more rights conferred by a published European patent application – for which the national courts remain competent. And indeed, according to the European Patent Convention (EPC) a published European patent application could be a sword as sharp as a granted patent: for By read by Article 67(1) EPC, from the date of publication, a European patent application provisionally confers on the applicant such protection as an examined and granted European patent in the contracting states designated in the application as published, i.e. the same rights as would be conferred by a national patent granted in those states. Under Article 67(2) EPC, however, contracting states may confer protection which is less than that of a national patent. That protection may not be less, though, than that which would result from publication of an unexamined national patent application. The applicant must at least be given the right to claim compensation reasonable in the circumstances from an unauthorised user. This means that the contracting states are not obliged to confer injunctive relief if their national law does not provide injunctive relief in the case of an infringement of a national patent application. Apparently, all the contracting states have chosen to lower the level of protection of a European patent application to the level of the national patent application. This carries the implication that e.g. in Germany, the UK and the Netherlands, there is no injunctive relief in the case of an infringement of a European patent application. In France, however, as I understand it, a seizure can be ordered on the basis of a published European patent application; in Poland injunctive relief seems possible. Most of the national laws of the contracting states provide only compensation. Obviously the majority of the European national legislators, and especially the German legislator, were sceptical about providing injunctive relief as long as the European patent application has not been examined and found to meet the criteria of novelty and inventive step. It seems to me that it is a good compromise between the interests of the inventor and the interests of third parties that the published patent application is a basis for compensation, but not for injunctive relief. However, it is desirable that full harmonisation with regard to the rights conferred by a European patent application is reached. The UPCA, as I understand it, does not harmonise or “unify” the national laws with regard to the rights conferred by a European patent application – not even with regard to claims for compensation because of infringement of a European patent application for which the Unified Patent Court will have exclusive competence; the Unified Patent Court will thus have to apply the national law for each country concerned. Such harmonsation, however, in my view, would be incomplete if there was no harmonisation with regard to utility models. In Germany, a European patent application can still indirectly give rise to injunctive relief: Under German law, the proprietor of a European patent application can (with regard to product claims) “branch off” a German utility model. The utility model is registered without examination – and gives rise to injunctive relief for the proprietor if the utility model is infringed. In utility model infringement litigation, the defendant can allege nullity of the utility model as a defence. This admissibility of the nullity defence corresponds to the non-examination before registration. However, the defendant bears the burden of proof. Thus it is the defendant who has to make the effort to proof that the invention did not meet the requirement of inventive step. It seems inconsistent to me that the German legislator on the one hand has reduced the level of protection of a published European patent application while on the other hand it has given the applicant the opportunity to have a utility model registered and to seek injunctive relief. Utility model law in Europe – the harmonisation of which should return to the European Union’s agenda – should be consistent with the (ideally harmonised) rights conferred by a published European patent application.