Launching the Unified Patent Court: Lessons from the United States Court of Appeals for the Federal Circuit
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Description
As of this writing (April 2022), the Unitary Patent System, which includes an EU-wide patent, a dedicated court system, and a Unified Patent Court Agreement (UPCA) on procedural and substantive aspects of patent law, is about to come into force. It is easy to understand why an EU Patent is considered desirable. The EU Trademark has proved successful in no small part because state-by-state protection of intellectual property becomes a costly proposition when rights are embedded in products that are sold and used throughout a single market. The demand for a Unified Patent Court (UPC) is somewhat harder to understand. After all, national courts have long entertained patent cases. However, once the Court of Justice of the European Union (CJEU) interpreted the Brussels Convention to prohibit cross-border consolidation of patent disputes, the creative community saw the need for a more efficient adjudicatory mechanism. It expected that specialization would have other advantages as well. As the establishment of intellectual property courts in over 90 countries suggests, specialization can be especially valuable when disputes involve technological complexities. Repeated exposure to such cases is thought to give judges the expertise they need to develop a uniform body of predictable high quality law. Nonetheless, the UPC has triggered considerable controversy. As other Chapters in this volume explain, many of the concerns stem from EU-specific issues, including the incompatibility of a separate court system with the constitutive law of the European Union; language and procedural differences among member states; the fragmentation of patent law under the confluence of the European Patent Convention (EPC), national law, international patent law, EU law, and the law of the UPCA; and the democratic deficit created when there is no central law-giving authority accountable to the people. However, the establishment of the UPC also raises another fundamental question: is there a danger that law interpreted by a specialized court, insulated from the jurisprudential mainstream, will be suboptimal from an economic or social perspective? On this point, the experience of the United States is instructive. Since 1982, patent determinations have been reviewed by a single court, the United States Court of Appeals for the Federal Circuit. The Federal Circuit is not specialized in that it has jurisdiction over a set of disputes that are unrelated to patent law. But it does hear all patent appeals and as with the UPC, the expectation was that it would develop expertise and improve the law. Yet in its early years, many concerns were expressed about the ways in which it handled its mandate. The Secretary of Health and Human Services criticized the court’s decisions for contributing to the high cost of health care; the Department of Justice and the Federal Trade Commission questioned the impact of its case law on competition, and the National Academies of Science were concerned about the effect of the Federal Circuit’s holdings on innovation. In addition, the court’s decisions were thought to galvanize patent trolls, non-patent-practicing entities (NPEs) whose sole business consists of enforcing patent claims. To be sure, there are important differences between the UPC and the Federal Circuit. The Federal Circuit is a single appellate court which hears appeals from trial courts of general jurisdiction; the UPC includes both courts of first instance and a Court of Appeal. The Federal Circuit has so-called “case jurisdiction,” and therefore reviews not only the trial courts’ application of the US Patent Act, but also the disposition of all other matters asserted by the parties, including, for example, claims sounding in copyright or antitrust (competition) law. De novo review is, however, limited to issues of law; on questions of fact, the Federal Circuit must defer to the findings at trial. In contrast, while the UPC’s competence is confined to issues regarding patents, the Court of Appeal can, in these patent cases, reconsider both questions of law and fact. Finally, Federal Circuit decisions are all reviewable in the United States Supreme Court and can, for the most part, be modified by congressional action. But because the UPC will apply patent law sourced in the EPC, UPCA, national law, and international agreements, only some decisions will be within the jurisdiction of the CJEU. By the same token, most UPC decisions cannot be easily overruled by legislative action in the EU. To some extent, the differences between the US and EU systems may allow the UPC judges to avoid the critiques leveled at the Federal Circuit. However, there are also differences that can exacerbate the problems associated with the Federal Circuit’s jurisprudence. In Part 1 on structure and Part 2 on substance, this Chapter explores the sources of the Federal Circuit’s perceived difficulties and evaluates the extent to which the UPC is likely to follow in its footsteps. In Part 3, it offers a few suggestions on how the EU system might learn from the US experience.
Source Publication
The Unitary Patent Package & Unified Patent Court: Problems, Possible Improvements and Alternatives
Source Editors/Authors
L. Desaunettes-Barbero, F. de Visscher, A. Strowel, V. Cassiers
Publication Date
2023
Recommended Citation
Dreyfuss, Rochelle C., "Launching the Unified Patent Court: Lessons from the United States Court of Appeals for the Federal Circuit" (2023). Faculty Chapters. 1156.
https://gretchen.law.nyu.edu/fac-chapt/1156
