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Intellectual Property Jurisdiction Strategies

Where to Litigate Unitary Rights vs National Rights in the EU

Torsten B. Larsen

This timely and practical guide compares the jurisdictional advantages of litigating a national IP right with those of the corresponding European unitary IP right. The study offers IP practitioners a meticulous yet principled basis for their jurisdictional decisions and shows why it is advantageous for infringers to litigate based on a national IP right and rightholders to litigate based on a European unitary IP right.
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TABLE OF TREATIES, CONVENTIONS AND OTHER INSTRUMENTS

Where to Litigate Unitary Rights vs National Rights in the EU

Torsten B. Larsen

TREATIES

 

Patent Corporation Treaty done at Washington on June 19, 1970 as amended on September 28, 1979 as modified on February 3, 1984 and on October 3, 2001 7, 88

Treaty Concerning the Accession of the Republic of Croatia, Council of the European Union, Brussels 7 November 2011 7

Treaty of Amsterdam amending the Treaty of the European Union and the Treaty establishing the European Community, 10 November 1997 27

Treaty of Lisbon amending the Treaty of the European Union and the Treaty establishing the European Community, 13 December 2007 28

Treaty of Rome of 25 March 1957 26, 27

Treaty on the Functioning of the European Union 27, 82

CONVENTIONS

 

Berne Convention for the Protection of Literary and Artistic Works of September 9, 1886 completed at Paris on May 4, 1896 revised at Berlin on November 13, 1908 completed at Berne on March 20, 1914 revised at Rome on June 2, 1928 at Brussels on June 26, 1948 at Stockholm on July 14, 1967 and at Paris on July 24, 1971 and amended on September 28, 1979 88

Convention for the European Patent for the Common Market, Community Patent Convention (76/76/EEC) of 15 December 1975 (never came into force) 30, 31, 97, 103, 104, 105, 141, 213, 215, 220

Convention for the Protection of Human Rights and Fundamental Freedoms, Rome, 4 November 1950 69, 82

Convention for the Protection of Industrial Property of 20 March, 1883, as revised at Brussels on December 14, 1900, at Washington on June 2, 1911, at The Hague on November 6, 1925, at London on June 2, 1934, at Lisbon on October 31, 1958, and at Stockholm on July 14, 1967, and as amended on September 28, 1979 (Paris Convention) 159

Convention for the Protection of New Varieties of Plants of December 2, 1961, as Revised at Geneva on November 10, 1972, on October 23, 1978, and on March 19, 1991 7, 159

Convention on Choice of Court Agreements concluded in Hague on 30 June 2005 103, 105

Convention on Jurisdiction and the Enforcement of Judgments in Civil and Commercial Matters signed in Brussels on 27 September 1968 26, 31, 40, 103, 105, 215

Convention on Jurisdiction and the Enforcement of Judgments in Civil and Commercial Matters signed in Lugano on 16 September 1988 10, 14, 16, 27, 28, 29, 33, 35, 53, 61, 65, 72, 84, 88, 92, 94, 95, 98, 101, 106, 109, 110, 115, 116, 117, 118, 119, 120, 121, 122, 124, 133, 134, 135, 139, 154, 155, 156, 162, 163, 164, 165, 166, 168, 169, 170, 171, 172, 175–82, 184,185, 186, 187, 190, 193, 195, 198, 199, 200, 201, 202, 203, 206–21, 224, 226, 227, 228, 231, 231, 235, 236, 246, 247, 248, 249, 250, 251, 252, 253, 258, 259, 260

Convention on Jurisdiction and the Recognition and Enforcement of Judgments in Civil and Commercial Matters signed in Lugano on 30 October 2007 10, 14, 16, 27, 28, 29, 31, 33, 34, 35, 36, 37, 38, 39, 40, 41, 42, 43, 45, 46, 47, 48, 50, 52, 53, 55, 56, 57, 58, 59, 61, 62, 63, 64, 65, 67, 70, 72, 75, 84, 92, 94, 95, 98, 106, 109, 110, 115, 116, 117, 118, 119, 120, 121, 122, 124, 128, 147, 164, 165, 166, 168, 169, 170, 171, 172, 175–82, 184, 185, 186, 187, 190, 193, 195, 198, 199, 200, 201, 202, 203, 206–21, 224, 226, 227, 228, 231, 231, 235, 236, 246, 247, 248, 249, 250, 251, 252, 253, 258, 259, 260

Convention on Private International Law, Jurisdiction and Foreign Judgments in Civil and Commercial Matters, Hague, 1999 (never came into force) 103, 192

Convention on the Grant of European Patents of 5 October 1973 as revised by the Act revising art. 63 EPC of 17 December 1991 and the Act revising the EPC of 29 November 2000 8, 9, 10

AGREEMENTS

 

Agreement between the European Community and the Kingdom of Denmark on Jurisdiction and the Recognition and Enforcement of Judgments in Civil and Commercial Matters of 19 October 2005 26

Agreement on a Unified Patent Court (2013/C 175/01) of 20 June 2013 5, 7, 8, 9, 10, 14, 16, 19, 20, 50, 51, 52, 53, 54, 55, 56, 57, 58, 70, 72, 89, 102, 103, 104, 106, 107, 108, 110, 119, 129, 130, 133, 135, 146, 147, 148, 151, 161, 166. 167, 168, 169, 170, 173, 176, 197, 212, 213, 228–34, 236, 237, 239, 241, 242, 245, 246, 256–8, 259, 261

Agreement relating to Community patents 89/695/EEC done at Luxembourg on 15 December 1989 (never came into force) 31, 252

Draft Agreement on the Establishment of a European Patent Litigation System (EPLA), 2004 (never came into force) 35

Draft Agreement on the European Union Patent Judiciary of 14 May 2008 (9124/08 PI 24 COUR 19) 50, 107, 131, 166

Draft Agreement on the European Union Patent Judiciary of 30 June 2008 (11270/08 PI 32 COUR 32) 50, 131, 166

Draft Agreement on the European Union Patent Court and draft Statute of 4 November 2008 (14970/08 PI 78 COUR 52) 50, 131, 166

Draft Agreement on the European and Community Patents Court and draft Statute of 8 January 2009 (5072/09 PI 1 COUR 1) 50, 131, 166

Draft Agreement on the European and Community Patents Court and draft Statute, revised Presidency text of 23 March 2009 (7928/09 PI 23 COUR 29) 50, 131, 166

Draft Agreement on a Unified Patent Court and draft Statute, Presidency text of 14 June 2011 (11533/11 PI 68 COUR 32) 50, 131, 166

Draft Agreement on a Unified Patent Court and draft Statute, revised Presidency text of 2 September 2011 (13751/11 PI 108 COUR 48) 50, 107, 131, 166

Draft Agreement on a Unified Patent Court and draft Statute, revised Presidency text of 7 October 2011 (15289/11 PI 127 COUR 56) 50, 131, 166

Draft Agreement on a Unified Patent Court and draft Statute, revised Presidency text of 19 October 2011 (15539/11 PI 133 COUR 59) 50, 107, 131, 166

Draft Agreement on a Unified Patent Court and draft Statute, revised Presidency text of 26 October 2011 (16023/11 PI 141 COUR 62) 50, 167

Draft Agreement on a Unified Patent Court and draft Statute, revised Presidency text of 11 November 2011 (16741/11 PI 155 COUR 64) 50, 131, 167

Draft Agreement on the creation of a Unified Patent Court, guidance for future work of 24 November 2011 (17539/11 PI 168 COUR 71) 50, 131, 167

Draft Agreement on a Unified Patent Court and draft Statute, consolidated text of 27 September 2012 (14268/12 PI 133 COUR 66) 50, 131, 167

Draft Agreement on a Unified Patent Court and draft Statute, consolidated text of 12 October 2012 (14750/12 PI 120 COUR 67) 50, 132, 167

Draft Agreement on a Unified Patent Court and draft Statute, consolidated text of 14 November 2012 (16222/12 PI 146 COUR 74) 50, 107, 132, 167

Draft Agreement on the Unified Patent Court (17407/11 LIMITE PI 166, COUR 74) of 2 December 2011 with attached Non-Paper of 30 November 2011 from the Commission regarding the Relationship of the Draft Agreement on the Unified Patent Court with Regulation (EC) NO 44/2001 Brussels I 54

Hague Agreement concerning the International Registration of Industrial Designs 7

Madrid System for the International Registration of Marks and the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, adopted at Madrid on 27 June 1989 7

Trade-Related Aspects of Intellectual Property Rights annexed to the Marrakesh Agreement Establishing the World Trade Organization, signed in Marrakesh, Morocco on 15 April 1994 (TRIPS) 82, 88, 159, 202

DECISIONS

 

Council Decision 2006/325/EC OJ L 120/22 of 27 April 2006 concerning the Conclusion of the Agreement between the European Community and the Kingdom of Denmark on Jurisdiction and the Recognition and Enforcement of Judgments in Civil and Commercial Matters 26

PREPARATORY WORKS

 

Memorandum amending Regulation (EU) No 1215/2012 on Jurisdiction and the Recognition and Enforcement of Judgments in Civil and Commercial Matters COM(2013) 554 final, 2013/0268 (COD) 164

Memorandum for a European Parliament and Council Regulation on the Community Design presented by the Commission COM (93) 342 final COD 463 Brussels, 3 December 1993 123, 222

Memorandum for a Council Regulation on Community Plant Variety Rights presented by the Commission COM(90)347 (90/C 244/01) Brussels 6 September 1990 128

Memorandum of the European Communities Supplement 5/80, New Trade Mark System for the Community, proposed Directive and Regulation prepared by the Commission of the European Communities (COM 80 635 final 19 November 1980) 122, 141

Memorandum on amending Council Regulation (EC) No 207/2009 on the Community Trademark 2013/0088 (COD) published on 27 March 2013 31, 36

Memorandum on the Creation of an EEC Trade Mark adopted by the Commission on 6 July 1976, SEC(76)2462 July 1976 122, 141, 215

Memorandum on the Need for a European Trademark System, Competence of the European Community to create one, Commission Working Paper, Working Group on the Community Trademark, October 1979, III/D/1294/79-EN 122, 141

Report on the Convention on Jurisdiction and the Enforcement of Judgments in Civil and Commercial Matters signed at Brussels 27 September 1968 by P. Jenard, Director in the Belgium Ministry of Foreign Affairs and External Trade, OJ of 5 March 1979 C 59/1 (Jenard report) 83, 86, 93, 116, 119, 153, 193, 247, 248

Report on the Convention on Jurisdiction and the Enforcement of Judgments in Civil and Commercial Matters done at Lugano on 16 September 1988 by Mr. P. Jenard and Mr. G. Möller 90/C 189/07 (Jenard and Möller report) 117

Report on the Convention on Jurisdiction and the Recognition and Enforcement of Judgments in Civil and Commercial Matters, signed in Lugano on 30 October 2007, by Professor Fausto Pocar, 2009/C 319/01 (Pocar report) 95, 104, 114, 119, 187, 193, 247

Report on the Convention on the Association of the Kingdom of Denmark, Ireland and the United Kingdom of Great Britain and Northern Ireland to the Convention on Jurisdiction and the Enforcement of Judgments in Civil and Commercial Matters and the Protocol on its interpretation by the Court of Justice by Professor Dr. Peter Schlosser, OJ of 5 March 1979 C 59/71 (Schlosser report) 16, 193

SCHOLARLY REPORTS

 

Conflict of Laws in Intellectual Property, The CLIP Principles, Prepared by the European Max Planck Group on Conflict of Laws in Intellectual Property, 2011 252

Memorandum amending Regulation (EU) No 1215/2012 on Jurisdiction and the Recognition and Enforcement of Judgments in Civil and Commercial Matters COM(2013) 554 final, 2013/0268 (COD) 39, 42, 56, 164

Transparency Proposal on Jurisdiction, Choice of Law, Recognition and Enforcement of Foreign Judgments in Intellectual Property, 2009 184, 189, 195, 197

CJEU OPINION

 

Opinion 1/09 of 8 March 2011 of the CJEU 52, 104, 168

EVALUATION REPORTS

 

Evaluation of the Community Plant Variety Right Aquis – Final Report to the Directorate General for Health and Consumer Affairs, European Commission, April 2011 35, 101, 128

Report on the Application of the Brussels I Regulation in the Member States, Ruprecht-Karls-Universität Heidelberg, Institut für Ausländisches und Internationales Privat- und Wirtschaftsrecht, presented by Prof. Dr. Burkhard Hess, Prof. Dr. Thomas Pfeiffer and Prof. Dr. Peter Schlosser (Munich) Study JLS/C4/2005/03 156

Study on the Overall Functioning of the European Trade Mark System presented by Max Planck Institute for Intellectual Property and Competition Law Munich of 15 February 2011 64, 96, 97, 122, 140, 252

GREEN PAPERS

 

Green Paper on Alternative Dispute Resolution in Civil and Commercial Matters, COM (2002) 196 final 82

RECOMMENDATIONS

 

WIPO Joint Recommendation Concerning Provisions on the Protection of Marks, and other Industrial Property Rights in Signs on the Internet, 2001 20