Select Committee on European Scrutiny Fortieth Report


COM(02) 412

COM(02) 480

Draft Council Regulation on the Community Patent.

Commission working document on the planned Community patent jurisdiction.

Legal base:(a) Article 308; consultation; unanimity
(b) —
Document originated:(b) 30 August 2002
Deposited in Parliament: (b) 17 September 2002
Department: Trade and Industry
Basis of consideration: (a) Minister's letter of 31 January 2002
(b) EM of 14 October 2002
Previous Committee Report: (a) HC 23-xxviii (1999-2000), paragraph 2 (1 November 2000), HC 152-xix (2001-02), paragraph 4 (13 February 2002)
To be discussed in Council: No date set
Committee's assessment:Legally and politically important
Committee's decision:Not cleared; further information requested


  6.1  We considered the draft Council Regulation on the Community patent (document (a)) on 13 February 2002 when we noted that, as an alternative to the patents which may be obtained in each of the Member States or by an application to the European Patent Office (EPO), the Community patent would provide a single unitary right in all the Member States. The proposed Community patent would offer an alternative route for obtaining patent protection, which would operate alongside the national and EPO systems.

  6.2  We noted that negotiations were continuing on an acceptable language regime for the Community patent system, with some Member States, including the United Kingdom, content to use the existing three languages (English, French and German) of the EPO, but with other Member States pressing for all the official languages of EC Member States to be used. In relation to jurisdiction, we noted that the draft Regulation envisaged a centralised and specialist Community jurisdiction which would consider, to the exclusion of other courts, certain kinds of patent litigation between private parties. We also noted that most Member States wished to see a Community-wide jurisdiction operating at first instance, but that some other Member States (notably Germany and France) wished the national courts to have jurisdiction at first instance, with the Community jurisdiction applying only at second instance or on appeal.

  6.3  The Treaty of Nice contains provisions amending the EC Treaty by inserting a new Article 225a EC which permits the Council, acting unanimously and after consulting the European Parliament, to create judicial panels to hear and determine at first instance certain classes of action or proceeding brought in specific areas. The Treaty of Nice also inserts a new Article 229a EC which permits the Council, using the same procedure as in Article 225a, to adopt provisions to confer jurisdiction on the Court of Justice in disputes relating to the applications of acts creating Community industrial property rights.

  6.4  In anticipation of the entry into force of those provisions, the Commission has prepared a Working Document (document (b))setting out its thinking on the question of jurisdiction over the Community patent.

The Commission Working Document

  6.5  The Commission Working Document (document (b)) is not a formal proposal, since the legal basis (Articles 225a and 229a EC) is not available until the Nice Treaty enters into force. The paper sets out the 'elements of a Community Patent jurisdiction' comprising three parts. The first is concerned with conferring jurisdiction on the Court of Justice to determine disputes between private parties, under the powers conferred by Article 229aEC. The second part deals with establishing a judicial panel, attached to the Court of First Instance, to exercise the above jurisdiction. The final part deals with the changes which are necessary to the Statute of the Court of Justice to allow for a special appeal chamber to be established as part of the Court of First Instance.

  6.6  The basic elements of the proposed system for Community patent jurisdiction may summarised as follows. First, the paper suggests the creation of a centralised and specialised Community patent court as a 'judicial panel' as provided for in Article 225aEC, with appeals lying to the Court of First Instance. This patent court would have exclusive jurisdiction, at first and second instance, to determine actions for revocation, invalidity and infringement, as well as having power to grant provisional measures. Secondly, the 'judicial panel' would consist of legal and technical members appointed by the Council. The Commission paper envisages the panel sitting in two sections, each consisting of two legal members and one technical member[9], and that the panel might deal with around 120-150 cases a year. Thirdly, the judicial panel would have the same seat as the Court of First Instance, but with the possibility of regional chambers should the workload so require.

The Government's view

  6.7  In her Explanatory Memorandum of 14 October 2002 the Parliamentary Under-Secretary of State for Competition, Consumers and Markets at the Department of Trade and Industry (Miss Melanie Johnson) explains that a unitary patent will offer a further route for acquiring patent protection in Europe and will assist UK companies to develop in the single market. The Minister adds that the unitary nature of the Community patent will reduce the administrative burden for business and its establishment alongside existing patent protection will increase choice and allow greater flexibility of use by companies for their patent portfolios.

  6.8  The Minister further explains that the question of jurisdiction is of paramount importance to the legal certainty sought by the Community patent system, and comments that the unitary Community jurisdiction envisaged in the Commission's working document should prevent the possibility of inconsistent decisions. The Minister notes that the Commission working paper envisages the creation of regional chambers but comments that it will be important to ensure that arrangements for such chambers do not foster a divergence of approach which would undermine the single Community-wide jurisdictional system, which the Minister regards as the main advantage of the Community patent.

  6.9  The Minister notes that the Commission working paper does not propose that the Community judicial panel should have jurisdiction over compulsory licensing of Community patents, but points to a view that certain compulsory licensing situations, particularly where the scope of the patent is to be interpreted, should be dealt with by the panel.

  6.10  The Minister remarks that the implications of the proposed system for existing national courts, including specialist patent courts, are not clear at this stage and that much will depend on the degree to which the Community patent is seen as more attractive than the national or European patent. The Minister explains that there have been extensive consultations on the draft patent Regulation, and that consultation on the detail of the Commission's working document has begun and will continue as the negotiations progress. The Minister informs us that most respondents have cited arrangements for jurisdiction which command the confidence of UK industry, together with low costs for acquiring and enforcing Community patents, as the key elements of a successful scheme.


  6.11  We thank the Minister for her helpful Explanatory Memorandum. We note that the Commission Working Document is not a formal proposal for legislation, but that it is nevertheless likely to establish the broad outlines of jurisdictional arrangements for asserting rights under the Community patent.

  6.12  Whilst we generally welcome the ideas expressed in the document, we ask the Minister for an account, in due course, of the views of the persons she has consulted, particularly on the question of conferring a compulsory licensing jurisdiction on the envisaged judicial panel. We shall hold document (b) under scrutiny pending the Minister's reply.

  6.13  With regard to document (a) we shall continue to hold this under scrutiny pending deposit of a revised version of the draft Council Regulation together with an Explanatory Memorandum.

9  Article 225a EC provides that the members of the panel must be persons 'who possess the ability required for appointment to judicial office'. It would therefore appear that the technical member must also be legally qualified. Back

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