The Public Interest and the Construction of Exceptions to Patentee's Rights - A comparative Study of UK and German law by Marc Dominic Mimler A Thesis Submitted for the Degree of Doctor of Philosophy Queen Mary, University of London 2015 Statement of Originality I, Marc Dominic Mimler, confirm that the research included within this thesis is my own work or that where it has been carried out in collaboration with, or supported by others, that this is duly acknowledged below and my contribution indicated. I attest that I have exercised reasonable care to ensure that the work is original, and does not to the best of my knowledge break any UK law, infringe any third party’s copyright or other Intellectual Property Right, or contain any confidential material. I accept that the College has the right to use plagiarism detection software to check the electronic version of the thesis. I confirm that this thesis has not been previously submitted for the award of a degree by this or any other university. The copyright of this thesis rests with the author and no quotation from it or information derived from it may be published without the prior written consent of the author. Signature: Marc Dominic Mimler Date: 28 May 2015 2 Abstract The thesis analyses the concept of public interest with regards to exceptions to patent rights. It is submitted that patent rights are generally provided for a utilitarian purpose which is to enable technological advance. This goal is meant to be achieved by providing exclusive rights over the patented invention. Often however public interest considerations also mandate a limit to the exercise of the patent right through exceptions. The thesis maintains that whilst public interest considerations with regards to patent rights and exceptions have constantly been adopted and incorporated through legislation by national (or regional) legislators; international legal regimes are increasingly influencing these considerations. Such supra-national regimes which are relevant to patent law include the TRIPS Agreement but also fundamental rights regimes such as the ECHR or the EU Charter on Fundamental Rights. The thesis will assess how these regimes influence and possibly restrict legislators in providing exceptions to patent rights. It makes significant contributions to the field of patent law by scrutinising what public interest consists of with regards to exceptions to patent rights and will analyse how a third party interest is factored into this process. It will analyse how supranational regimes influence this assessment and therefore identify the impact of the TRIPS Agreement along with the increasingly more relevant discourse on the fundamental rights level. The approaches provided by both of these legal regimes directly influence national legislation which leads to the question: how much flexibility remains to national legislators to provide for exceptions in the public interest without violating international law? This analysis therefore ultimately contributes to the scholarship with regards to the increasing transnationalisation of law. The findings of the thesis will recommend an approach on how legislators can provide for an individually balanced national patent system that is consistent with international norms. This becomes even more important because patent laws have become an important element in bilateral agreements, such as the TTIP currently being negotiated by the United States and the European Union. 3 Acknowledgements First, I would like to thank my supervisor for helping me complete this research. Professor Guido Westkamp has not just been a valued “Doktorvater”. Over the years I can truly say that he has become a good friend. I have always appreciated our great conversation about “the law” but more those not on the law. I look forward to many more to come. My gratitude also goes to Professor Spyros Maniatis. His leadership, generosity and constructive guidance have been a true inspiration since my days as his LL.M. student. I would like to thank the Herchel Smith studentship that entitled me to commence this project. This research could have not been completed without the wonderful resources that I have been provided with at Queen Mary. To mention is the excellent IP Archive that has been my home for many years and Malcolm Langley is perhaps the most helpful person when it comes to research. I would also like to express my gratitude to the Max Planck Institute for Innovation and Competition and its people. It has become my second academic home while I have been squatting there over the last years. What particularly nurtured this research was the wonderful and inspiring academic community at Queen Mary. It has truly become my home, my alma mater. Over the years I have been fortunate to have encountered wonderful friends and colleagues and I owe these people so much. So, I shall not pick out particular people – you know who you are!! I just wanted to mention Dr Theodora Christou for her help and constructive criticism in finishing this work and looking through numerous drafts - and the good mood she spreads. Personally, I would also like to thank my friends who have supported me during these many years and encouraged me to carry on. A special thank you goes to Dr Vivian Mak. She has been a true inspiration and my spiritus rector over the years. Finally, I would like to thank my family for their everlasting and unshaking support to get this work done. I would like to particularly thank my father, Dr Manfred Mimler who has eagerly been assisting me in my academic pursuits and is eagerly looking forward to welcoming me in the club of Doctors. Last but definitely not least; this thesis would have not been possible without the endless loving support of my mother Angela Doreen Mimler who has endlessly been storming heaven. This work is dedicated to her. 4 Abbreviations and Acronyms BGH Bundesgerichtshof (German Federal High Court) BVerfGG Bundesverfassungsgerichtsgesetz BGBl Bundesgesetzblatt Biotech Directive Directive 98/44/EC of the European Parliament and of the Council of 6 July 1998 on the legal protection of biotechnological inventions of 6 July 1998 on the legal protection of biotechnological inventions CJEU Court of Justice of the European Union CPC Community Patent Convention DSB Dispute Settlement Body ECommHR European Commission on Human Rights ECJ European Court of Justice ECHR European Convention on Human Rights ECtHR European Court of Human Rights EC European Community EEC European Economic Community EFTA European Free Trade Association GATT General Agreement on Trade and Tariffs HRA 1998 Human Rights Act 1998 IP Intellectual Property OECD Organisation for Economic Co-operation and Development PatG Patentgesetz (German Patent Act) 1981 (if not referred to otherwise) R&D Research and Development 5 RG Reichsgericht TEU Treaty on European Union TFEU Treaty on the Functioning of the European Union TRIPS Agreement on Trade-related Aspects of Intellectual Property Rights UK United Kingdom WIPO World Intellectual Property Organisation WTO World Trade Organisation Journals BlfPMZ Blatt für Patent-, Muster- und Zeichenwesen EIPR European Intellectual Property Review GRUR Gewerblicher Rechtsschutz und Urheberrecht GRUR Ausl Gewerblicher Rechtsschutz und Urheberrecht, Ausländischer Teil GRUR Int Gewerblicher Rechtsschutz und Urheberrecht, Internationaler Teil IIC International Review of Intellectual Property and Competition Law IPQ Intellectual Property Quartely OJ Official Journal of the European Union OUP Oxford University Press QMJIP Queen Mary Journal of Intellectual Property ZaöRV Zeitschrift für ausländisches öffentliches Recht und Völkerrecht 6 Table of Legislation International Agreement on Trade-related aspects of Intellectual Property Rights (TRIPS) Berne Convention for the Protection of Literary and Artistic Works Convention on International Civil Aviation (also known as Chicago Convention) Convention Establishing the World Intellectual Property Organization (Signed at Stockholm on July 14, 1967 and as amended on September 28, 1979) European Convention on Human Rights as amended by Protocols Nos. 11 and 14 supplemented by Protocols Nos. 1, 4, 6, 7, 12 and 13 European Patent Convention Universal Declaration of Human Rights (UDHR) International Covenant on Civil and Political Rights (ICCPR) International Covenant on Economic, Social, and Cultural Rights (ICESCR) Paris Convention for the Protection of Industrial Property Patent Cooperation Treaty (PCT) Understanding on Rules and Procedures Governing the Settlement of Disputes (Annex II to the Agreement establishing the World Trade Organisation) Vienna Convention on the law of treaties National and regional legislation Austria Bundesverfassungsgesetz vom 4.3.1964 Canada Patent Act 7 European Union/Communities Directive 2001/83/EC [2001] OJ EC L311/67 on the Community code for medicinal products for human use, substituted by art.1(8) of Directive 2004/27/EC of the European Parliament and of the Council [2004] OJ EC L136/34 Directive 2001/82/EC of the European Parliament and of the Council on the Community code relating to veterinary medicinal products [2001] OJ EC L311/1, substituted by art.1(6) of Directive 2004/28/EC [2004] OJ EC L136/58 Directive 2004/27/EC of the European Parliament and of the Council [2004] OJ EC L136/34, and art.13(6) of Directive 2001/82/EC of the European Parliament and of the Council on the Community code relating to veterinary medicinal products [2001] OJ EC L311/1, substituted by art.1(6) of Directive 2004/28/EC