WIPR January/February 2018
www.worldipreview.com IP developments 35
Kurtz adds that there will be difficulties if BVerfG
has not decided the pending constitutional complaint
when Brexit becomes effective, in 2019.
“It is a bit hard to foresee how this issue would be
solved,” he says. “At the moment it is my sense that the
other EU member states want to make it happen that
the UK will be in, and stay part of, the UPC system.”
IPR: dead and buried?
Much like the dodo, inter partes reviews (IPRs) could
soon be a thing of the past.
In a much-awaited decision, the US Supreme
Court could reshape the entire patent system
by abolishing IPRs. Oil States Energy Services, a
provider of services to oil and gas companies, and the
petitioner in the dispute, claimed that the IPR process
is unconstitutional because it violates the right to a
jury in an article III court (a federal court established
under the US Constitution).
That’s not Oil States’s only argument—it also
claimed non-article III tribunals may exercise
jurisdiction over disputes involving “public rights”
in certain situations but that this doesn’t work for
patents as they are private property rights. Oil States
has also claimed that IPRs deprive patentees of the
Seventh Amendment guarantee to a jury trial in
common law suits.
The US government doesn’t see it the same way.
In October last year, the acting solicitor general
concluded that the IPR process “serves to protect
the public from the unwarranted burdens that
erroneously issued patents impose” and, most
importantly, that it is constitutional.
Although it’s difficult to predict the court’s
decision, the solicitor general’s opinion could serve as
an indication.
Julianne Hartzell, partner at Marshall, Gerstein
& Borun, predicts that the IPR proceedings will be
found constitutional, meaning there won’t be much
change to the status quo.
If on the other hand the US’s highest court sides
with Oil States, the impact on patent litigation will
be massive.
IPR proceedings were created under the America
Invents Act (AIA) which, according to Hartzell,
addressed industry concerns that “large companies
were harmed by the expense of patent litigation
brought in large numbers by non-practising entities”.
Patent owners would benefit from a finding of
unconstitutionality, says Hartzell. Litigation on
invalidity would return to the district courts, which
would give patent owners “greater confidence in their
ability” to survive invalidity challenges.
But what about all the patents that have had
claims cancelled since the introduction of the IPR
system? Hartzell believes that patent owners will
probably explore different avenues to revive and
enforce the patents.
The complaint’s
arguments
regarding the
procedure of
selection and
appointment
of the judges
are serious.
UPC: still no clarity in sight
We have asked the question many times before: will
the Unified Patent Court (UPC) ever be implemented?
The latest holdup is a German constitutional
complaint against the UPC. Filed last year, the
complaint raised several concerns, including the
independence of the UPC’s judiciary. It also argued
that the German UPC ratification law amends or
supplements the Constitution, which would require
a majority of two thirds of the Bundestag (parliament)
to pass it. However, the law was passed by a smaller
majority than this.
As the Federal Constitutional Court
(Bundesverfassungsgericht, BVerfG) continues to consider
the filing, onlookers are wondering how long the case
will delay Germany’s ratification of the UPC (which is
mandatory for the system to come into force).
Constantin Kurtz, partner at law firm Klaka in
Düsseldorf, said it is possible for the court to reject
the case without holding an oral hearing, but this is
unlikely. He expects a hearing to take place in either
2018 or early 2019, noting that the court must issue
its decision within three months of the hearing
having finished.
If this timeline proves to be correct, Germany
would not be able to ratify the UPC until perhaps the
summer of 2019.
In one of the latest developments in the case, the
German Bar Association has said the complaint is
entirely unfounded. But Kurtz says the complaint’s
arguments regarding the procedure of selection and
appointment of the judges are serious from a German
perspective.
“It is somehow strange that a judge has to be
reappointed after six years and that the committee
deciding on the reappointment may include members
who might not vote for a judge who rendered
decisions which do not please them.
“In the worst case scenario this is an issue that
could probably be corrected by an amendment of
the rules on the selection and appointment of the
judges. However, that would, of course, take a lot
of time.” Constantin Kurtz, Klaka
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