17 Community Patent Court
| (25259)
5189/04
—
| Draft Council Decision establishing the Community Patent Court and concerning appeals before the Court of First Instance
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| Legal base | Articles 225a and 245 EC; consultation; unanimity
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| Document originated | 23 December 2003
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| Deposited in Parliament | 19 January 2004
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| Department | Trade and Industry
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| Basis of consideration | EM of 9 February 2004
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| Previous Committee Report | None; but see (25260) 5190/04: para 18 below and (23777) 11684/02: HC 152-xl (2001-02), para 6 (30 October 2002)
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| To be discussed in Council | No date set
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| Committee's assessment | Legally and politically important
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| Committee's decision | Cleared
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Background
17.1 The proposal for a Council Regulation establishing the Community
patent has been under discussion in the Council since 2000. The
Community patent is intended to operate alongside patent systems
existing under national law and the European Patent Convention
of 1973. A Community patent under the proposed Regulation would
offer a single unitary right in all the Member States and provide
an alternative route to patent protection within the European
Union.
17.2 At the same time as the proposed Regulation
has been under discussion, consideration has also been given to
the means whereby disputes relating to the Community patent may
be heard and determined. The Treaty of Nice has made new provision
in the EC Treaty (in Article 229a EC) for jurisdiction to be conferred
on the Court of Justice over disputes relating to the application
of measures adopted under the EC Treaty creating Community industrial
property rights.[31]
Further provision has been made (in Article 225a EC) for the
creation of "judicial panels" to hear and determine
certain classes of action at first instance, with an appeal on
a point of law (or also on matters of fact) to the Court of First
Instance.
17.3 On 30 October 2002, we considered a Commission
working document on proposed arrangements under Articles 225a
EC and 229a EC. The Commission proposed that the Council should
exercise the power under Article 229a EC to confer jurisdiction
on the Court of Justice to hear disputes relating to the Community
patent, and that the Council should also exercise the power under
Article 225a EC to create a judicial panel to exercise this jurisdiction
at first instance, with appeals lying to the Court of First Instance.
It was proposed that such a panel would have exclusive jurisdiction
to hear and determine actions for revocation, invalidity and infringement
of the Community patent, as well as having the power to order
provisional measures.
The draft Council Decision
17.4 The proposed draft Council Decision establishes
a "Community Patent Court" as a judicial panel within
the meaning of Article 225a EC and makes provision for the jurisdiction
of the court, its organisation, and its proceedings, including
the question of appeals to the Court of First Instance.
17.5 Article 1 establishes a Community Patent Court
as a judicial panel attached to the Court of First Instance.
The seat of the court is to be at the Court of First Instance.
Although the question was raised in the Commission working paper,
no provision is made for the establishment of regional divisions
of the court in the Member States.
17.6 Article 2 provides for the application of Articles
241, 243, 244 and 256 EC to the Community patent court. A party
to an action before the Community Patent Court may therefore raise
the question of the invalidity of the Community Patent Regulation
before that court in the same way as a party may indirectly challenge
the validity of a Regulation before the Court of First Instance
or the Court of Justice on one of the grounds stated in Article
230(2) EC. The application of Article 243 EC to the Community
Patent Court means that the court may order interim measures.
The application of Articles 244 and 256 EC ensures the enforceability
of orders of the Community Patent Court.
17.7 Article 3 of the draft Council Decision adds
an additional Title (Title VI) to the Protocol on the Statute
of the Court of Justice. (Article 225a(6) EC provides that the
Statute of the Court of Justice applies to a judicial panel, unless
the decision establishing the panel provides otherwise). The
special provisions which are made in relation to the Community
Patent Court concern its composition, organisation and procedure.
Accordingly, it is proposed that the court should consist of
seven members, sitting in chambers of three judges with the assistance
of technical experts, to be known as "Assistant Rapporteurs".
The power of the Community Patent Court to order interim measures
is also to include the power to require evidence to be preserved.
The proceedings are to be conducted in the language of the Member
State of the defendant's domicile, but by request of the parties
and with the consent of the court, any official language of the
Community may be chosen.
17.8 The Protocol on the Statute of the Court of
Justice is also amended by the provision of a right of appeal
from a decision of the Community Patent Court on a point of law
or on a question of fact. An appeal on this latter ground is
limited to a re-evaluation of the facts and evidence submitted
to the Community Patent Court. Fresh evidence may only be submitted
if its submission "could not reasonably have been expected"
during the proceedings at first instance. No provision is made
for an appeal against an order for costs.
17.9 Article 3 of the draft Decision also makes a
number of amendments to the procedure of the Court of First Instance
so as to accommodate appeals from the Community Patent Court.
The number of judges is increased to 18, and provision is made
for a specialised patent chamber of three judges to hear appeals
from the Community Patent Court. The judges of the patent appeal
chamber are to be chosen from candidates "having an established
high level of expertise in patent law … appointed on the
basis of their experience". Member States and the Institutions
of the European Community will have the right to intervene in
appeal proceedings.
The Government's view
17.10 In his Explanatory Memorandum of 9 February
2004 the Parliamentary Under-Secretary of State for Science and
Innovation at the Department of Trade and Industry (Lord Sainsbury
of Turville) explains that the proposed Regulation foresees the
establishment of a centralised and specialist Community jurisdiction
to handle, on an exclusive basis, certain types of litigation
between private parties, in particular claims concerning the infringement
and validity of a Community patent. The Minister further explains
that, although actions concerning the invalidity, infringement
or use of a Community patent will fall within the exclusive jurisdiction,
other matters such as disputes between an employer and employee
relating to patent ownership will remain within the jurisdiction
of the national courts.
17.11 The Minister comments as follows on the policy
implications of the proposal:
"An important contribution to the success of
the Community patent will be the legal certainty it creates.
Jurisdiction is of paramount importance in this respect. In contrast
to the present situation for proceedings relating to national
and European patents, the unitary Community jurisdiction proposed
by the Commission should prevent the possibility of inconsistent
decisions. The Commission recognises that courts considering
the Community patent must comprise the necessary experience and
expertise, exercised in a uniform and consistent manner, to win
the confidence of industry.
"Unlike the proposals in the previous working
document, this document no longer refers to specific regional
chambers. Instead, as per the Common Political Approach of 3
March 2003, the Commission proposes a fully centralised first
instance jurisdiction with no permanent regional chambers. This
underpins the main advantage of the Community patent i.e. a single
Community-wide jurisdictional system.
"The Council will appoint judges for the [Community
Patent Court] following the submission of the names of relevant
candidates by Member States, and with advice from an advisory
committee. Both the judges and members of the advisory committee
are to be selected from those with high levels of legal expertise,
and in the case of the judges this should be patent expertise.
In both cases the numbers are limited to seven. Such a mechanism
would favour the UK's (and some other Member States') views that
the complex nature of patent proceedings requires the judges to
have high levels of patent legal expertise. Other Member States
are concerned that appointments should be made on a regional or
rotational basis. We would also want to make certain, if possible,
that different legal traditions are appropriately represented
on the panels to ensure that their decisions have a high level
of credibility, especially with the courts of Member States which
may deal with identical issues, but at a national level.
"The proposal now specifically includes reference
to interim and evidence-protection measures, which permit the
court to act quickly where there is a danger that evidence may
be destroyed prior to proceedings being formally lodged. These
are counterbalanced by the provision for compensation should the
other measures be revoked. Enforcement of court decisions has
also been strengthened with measures to impose fines on those
who do not comply with enforceable decisions now included."
17.12 The Minister also comments that negotiations
on the Community patent package have not retained all the advantages
of the original Commission proposal for a Community patent, particularly
as far as the language regime is concerned. The Minister states
that this makes the achievement of effective arrangements for
a Community system of jurisdiction even more important for industry
and that "any significant move away from such a system would
further call into question the value of the whole package".
In this regard, the Minister refers to the results of consultation
in which most respondents cited reliable jurisdictional arrangements
for litigating pan-European rights along with low costs for acquiring
and enforcing Community patents as key elements of a successful
Community patent system.
17.13 The Minister adds that the implications of
the proposed system for national courts, including specialist
patent courts, are not yet clear and that much will depend on
the displacement from national patents to Community patents which
could occur if the Community system is more attractive.
Conclusion
17.14 We thank the Minister for his full and helpful
Explanatory Memorandum. We share his assessment that the success
of the Community patent will greatly depend on the efficiency
of the proposed Community Patent Court. We also support his observations
on the need for the judges of the new court to have high levels
of patent expertise, to which we would add the need for judicial,
or at least practical, experience in this field.
17.15 The proposal appears to us to ensure a sound
basis for the new court and we are content to clear the document
from scrutiny.
31 This appears to be the first case in which the Court
of Justice has been given a first instance jurisdiction to determine
disputes between private parties. Back
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