18 Jurisdiction of the Court of Justice
over disputes relating to the Community patent
| (25260)
5190/04
COM(03) 827
| Draft Council Decision conferring jurisdiction on the Court of Justice in disputes relating to the Community patent
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| Legal base | Article 229a 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 (23777) 11684/02; HC 152-xl (2001-02), para 6 (30 October 2002) and (21539) 10786/00; HC 63 xxxvii (2002-03), para 16 (12 November 2003)
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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
18.1 The proposal for a Council Regulation on the Community patent
has been under discussion in the Council since 2000. At present,
patents for each country in Europe are obtained by separate application
to individual national patent 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 Council Regulation would offer a single unitary
right in all the Member States and, if declared invalid, would
be equally invalidated in all the Member States. The proposed
Community patent would offer an alternative route for patent protection
in the European Union and would operate alongside existing national
and EPO patent systems.
18.2 On 30 October 2003 we considered a Commission
working document on the jurisdictional arrangements which might
be made under the provisions of Article 225a and 229aEC as introduced
by the Treaty of Nice. Article 229a EC permits the Council, acting
unanimously on a proposal from the Commission, to adopt provisions
to confer jurisdiction on the Court of Justice in disputes relating
to acts adopted under the EC Treaty which create Community industrial
property rights. Article 225aEC permits the Council, again acting
unanimously and on a proposal from the Commission, to create judicial
panels to hear and determine at first instance certain classes
of action or proceedings.
18.3 The Commission document set out the elements
of a Community patent jurisdiction. It suggested that the Council
should exercise the power under Article 229aEC to confer jurisdiction
on the Court of Justice to hear and determine disputes between
private parties relating to the Community patent. This jurisdiction
would be exercised by a centralised and specialised Community
patent court as a "judicial panel" within the meaning
of 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 of the Community patent, as well as having powers
to grant provisional measures.
The draft Council Decision
18.4 The proposed draft Council Decision confers
an exclusive jurisdiction on the Court of Justice over disputes
relating to infringements or validity of a Community patent, use
of the invention after publication of the Community patent application
or rights based on prior use, as well as over "Community
supplementary protection certificates". In addition, the
Court of Justice is to have exclusive jurisdiction over interim
measures and measures to preserve evidence in relation to such
disputes, and over awards of damages and the imposition of penalty
payments for failure to comply with orders of the Court.
18.5 The draft Council Decision also contains transitional
provisions to preserve the jurisdiction of the national court
where the latter is already seised of a dispute relating to a
Community patent at the time when the Council Decision comes into
force.
18.6 Article 3 of the draft Decision sets out the
recommendation of the Council to the Member States to adopt the
above provisions in accordance with their respective constitutional
requirements. The Decision will enter into force following the
notification by all Member States of their acceptance of the Decision.
The Government's view
18.7 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 proposal is concerned only with
conferring jurisdiction on the Court of Justice in relation to
the Community patent. The Minister comments 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,
since 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.
18.8 The Minister adds that the question of jurisdiction
is of paramount importance to creating the legal certainty on
which the success of the Community patent will depend, and comments
as follows:
"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.
"Regarding the extent of Community jurisdiction,
the Commission now lists specific proceedings for which it has
jurisdiction rather than merely referring back to Article 30 of
the proposed Community patent regulation. Additionally, it proposes
that the Court has jurisdiction over Community supplementary protection
certificates (the Commission will bring forward proposals for
these in due course); interim and evidence-protection measures,
and now includes reference to compensation (as well as damages).
"The proposals now cover transitional provisions.
Those disputes of which a national court has been seised prior
to the conferral of jurisdiction on the Court of Justice will
not be affected by the conferral. This ensures that there will
be clarity and consistency of handling during the period when
the Community patent regulation is in force, but the necessary
arrangements for dealing with disputes at the Community Patent
Court are not in place."
18.9 The Minister notes that the proposals do not
give the Court jurisdiction over compulsory licensing of patents
which he describes as "contrary to the proposed Community
patent regulation", but that the Government will work with
its European partners "to ensure that the proposed regulation
and the jurisdiction arrangements are consistent with each other".
Referring to consultations which have been conducted on the Community
patent regulation, the Minister points out that most respondents
regarded jurisdictional arrangements for litigating pan-European
rights which commanded the confidence of UK industry, along with
low costs for acquiring and enforcing Community patents, as key
elements in a successful system.
Conclusion
18.10 We agree with the Minister's assessment
of the importance of satisfactory arrangements for jurisdiction
in relation to the Community patent. The proposals give effect
to the changes which were foreseen in that regard by adoption
of Article 229a EC in the Treaty of Nice.
18.11 In the light of the Minister's explanation,
we are content to clear the document from scrutiny.
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