Patent Protection in Europe: Integrating Europe into the Community or the Community into Europe?
| DOI | http://doi.org/10.1111/1468-0386.00161 |
| Author | Hanns Ullrich |
| Published date | 01 December 2002 |
| Date | 01 December 2002 |
Patent Protection in Europe: Integrating
Europe into the Community or the
Community into Europe?
Hanns Ullrich*
Abstract: Patent protection in Europe basically rests on two pillars: national grants or
grants from the European Patent Organisation (EPO). The EPO grants patents by a
centralised procedure with uniform conditions, but once granted the patents become
national and subject to the divergent national laws of EPO-Member States. The system
has been very successful, so successful, indeed, that it overshadowed the Community's
many unsuccessful attempts to set up a Community patent system of its own by way of
a convention between Member States. As the Commission has recently stepped in by
proposing the establishment of a Community Patent system by way of regulation, a
kind of `cooperative rivalry' has arisen between the Community and the EPO about
how to unify patent protection in Europe. This rivalry not only mirrors divergent views
on the politico-economic functions of the patent system, but also is illustrative of
dierent concepts of regional integration in a context of global competition for
innovation.
I Introduction
Over at least the past decade, patent protection of technological inventions has become
ever more important both in terms of quantity and quality. The number of patents
applied for has reached totally unexpected levels,
1
the scope of available protection has
been extended far beyond traditional limits to computer programs of all kinds
2
and to
European Law Journal, Vol. 8, No. 4, December 2002, pp. 433±491.
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and 350 Main Street, Malden, MA 02148, USA
* Dr. iur., M.C.J. (N.Y. Univ.), Professor, Universita
Èt der Bundeswehr Mu
Ènchen, Neubiberg; professor,
College of Europe, Bruges.
1
EPO-patent applications have risen from 55,982 in 1991 (see EPO, Annual Report 1991, Munich 1992, at
p. 25) to 158,161 in 2001 (EPO, Annual Report 2001, Munich 2002, at p. 10); the German Patent Oce
received 42,718 applications for national patents in 1991 (Deutsches Patentamt, Jahresbericht 1992,
Munich 1993, at p. 8) and 64,151 in 2001 (Deutsches Patent- und Markenamt, Jahresbericht 2001,
Munich 2002, at p. 11); US numbers for 1991 are 164,306, and 326,508 for 2001; see US Patent Statistics
1963±2001 (http://www.uspto.gov./web/oces/ac./ido/veip/taf/st_co_00.htm); also Jae, The US patent
system in transition: policy innovation and the innovation process, (2000) 29 Res. Pol'y 531, 537;
Riordan, What's Driving Patent and Trade Mark Application Filings, (2000) Eur. Int. Prop. Rev., 349.
2
See Tauchert, Patent Protection for Computer ProgramsÐCurrent Status and New Developments (2000)
31, IIC 812; Patentschutz fu
Èr ComputerprogrammeÐSachstand und neue Entwicklungen, (1999) GRUR
Int., 829; Ohly, Software und Gescha
Èftsmethoden im Patentrecht, (2001) CR, 809; Kraûer, Erweiterung
des patentrechtlichen Er®ndungsbegris? (2001) GRUR, 959; critical Likhovski, Fighting the Patent
Wars, (2001) Eur. Int. Prop. Rev., 267; Lloyd, Intellectual Property in the Information Age, (2001) Eur.
Int. Prop. Rev., 290; Scho
Èlch, Softwarepatente ohne Grenzen, (2001) GRUR, 16; due to the extension of
protection to business methods the matter has become increasingly controversial, so much that the
biotechnological inventions, including gene technology.
3
At the same time, due to
the creation of a Community Trademark, of Community Protection of Plant
Varieties, and, recently, of a Community Design, but also due to the ever-widening
harmonisation of copyright law,
4
the Common Market has matured into a true
Internal Market of intellectual property protection. Yet, patent protection in Europe
rests unchanged on a fragmented and incomplete legal system for about a quarter of
a century.
As astonishing as this state of the aairs may be, it has not raised much concern
outside the patent community. Patent law is a very technical area of law both as
regards its subject matter and its operation. However, it is a matter of general interest.
In a free enterprise economy, patent protection constitutes a major legal instrument
of general support to technological progress. It allows the `monopolisation' of market
opportunities for innovations based on inventions, and, thus, the taking of risks in
productive investments in new technologies. Yet, general awareness of patent law
centres much more on the dangers, which patent exclusivities may cause for
competition, than on the conditions of the well-functioning of the system in the
®rst place.
5
In particular, little public attention is paid to the institutional structure of
the patent system, or to the problems these may cause for the integration of national
European Law Journal Volume 8
434 #Blackwell Publishers Ltd. 2002
legislature has asked for prior scienti®c advice, see Lutterbeck, Gehring and Horns, Sicherheit in der
Informationstechnologie und Patentschutz fu
Èr Software produkteÐein Widerspruch? (Technische Univer-
sita
Èt, Institut fu
Èr Angewandte Informatik, 2000), 18 et passim; Max-Planck-Institut fu
Èr ausla
Èndisches und
internationales Patent-, Urheber- und Wettbewerbsrecht, Fraunhofer Institut fu
Èr Systemtechnik, Mikro-
und makroo
Èkonomische Implikationen der Patentierbarkeit von Softwareinnovationen: Geistige Eigen-
tumsrechte in der Informationstechnologie im Spannungsfeld von Wettbewerb und Innovation, Karls-
ruhe 2001 (Forschungsauftrag 36/00 des Bundesministeriums fu
Èr Wirtschaft und Technologie, Berlin);
PbT Consultants, The Results of the European Commission Consultation Exercise on the Patentability
of Computer Implemented Inventions, London 2001 (http://www.europa.ind/comm.internalmarket/en/
indprop/softpatanalyse.htm). Recently, the Commission has submitted a Proposal for a Directive of the
European Parliament and the Council on the patentability of computer implemented inventions, COM
(2002) 92 Final of February 20, 2002.
3
Literature is as abundant as in the software ®eld, see only Fuchs, Patentrecht und Humangenetik, (1999)
JZ, 597; Plebani, Bio Protection and Licensing in Europe, les Nouvelles 2000 (March) 1; Busche, Die
Patentierung biologischer Er®ndungen nach Patentgesetz und EPU
È, (1999) GRUR Int., 299; Kienle, Die
neue EU-Richtlinie zum Schutz biotechnologischer Er®ndungenÐrechtliche und ethische Probleme der
Patentierung biologischer Substanzen, (1998) EuWiStR, 156; Drahos, Biotechnology Patents, Markets,
and Morality, (1999) Eur. Int. Prop. Rev., 441; Gold, Gallochat, The European Biotech Directive: Past as
Prologue, (2001) 7 Eur. L. J. 331, all with references.
4
See Reg. 40/94 of December 20, 1994 on the Community Mark, OJEC 1994 L 11, 1; Reg. 2100/94 of July
27, 1994 on Community Protection of Plant Varieties, OJEC 1994 L 227, 1; Council Reg. 6/2002 of
December 12, 2001 on the Community Design, OJEC 2002 L3, 1; Directive 29/2001 of May 22, 2001 on
the harmonisation of certain aspects of copyright and related rights in the information society, OJEC
2001 L 167, 10; for the development of harmonisation of copyright law see Cohen Jehoram, European
Copyright LawÐEver More Horizontal, (2001) 32 IIC 532; Pardo, Highlights of the Origins of the
European Union Law on Copyright, Eur. (2001) Int. Prop. Rev., 238; for a general account of
harmonisation/uni®cation of intellectual property protection see Ullrich, Die gemeinschaftliche Gestal-
tung des Wettbewerbsrechts und des Rechts des geistigen Eigentums, in Mu
Èller-Gra (ed.), Gemeinsames
Privatrecht in der Europa
Èischen Gemeinschaft, 2nd edn (Baden-Baden 1999), 403.
5
For a discussion of the relationship between patent protection and competition, and of the proper
operation of the patent system in general see Ullrich, Intellectual Property, Access to Information, and
Antitrust: Harmony, Disharmony, and International Harmonisation, in Dreyfuss, Zimmerman, First
(eds), Expanding the Boundaries of Intellectual Property (Oxford, 2001), 365; id. Legal Protection of
Innovative Technologies, Property or Policy, in Granstrand (ed.), The Swedish International Symposium
on Economics, Law, and Intellectual Property, forthcoming.
systems into Community and/or European patent protection. As in any other ®eld of
the law, however, it is only by understanding the patent system as an institution that
integration by harmonisation or by uni®cation may be achieved successfully. There-
fore, it is by reference to the institutional particularities of the existing national and
European patent systems that an attempt is made to explain the diculties of
establishing a `supra-territorial' system of patent protection as a framework regula-
tion for innovations in an integrating, yet highly dierentiated market, such as the
Internal Market of the European Union. In fact, the entire area of EU-in¯uence must
be taken into consideration, i.e. also the liberalised markets of the European
Economic Area, of Eastern Europe and of some neighbouring States like Switzerland
or Turkey. This is so, because the real-world problem is to bring legal protection of
inventions and the economic integration of markets together, at least to the extent
that market integration is itself driven by the law. As should become clear from the
text, however, this process of concomitant legal uni®cation and economic integration
meets with diculties, which result less from institutional particularities of patent
protection as such, than from the fact that present uni®cation eorts tend to burden
the already uneven operation and infrastructure of patent protection with exagger-
ated claims of market unity and political dominance. What may be needed, therefore,
is not a political compromise as a way out of the existing stalemate, but a
reconsideration of the needs of market integration, and of the institutional require-
ments of a patent system, which is apt to satisfy industrial and public interests equally
on all levels, national, international and supranational, throughout the Community
and Europe.
A From national to international patents
1 National systems of protection
At present, patent protection in Europe rests upon a multi-layered system. On the one
hand there are the national systems of patent protection. Although, due to interna-
tional conventions
6
or due to unilateral adaptation, they are de facto quite uniform as
regards the conditions of the grant of the patent, they dier considerably as regards the
substantive terms of protection,
7
the procedure and costs of granting protection,
8
and
December 2002 Patent Protection in Europe
#Blackwell Publishers Ltd. 2002 435
6
In particular the Strasburg Convention on the Uni®cation of Certain Points of Substantive Law on
Patents for Inventions of November 27, 1963 (BGBl 1976, II 658); by contrast the WTO-Agreement on
Trade Related Aspects of Intellectual Property of 1994 (BGBl 1994 II 1730) has had only limited
harmonising in¯uence on national patent laws in Western Europe.
7
Even where exclusivity is generally de®ned in similar terms, dierences remain, e.g. as regards exceptions
to protection (prior use or possession personelle), the conditions and practice of granting compulsory
licences, and the prerequisites for and terms of sanctions for infringement; for a survey of national patent
laws see Kraûer, Die Harmonisierung der nationalen Patentgesetze, in Beier, Haertel, Schricker (ed.),
Mu
Ènchener Gemeinschaftskommentar zum Europa
Èischen Patentu
Èbereinkommen, (1998) 22. Lfg., Cologne,
119, 126 et seq.
8
In particular, there is a split between national patent laws, which grant protection only upon full prior
examination of the patentability of an invention (Austria, Denmark, Germany, Sweden, Spain, United
Kingdom) and those, which only require registration, and, possibly make enforcement dependent upon
the submission of a search report (Belgium, France, Greece, Ireland, Italy, the Netherlands, Portugal).
The dierence is enormous both in terms of administration and substance of the system. Prior
examination requires time and money, but aords legal certainty of the title granted and ecient
enforcement, whereas registration systems operate more rapidly and cheaply, but provide only an unsafe
title with little deterrent eect.
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