EUROPEAN COMMUNITY PATENT
(a)
(19882)
5944/99
COM(99) 42
(b)
(21539)
10786/00
COM(00) 412
|
Commission Communication: Promoting Innovation Through Patents:
The Follow-Up to the Green Paper on the Community Patent and the
Patent System in Europe.
Draft Regulation on the Community patent.
|
| Legal base:
| (a) —
(b) Article 308; consultation; unanimity
|
| |
| Document originated:
| (b) 1 August 2000 |
| Forwarded to the Council:
| (b) 2 August 2000 |
| Deposited in Parliament:
| (b) 5 September 2000 |
| Department: |
Trade and Industry |
| Basis of consideration:
| (a) Minister's letter of 24 July 2000
(b) EM of 25 September 2000
|
| Previous Committee Reports:
| (a) HC 34-xvii (1998-99), paragraph 6 (28 April 1999) and HC 23-vi (1999-2000), paragraph 1 (26 January 2000)
(b) None
|
| To be discussed in Council:
| No date set |
| Committee's assessment:
| Legally and politically important
|
| Committee's decision:
| (a) Cleared
(b) Not cleared; further information requested
|
The Commission Communication
2.1 The European Commission set out in this Communication
the measures it proposed should be taken, both legislative and
non-legislative, to make the patent system in Europe more efficient,
more accessible and less expensive. We considered it on 28 April
1999, and again on 26 January 2000[14],
when we asked the Minister to inform us of progress within six
months. He says, in a letter dated 24 July, that the Commission
has adopted the proposal in document (b) but he is not aware of
any further initiatives relating to the other issues raised in
the Communication.
The draft Regulation
— Background
2.2 The Minister for Competition and Consumer
Affairs at the Department of Trade and Industry (Dr Howells) explains,
in his Explanatory Memorandum of 25 September, that at present,
patents for each country in Europe are obtained by separate applications
to individual national offices, or by an application to the European
Patent Office (EPO) established under the European Patent Organisation.
The EPO was created under the Munich Convention in 1973 and the
current members are the 15 EU Member States, Cyprus, Liechtenstein,
Monaco and Switzerland. Turkey is due to become a member in November
2000.
2.3 A single application to the EPO, which is
based in Munich, provides, when granted, patent protection for
each country chosen by the applicant. Each patent granted by the
EPO takes effect as if it had been granted by each of the national
authorities in the Munich Convention countries designated by the
applicant. In contrast to the bundle of individual, national rights
available through the EPO, a Community patent would offer a single,
unitary right across all 15 EU Member States which, if successfully
challenged, would also fall across all 15. The proposed Community
Patent would offer an alternative route for patent protection
in Europe, alongside the existing national and EPO systems.
— The proposed Regulation
2.4 The Minister describes the basic elements
of the Regulation as follows:
"Applications for Community
patents will be administered by the EPO, who will grant Community-wide
rights. The Regulation does not affect the current processes of
the EPO up to patent grant. Once granted, Community patents are
subject to this Regulation; prior to grant, the applicable law
is the European Patent Convention.
"Applications may be made and processed in any
of English, French or German. Translations into other languages
will be limited to translating patent claims (which define the
scope of the patent rights) into the others of English, French
or German[15]. Translations
of the complete technical descriptions will not be required.
"A specialised Community intellectual property
court acting at first and second instance will have exclusive
competence to deal with actions for revocation, invalidity and
infringement as well as declarations of non-infringement, actions
relating to use or prior user rights and requests for limitation.
It will grant provisional measures, sanctions and remedies.
"National courts retain competence for other
matters within their territory, including rights to employee inventions
which are subject to the law of the state of the employee's principal
activity, and for criminal actions. The Brussels Convention on
Jurisdiction and Enforcement of Judgments in Civil and Commercial
Matters (1968) applies."
2.5 The maximum duration of the Community patent
is set at 20 years, as with national and EPO patents. Article
10 establishes that rights are exhausted after the product covered
by the patent has been placed on the market in the Community by
the patent owner or with his consent.
2.6 The Minister summarises the Articles, including
the following:
"Articles 21 and
22 allow the European Commission to grant compulsory licences
... These may be granted in times of crisis or to avoid abuses
of patent rights, when a patent is not being exploited or when
it prevents the exploitation of another patented invention. Member
States are not to be permitted to grant licences of right or compulsory
licences in respect of Community patents.
"Articles 28 and 29 deal with the grounds
for and effects of a Community patent being declared invalid.
The grounds include where the subject matter of the patent was
not patentable according to the European Patent Convention, for
example if the invention is not new or inventive.
"Articles 30 to 45 relate to actions
concerning the validity, infringement and use of the Community
patent. Article 30 provides that invalidity or infringement
proceedings come under the exclusive jurisdiction of the Community
intellectual property court, which is yet to be established. Article
39 allows for appeals to be made to a Chamber of Appeal of
the Community intellectual property court. Article 40 refers
to the possibility of the European Commission bringing invalidity
proceedings or intervening in any proceedings before the Community
intellectual property court. Penalties and damages are dealt with
in Articles 43 and 44. Article 45 provides a five
year period of limitation for some of the actions in Articles
30 to 44.
"Articles 46 to 52 concern other actions
relating to the Community patent. Article 46 leaves jurisdiction
for all actions not covered by the jurisdiction of the Community
intellectual property court in Articles 30 to 45 to national courts.
Article 47 states that the 1968 Brussels Convention on
Jurisdiction and Enforcement of Judgments in Civil and Commercial
Matters applies to actions before national courts. Article
51 requires a national court to declare that it has no jurisdiction
when hearing an action referred to in Article 30. According to
Article 52, when dealing with actions relating to Community
patents, national courts shall apply the rules which apply to
the same actions relating to national patents.
"Article 53 establishes that provisions
of the Regulation relating to jurisdiction and judicial procedure
are without prejudice to national arbitration rules. However,
it states that a Community patent may not be declared invalid
in arbitration proceedings.
"Articles 54 and 55 prohibit the simultaneous
protection of the same invention by both Community patent and
national patent or national utility model."
— Impact on UK law
2.7 Some minor revision only would need to be
made to UK law to give effect to the Regulation, according to
the Minister. For example, he says, revisions would need to be
made to the Patents Act 1977 to implement the provisions dealing
with actions in which Member States' courts have jurisdiction
(Articles 46 to 53). Article 54, prohibiting simultaneous protection
of the same invention by both national patent and Community patent
would also require some amendments to the Patents Act 1977. The
provisions of the Patents Act 1977 dealing with the use of patented
inventions for service of the Crown may need to be amended, he
says. Amendments to the Civil Procedure Rules are also likely
to be needed.
The Government's view
2.8 The Minister comments:
"A unitary patent will
offer a further route for acquiring patent protection in Europe
and will assist UK companies to develop into the Single Market.
The unitary nature of the right will reduce the administrative
burden for business. The establishment of a Community patent alongside
existing routes for patent protection will increase choice and
allow greater flexibility of use by companies for their patent
portfolios.
"The success of the Community patent will depend
on the legal certainty it creates. Jurisdiction is an important
element. Proceedings relating to, for example, the infringement,
invalidity and revocation of Community patents will not be within
the jurisdiction of national courts, in contrast to the present
situation for similar proceedings relating to national and European
patents. Courts considering the Community patent must comprise
the necessary experience and expertise to win the confidence of
industry.
"Proposals for limiting translations will reduce
costs significantly and contribute to English becoming the common
language of patents in Europe. These developments will be welcome
to UK industry.
"Implications for existing European and national
routes of acquiring patents in Europe, including through the United
Kingdom Patent Office, are not clear at this stage".
— Consultation
2.9 Extensive consultations have taken place
and the Minister says that:
"Jurisdictional arrangements
for litigating Pan-European rights which command the confidence
of UK industry and low costs for acquiring and enforcing Community
patents are cited as key elements of a successful system".
— Financial implications
2.10 There is no obvious impact on the UK exchequer.
It is not yet clear what the impact might be on revenue flows
to the Patent Office and of any costs incurred in setting up the
Community intellectual property court.
— Timetable
2.11 The Minister comments that the Lisbon European
Council's target date of the end of 2001, by which time it wanted
a Community patent to be available, is ambitious.
Conclusion
2.12 We recognise the value of a Community
patent and that there is firm support for it from the business
community. We therefore welcome this proposal in principle.
2.13 One of the main problems, the cost of
translations, has been tackled in this draft. The Minister appears
to assume majority support from the other Member States for the
solution offered. Under Article 44 (3), in an action for damages,
an alleged infringer may, in certain circumstances, plead ignorance
if a translation of the patent has not been made public in the
Member State in which he has his residence or business.
2.14 The other main problem, that the patent
should provide legal certainty, is acknowledged by the Minister
as key to its success. The proposal appears to offer a workable
system for dealing with patent litigation, but negotiations are
just beginning in the Working Group and we ask the Minister to
keep us informed of developments. We also ask him to inform us
of the reactions to it of industry and the legal profession in
this country.
2.15 Meanwhile, we shall not clear document
(b). However, we now clear the Communication in document (a).
Some of the issues raised relate to document (b) and we shall
explore the others, where necessary, when they surface in further
documents.
14 (19982) 5944/99; see headnotes to this paragraph. Back
15 That
is, for instance, into French or German if the claim is made in
English. Back
| 
