4 European Community Patent
| (a)
(21539)
10786/00
COM(00) 412
(b)
(24501)
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Draft Regulation on the Community Patent.
Draft Regulation on the Community Patent.
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| Legal base | Article 308 EC; consultation; unanimity
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| Department | Trade and Industry
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| Basis of consideration | Minister's letter of 21 October 2003
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| Previous Committee Report | (a) HC 23-xxviii (1999-2000), paragraph 2 (1 November 2000), HC 152-xix (2001-02), paragraph 4 (13 February 2002)
(Both) HC 63-xxii (2002-03), paragraph 5 (21 May 2003)
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| To be discussed in Council | 11 November 2003 Competitiveness Council
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| Committee's assessment | Legally and politically important
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| Committee's decision | Not cleared; further information requested
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Background
4.1 The previous Committee considered the draft Community Patent
Regulation (document (a)) on 1 November 2000, when negotiations
on the proposal had just begun. It noted that patents for each
country in Europe were obtained by separate applications to individual
national offices, or by an application to the European Patent
Office (EPO), established under the European Patent Convention
of 1973 (EPC) and based in Munich. A Community patent under the
envisaged Regulation would offer a single unitary right in all
Member States and, if declared invalid, would equally be invalidated
in all Member States. The proposed Community Patent would offer
an alternative route for patent protection in Europe, and would
operate alongside the existing national and EPO patent systems.
4.2 We considered the draft Regulation (document
(a)) on 13 February 2003. We noted that discussion of the proposal
had concentrated on the language regime for applications, the
role of national patent offices and the question of jurisdiction
for national and Community courts. On 21 May 2003 we considered
in some detail the amendments which had been made to reach the
common approach agreed by the Council on 3 March 2003 (document
(b)). We drew attention to the potentially burdensome nature of
the envisaged language regime. We also questioned the practicality
of the provisions of Articles 24a and 24b, which required an applicant
who had been granted a patent to submit within two years a translation
of the patent claims into each of the official languages of the
Community, failing which the Community patent was to be 'deemed
not to have taken effect'. This appeared to us to introduce a
type of contingent invalidity of the Community patent for as long
as two years, and we asked the Minister for her views on whether
this was consistent with principles of legal certainty.
4.3 We also asked the Minister to explain more clearly
what advantage was to be derived from a Community patent as compared
with a patent under the EPC in which the applicant designated
all Member States as the territory in which the patent is to apply.
We also asked the Minister to inform us more fully of where negotiations
now stand on this proposal, notably in relation to the question
of a first instance Community jurisdiction for patent disputes
and the possibility of a delay until 2010 for the introduction
of such a jurisdiction.
The Minister's reply
4.4 In his letter of 21 October 2003 the Parliamentary
Under- Secretary of State for Science and Innovation (Lord Sainsbury
of Turville) addresses our questions and provides further information
on the progress of negotiations, together with a copy of comments
made by the Chartered Institute of Patent Agents (CIPA) and the
Trade Marks Patents and Designs Federation (TMPDF). We note from
these that our concerns over the language regime are shared by
both bodies, with the latter stating that the penalty that the
Community patent will be deemed to be void ab initio in
circumstances where even one claim has not been translated into
all Community languages is 'far too severe' and that restitution
and correction must be allowed even if the deadline for translations
has passed.
4.5 In relation to the language regime, the Minister
explains that the period within which an applicant who has been
granted a Community patent must submit a translation of the patent
claim in all Community languages is currently under discussion.
The Minister says that some are arguing for a period of three
months (as is currently provided for under the EPC) whilst others
(who would prefer no translations to be required) are pressing
for two years. The Minister summarises the rival contentions as
follows:
"it can be argued that a short time for filing
translations makes it more difficult to ensure their accuracy,
especially given the number of translations involved. The key
issues are what effect the provision of translations should have
on [the] enforcement of the patent in relation to injunctions
and damages.
"While the grant of the patent does put third
parties on notice that a patent exists, and most delegations agree
that its scope should be defined by the text as granted by the
European Patent Office, there may be a need to provide third parties
with some protection in the event of an inaccurate or misleading
translation, and during the period when translations have not
been filed. A package balancing length of the time period with
the legal effects may be the way forward, and the Commission has
undertaken to draft a proposal. Other considerations affecting
the time period include the time allowed to file oppositions to
a patent before the European Patent Office (currently nine months
from grant), and the desire for conversion to be available from
Community patents to European patents for individual Member States,
especially if some of the translations cannot be obtained in time."
4.6 In response to our question about the advantages
of a Community patent over one granted under the EPC which would
designate all Member States as territories in which the patent
is to apply, the Minister replies that patent holders will make
their choice according to the value of the invention, the market
coverage required, and their own assessment of the benefits of
one or other route. The Minister adds that the choice between
a Community patent and one under the EPC does not have to be made
until the time of grant and that conversion is still possible
after grant. The Minister also provides a table showing a comparison
between the two types of patent. In relation to languages, for
example, a Community patent requires translations into all Community
languages of all claims, whereas an application under the EPC
requires a translation of the whole patent (i.e. description and
claims) to be filed in the official language of each state in
which protection is claimed. In relation to jurisdiction over
disputes, the Community patent system would provide for one court,
a Community patent court, to hear cases across the European Community,
whereas under the EPC a number of national courts would have jurisdiction.
A further difference is that fees for renewal are likely to be
lower for the Community patent than the aggregate of fees to be
paid in each EPC state in which protection is claimed.
4.7 In relation to the delay until 2010 for the introduction
of a Community patent jurisdiction at first instance, the Minister
comments that the common political approach reached by the Council
on 3 March 2003 requires the Community court to be established
at the latest by 2010. The Minister adds that this takes into
account the need to agree new instruments conferring jurisdiction
on the Court of Justice, and for their adoption at national level.
The Minister also states that revision of the EPC and national
ratification of those revisions are required before Community
patents can be processed at the European Patent Office and that
this is unlikely to be completed before 2005/6, so that there
may well be few Community patent disputes to be considered by
the courts during the transitional period before the Community
patent court is in operation.
4.8 The Minister has also provided us with a copy
of the most recent consolidated working text of the draft Regulation
and has drawn our attention to a number of its provisions. As
before, Article 1 provides that a Community patent to which the
Regulation applies is a patent granted by the European Patent
Office under the EPC where the application designates the Community
as the territory in respect of which the patent is sought. The
Minister explains that Article 2 will be amended to reflect the
'clear understanding' that the Regulation and the EPC will both
apply to the Community patent.
4.9 The Minister explains that provision has been
made in Article 9a for government use of patented inventions for
defence and security purposes. The provision permits the application
to Community patents of national law on patent use by governments,
but 'only to the extent that the use is necessary for essential
defence or national security'. The Minister adds that the question
of whether the use of patents by publicly funded healthcare services
should be addressed under this Article or under Article 21 (compulsory
licences) is still under discussion.
4.10 In relation to the provisions on compulsory
licences (Articles 21 and 22), the Minister explains that there
is a general preference by Member States and interested circles
that the grant of such licences should be a matter for the Community
patent court. (Such licences would be granted in the case of a
failure to exploit the patent on reasonable terms, to permit the
use of a dependent patent,[8]
to remedy an anti-competitive practice, or in cases of crisis
or other situations of extreme urgency). The Minister states
that in the case of anti-competitive behaviour the Government
believes that the Commission and the competent authorities of
the Member States ought to have a role so that their existing
powers to order remedies under competition law might also apply
to the Community patent. The Minister considers that this could
be achieved by amending Article 21(3) to refer to the Commission
and the competent authorities of the Member States, including
their courts. (At present, the text refers to the Commission or
the Community patent court). As an alternative, the Minister
suggests that the paragraph might be deleted and wording inserted
in Article 2 to make clear that the Regulation does not exclude
the application of competition law by the competent authorities
(including the Commission). The Minister adds that the interaction
between the competition law regime and the Community patent law
system 'is being considered urgently by the Commission and Member
States' delegations'.
4.11 The Minister also explains that the current
version of Article 31(3) of the draft Regulation requires the
Community patent court to stay any proceedings for invalidity
if opposition proceedings are pending before the European Patent
Office. The Minister adds that it is generally agreed that the
court should have a discretion to stay proceedings, and that the
matter is best dealt with in the context of separate proposals
on the court's jurisdiction and procedure.
Conclusion
4.12 We are grateful to the Minister for his explanations
of the latest stage in these negotiations, and for answering the
points we raised.
4.13 We remain concerned about the provisions
of Article 24a relating to compulsory translations of claims for
a Community patent. We agree with the Trade Marks Patents
and Designs Federation that the penalty of invalidating a Community
patent for failure to provide a translation of every claim in
every Community language is too severe, and we remain concerned
that these provisions would lead to patents being contingently
invalid for up to two years with resulting legal uncertainty.
4.14 We therefore welcome the Minister's statement
that the Commission will be producing revised proposals on this
point, and we shall look forward to an account by the Minister
of how the problems we identified have been dealt with. We
also look forward to an account by the Minister of the consideration
being given to the interaction between competition law and the
Community patent law system.
4.15 We shall continue to hold the documents under
scrutiny pending receipt of the further information requested.
8 i.e. a second patent which cannot be exploited without
infringing the first patent. Back
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