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International Patent Law Research Tools & Strategies : Introduction ©Professor Jon Cavicchi, IP Librarian International Legal Research Module Fall 2014
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International Patent Law Research Tools & Strategies :
Introduction
©Professor Jon Cavicchi, IP LibrarianInternational Legal Research Module
Fall 2014
Icons
Patent Practice = Broad Field
FOCUS IS ON INTERNATIONAL TOOLS AND STRATEGIES
-NOT-FOREIGN LAW RESEARCH
• Christopher Frerking, Professor of Law, Director of the Patent Practice and Procedure Program
• “international patent law is vague”• “the real action is with the national
patent laws”• “there is a real question as to the limits
of patent harmonization…to what extent are the national laws in compliance with international standards?”
Interview 10/31/14
What’s this got to do with daily practice of patent lawyer?
• Much of international law involves disputes between governments
• Patent practitioner may need to know – Rules flowing from treaties – PCT example– For counseling on patent matters in foreign
countries whether they are treaty compliant• Prosecution• Jurisdiction• Enforcement
Why do we need to research & be familiar with international patent law research?
• What are you being asked to research?– Drives your research strategy
• Could impact domestic practice• Could impact patent portfolio management• Could ne part of international IP business transaction
Why do we need to be familiar with how to research national primary sources?
• Conformity with conventions• Transactions might depend on both• Patent lawyers sometimes say international when
they mean foreign law• Some conventions defer to national laws– Directive 98/44/EC of the European Parliament and of
the Council of 6 July 1998 on the legal protection of biotechnological inventions; Member States shall protect biotechnological inventions under national patent law.
“National Treatment” Principle
• signatory to an applicable treaty is only required “not to discriminate against foreign parties in the granting and enforcement of patent rights.”
• Paris Convention's provisions do not require a country to recognize the validity of foreign patents granted to products that would not be patentable under that country's patent laws.
• any attempt to use a foreign court system to sue a foreign national for infringement of a United States business method patent, assuming such patents are not recognized in that country, would be a futile exercise.
• 28 Rutgers Computer & Tech. L.J. 1
• Some countries (such as France and Germany) treat IL as directly applicable in national courts. Others (such as the U.S.) generally do not. In the U.S., an international treaty rule is only applicable in a U.S. court if it is found by the judge to be "self-executing". The French-type systems are referred to as "monist" and the US/UK systems are "dualist".
• The UK is the most "dualistic" of all because all obligations (domestic and international) are passed by Parliament in exactly the same way. In the US, we have a different system of ratification of treaties from the passage of domestic legislation. Treaties require a 2/3 majority of the Senate but do not involve the House of Representatives at all. Also the language of the Supremacy Clause problematic, because it separates "treaties made under the authority of the United States" from laws passed by Congress. Most treaties are incorporated into U.S. domestic law through "implementing legislation."
• Provisions of a treaty may be partially self-executing and partially not self-executing. Examples of clearly self-executing treaty provisions include national treatment provisions, treaties of surrender, and boundary delineations. Human rights treaties are notoriously difficult be bring into a national court. The European Convention on Human Rights is an exception to that general observation.
• Note whether a treaty provision is substantive or procedural or both. The Paris and Berne conventions are "substantive" and the PCT and Madrid System are procedural. The WTO TRIPS Agreement is primarily substantive ("standards") but the WTO Dispute Settlement Agreement is procedural. A case alleging violation of the TRIPS Agreement can only be decided by a WTO dispute settlement panel and cannot brought in a national court.
• Of all Int'l IP law, copyright law under the Berne Convention and TRIPS is the most harmonized, followed by trademark law, and last of all, patent law. Unfair competition is covered in the Paris Convention but it is hopelessly mushy and unenforceable.
• The PCT has transformed the behavior of int'l technology companies. 25 years ago, most tech companies were sniffy about the PCT. Now they embrace it.
Within the complex global economy, patents function as indispensable tools for fostering and protecting innovation.
Types of international law
• Public international law– custom, or customary international law (consistent state
practice),– globally accepted standards of behavior (peremptory norms) or– codifications contained in conventional agreements, generally
termed treaties• Judicial decisions• Juristic writings• Private International Law
– Patent civil and commercial law transactions and disputes that contain international elements.
Where to begin to get overview?
• Open web searches – Subject too complex for sites?
Regional Conventions
International Private Law
Develops patent practice relevant conventions (rather than principles, guidelines and model laws) in various areas of private law, addressing topics
issues such as choice-of-law rules and jurisdictional rules
International Patent Law Research:Secondary Sources
©Jon Cavicchi
Learning the research landscape
• International patent content is contained in– General international tools– General patent law/practice tools– General IP tools– General tools that deal with geographic regions– Dedicated international IP tools– Dedicated international patent law tools– Topic specific tools that lead to international law– Hybrid tools for international practice that cover
foreign and international patent law/practice
CONTENT WITH THESE TITLES OFTEN ARE FOREIGN LAW GUIDES
TREATISES
• This treatise covers patent law in the United Kingdom:– cases– European Patent Office decisions– statutory instruments – court rules– international conventions– Treaties– related rules and regulations– EPO guidelines.
Beyond Lexis and Westlaw :
specialty international IP premium
service
Law reviews
• Keep you on top of issues in international patent law• Can be academic and dated• Mix and match with news sources for current
awareness• Don’t forget open web sources Google Scholar and
Legal Scholarship Network– Keep an eye out for sites that search tags and index
descriptors to collect those with odd titles• Field is interdisciplinary – policy, social science,
business…consider non legal journals
European Patents Sourcefinder
• This title helps you successfully handle European patents by providing access to– materials from the European Patent Office– national courts– national patent offices.
• It contains more than 2,000 fully indexed references with summaries, as well as the most important material relating to European Patent Convention Law, practice, and procedure.
International Patent Law Research:Conventions/Treaties
©2014Jon Cavicchi
EVALUATE USING INFORMATION LITERACY
Treaty Collections on the Internet
• American Society of International Law• Avalon Project (Yale Law School) Good collection of older treaties.• Australian Treaties Library• Council of Europe, European Treaties• Environmental Treaties and Resource Indicators (ENTRI)• European Union Treaties• GLOBALEX• Hague Conventions on Private International Law• International Humanitarian Law Database• International Treaties (NYU)• Juris International• Latin American Tax Treaties• Lex Mercatoria (international trade)• Multilaterals Project• Organization of American States (OAS) Treaties• Private International Law Database (U.S. Dept. of State)• United Nations Treaty Collection - GULC only• University of Minnesota Human Rights Library• WashLaw - Treaties• WIPO Treaties
International Patent Law Research:Judicial Decisions
©2014Jon Cavicchi
Check out US cases on issues of international patent law
European Patent Office Reports
• This title provides full-text decisions of the European Patent Office and its boards of appeal, including cross-references to rules of the European Patent Convention.
European Patent Decisions • This work contains a compendium of the important decisions
of the Boards of Appeal of the European Patent Office. • The relevant facts and questions of law in each decision are
summarized clearly and concisely. • Many of the decisions are followed by a separate section
noting issues arising from the decision and a comments section containing the author's opinions on the legal effect of the decision.
• Three narrative sections at the beginning of the work provide the user with general advice on important points of European patent law.
Fleet Street Reports Issues
• "Full-text decisions from courts and tribunals in the United Kingdom, Ireland, the Commonwealth, and the European Union related to intellectual and industrial property, including litigation in areas such as software, computer contracts, biotechnology, pharmaceuticals, and merchandising. Coverage begins with 1966."
Full-text decisions of the Court of Justice of the European Communities and the Court of First Instance of the European Communities, as well as the text of advocate-general opinions, court orders, and judgments, as reported by the Office for Official Publications for the European Communities and included in European Court Reports. Also includes judgments and orders of the Court of Justice covered by the Official Journal of the European Community, C Series. Coverage begins with 1954 for the Court of Justice of the European Communities; 1989 for the Court of First Instance of the European Communities; and 1985 for the C Series of the Official Journal.
WTO Index of Disputes
ICJ• Although previous international arrangements under
the Paris and Berne Conventions referred international intellectual property disputes to the International Court of Justice (ICJ), states have in the past tended to avoid any form of third party adjudication that deprives them of their sovereign power of decision-making.
• In particular this has been the case in matters of intellectual property where sensitive issues of national policy are likely to be involved. It is not surprising that no dispute concerning intellectual property was ever brought before the ICJ.
• IIC reports on international case law– European Court of Justice– European Patent Office– jurisprudence emanating from various national
jurisdictions.
International Patent Law Research:Government & NGO
©Jon Cavicchi
Current state of cooperation and alliance between the many countries in Europe
EU Patent Legal Authority
• Council Regulation 44/2001/EC of 22 December 2000 on jurisdiction and the recognition and enforcement of [patent] judgments
• Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights
International Patent Law:International Patent News Sources & CLE
©Jon Cavicchi
No dedicated international news or Committee reports…so use to
access human resources
Uses of blogs : international patent law
• Early news/copies of legal and policy docs• Early commentary on legal and policy docs• Links to other helpful tools• Be mindful of the blog producer
Other Tools to Consider
Introduction to TRIPS - Patentby Cynthia HoAssociate Professor of LawLoyola University Chicago School of Law(access requires CALI registration using USD CALI Code)
TRIPS - Advanced Topicsby Cynthia HoAssociate Professor of LawLoyola University Chicago School of Law(access requires CALI registration using USD CALI Code)
