16 European Community Patent
| (a)
(21539)
10786/00
COM(00) 412
(b)
(23777)
11684/02
COM(02) 480
(c)
(24501)
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—
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Draft Regulation on the Community Patent.
Commission working document on the planned Community patent jurisdiction.
Draft Council 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 7 November 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)
(a) and (b) HC 152-xl (2001-02), paragraph 6 (30 October 2002)
(a) and (c) HC 63-xxii (2002-03), paragraph 5 (21 May 2003), HC 63-xxxv (2002-03), paragraph 4 (29 October 2003)
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| To be discussed in Council | 27 November 2003 Competitiveness Council
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| Committee's assessment | Legally and politically important
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| Committee's decision | Cleared
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Background
16.1 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.
16.2 We last considered the most recent version of
the draft Regulation (document (c)) on 29 October 2003 when we
considered the Minister's letter replying to points we raised
in May 2003. These concerned the language regime for filing translations
of the patent claim (under which a Community patent would be deemed
to be void ab initio in circumstances where even one claim
had not been translated into all Community languages), the advantages
of a Community patent over one granted under the EPC designating
all Member States as territories in which the patent is to apply,
and the delay until 2010 for the introduction of a Community patent
jurisdiction at first instance.
16.3 We were grateful to the Minister for his reply
on these points and for the explanation he gave of the latest
stage in the negotiations on this proposal. We noted the Government's
view that where anti-competitive behaviour was being engaged in
the Commission 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 suggested some possible amendments and added that
the interaction between competition law and the Community patent
law system was being considered urgently by the Commission and
Member States' delegations.
16.4 We remained concerned about the provisions of
Article 24a relating to compulsory translations of claims for
a Community patent. We agreed with those who considered that the
penalty of invalidating a Community patent for failure to provide
a translation of every claim in every Community language was too
severe, and we repeated our concern that these provisions would
lead to patents being contingently invalid for up to two years
with resulting legal uncertainty. We also asked the Minister for
an account of how the interaction between competition law and
the Community patent law system would be dealt with.
The Minister's reply
16.5 The Parliamentary Under-Secretary of State for
Science and Innovation at the Department of Industry (Lord Sainsbury)
replies in his letter of 7 November. The Minister makes two main
points concerning translations of patent claims. On the point
that invalidity of the patent was too severe an outcome for failure
to supply translations of the patent claim, the Minister replies
that there are two possible 'saving routes' for the patent holder,
namely of conversion into a patent under the EPC or restitutio
in integrum (i.e. restoration of the patent).
16.6 The Minister explains that under Article 24b(2)
of the draft Regulation the patent holder may opt for the Community
patent to be converted into a patent under the EPC designating
one or more Member States. The Minister adds that the idea behind
this is that if the patent proprietor cannot obtain a translation
into one or more languages then he can 'opt for the Community
patent to be instead a standard (non-unitary) European Patent
for all the states for which any necessary translations can be
obtained'. The Minister further explains that the mechanism for
conversion of the Community patent into a patent under the EPC
will be a matter for the EPC Convention which will need to be
revised to accommodate the Community patent, and that suggestions
for amendment which have been tabled include an amendment to Article
65 of the EPC so as to include the possibility of supplying a
translation of the whole patent text (description and claims)
within three months of exercise of the option to convert in order
to meet national requirements for translations to be filed in
the individual States concerned.
16.7 In relation to the restoration of the patent,
the other 'saving route' mentioned by the Minister, the following
explanation is given:
"The possibility of restitutio in integrum
provided for under Article 122 EPC applies to the non-observance
of any time limit before the European Patent Office, and a number
of Member States have pointed out that it should also apply to
the time limit for filing the compulsory translations of claims
for the Community patent. Article 27a of the draft Regulation
confirms that 'The holder of a Community patent who, despite being
able to demonstrate that he took all due care under the circumstances,
was unable to meet an Office deadline, shall, on request, have
his rights restored if the failure to meet the deadline directly
resulted, by virtue of the provisions of this Regulation, in the
loss of a right or of an avenue of appeal to the Office. The processes
of restitutio in integrum laid down in the Munich convention
(i.e. the EPC) shall apply.' In revising the EPC and its implementing
regulations it will be important to ensure that this situation
is properly provided for."
16.8 The Minister's second main point on translations
concerns the period of two years during which a Community patent
may remain contingently invalid if, by the end of that period,
translations of the claims have not been filed in all Community
languages. The Minister explains that under Article 65 of the
EPC there is a period of at least three months in most States
before it is known whether the European patent is validated for
the State (i.e. on filing of the full translation with the required
form and fee). Given these provisions, the Minister explains that
three months is seen as a lower limit for the time period for
filing the translations required for the Community patent. The
Minister makes this further comment:
"Given that on the expiry of the time limit
for filing translations the holder of a Community patent ... may
opt for conversion to a European patent, the likelihood of there
being no patent coverage at all could well be small, apart from
in those States where there is no market or manufacturing capacity
for the patented product. The main uncertainty for competitors
would be whether they might be sued in the Community court or
a national court.
"Two years is currently the maximum suggested
for the period under discussion and it is not clear that there
will be consensus on a period that long. Certainly if there is
agreement on a further three months allowed for filing translations
required on conversion, as suggested above, this will affect the
debate."
16.9 In relation to the interaction between competition
law and the Community patent system, the Minister comments that
discussions continue in COREPER. The Minister adds that the latest
Presidency proposal is for wording in a recital along the following
lines:
"Since [the] Regulation does not apply to situations
covered by Articles 81 and 82 of the Treaty, it does not affect
the powers of the Commission or, where appropriate, national authorities,
under those provisions, including in respect of the grant of compulsory
licences to correct anti-competitive practices".
16.10 The Minister explains that the Presidency proposal
also involves deletion of Article 21(3),[27]
but not of Article 22(2),[28]
which in the Minister's view would seem to prevent Member States'
authorities from ordering the grant of compulsory licences. The
Minister adds that there are other aspects of national competition
law which might not be covered by the proposal, but that these
points are currently under negotiation and may have to be resolved
at the Council itself.
Conclusion
16.11 We are grateful to the Minister for his
comprehensive reply to the points we have raised. We note that
the option of conversion of a Community patent to a patent under
the European Patent Convention and the possibility of restoration
of the Community patent will alleviate to a considerable extent
the apparent strictness of the rule requiring translations of
patent claims to be filed in all Community languages as a condition
of validity of the Community patent.
16.12 We also acknowledge that the time period
within which translations of patent claims must be filed is a
matter of achieving the right balance between a period which is
impracticably short for obtaining the required translations on
the one hand, and a period which is too long for a patent to be
contingently invalid on the other. The suggestion of a further
three-month period for filing translations on conversion of a
Community patent to one under the European Patent Convention may
well be a reasonable and practical solution.
16.13 We note the Minister's explanation of the
interaction between competition law and the Community patent system.
In this regard, we note that the matter may well fall to be resolved
at the Council itself, but we agree with the Minister that national
authorities should remain free to grant compulsory licences where
necessary to remedy an anti-competitive situation.
16.14 We have no further questions to the Minister.
In view of the imminence of the Council, we are content to clear
the documents so that the Minister may signify his agreement to
solutions along the lines he has outlined to us.
27 "When it is necessary to remedy a practice
determined after judicial or administrative process to be anti-competitive,
the Commission or the Community Patent Court may authorise the
exploitation of a Community patent." Back
28
"The Member States may not grant compulsory licences in
respect of a Community patent other than as set out in this Regulation". Back
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