Documents considered by the Committee on 9 February 2011 - European Scrutiny Committee Contents

4   Intellectual property



COM(10) 790

Draft Council Decision authorising enhanced cooperation in the area of the creation of unitary patent protection

Legal baseArticle 329(1) TFEU; unanimity; consent
Document originated14 December 2010
Deposited in Parliament21 December 2010
DepartmentBusiness, Innovation and Skills
Basis of considerationEM of 7 January 2011
Previous Committee ReportNone; but see (31773) 11805/10: HC 428-ii (2010-11), chapter 2 (15 September 2010); and (31064) 13706/09: HC 5-i (2009-10), chapter 6 (19 November 2009)
To be discussed in Council10 March 2011
Committee's assessmentLegally important
Committee's decisionDo not clear; further information requested


4.1  Currently, the European Patent Office (EPO) is able to search, examine and grant patents in a single procedure for up to 37 European States, with the applicant choosing which, and how many, of the 37 states they wish to have patents for. Once granted these are treated as a bundle of separate national patents (commonly referred to as "European patents") which may require translation into the respective language of each state designated, as well as separate renewal and litigation procedures. The EPO is not an EU body, it being established by, and granting patents under, an intergovernmental agreement, the European Patent Convention (EPC).

4.2  Unlike the Community Trade Mark and Community Design systems, there is no EU-wide unitary system for patent protection, nor is there any system of mutual recognition: a patent granted for any one State in the EU is only applicable across the territory of that State. In March 2000 it was agreed under the Lisbon Agenda that there was a need for a unitary patent which provides protection across the entire EU, this then being referred to as a Community patent to distinguish it from existing European patents. Community patents would also be granted by the EPO, and would exist alongside European patents as well as national patents granted by national patent authorities of Member States. A Community patent would therefore give applicants a third option for obtaining patent protection within the EU which may be simpler and more efficient than using European or national patents when patenting across Europe.

4.3  Discussions on a Regulation for a Community patent stalled in 2004, most notably due to disagreement on patent languages and translations. However, following the Commission's 2007 Communication "Enhancing the Patent System in Europe," discussions improved, and in December 2009 political agreement was reached in the European Council on an EU patent Regulation[40] (following the entry into force of the Lisbon Treaty there is no longer a 'European Community' and so the Community patent was renamed the 'EU patent'). The Regulation text on which Agreement was reached does not, however, solve the languages and translations issue, and specifies that this will be provided for in separate legislation. This is consistent with the second paragraph of Article 118 TFEU, which requires the EU to establish "language arrangements for intellectual property rights" in the EU on the basis of a unanimous decision of the Council after consulting the European Parliament.

4.4  Translations represent a significant proportion of the cost of patenting across Europe, and therefore agreeing a business-friendly language solution is important. Translation of the patent claims into all EU languages (then 12, now 23) was rejected by industry in 2003 as too expensive, whilst translation into only the working languages of the EPO (English, French and German) was rejected by a significant minority of Member States in 2009 as discriminatory.

4.5  The translation requirements for "European patents" (currently granted by the EPO) were reduced to a certain extent with the entry into force of the London Agreement on 1 May 2008. European patents must be filed in English, French or German, with around 80% being in English. The London Agreement is an optional scheme which, at present, has been ratified by 14 EPC states, including ten EU Member States. In short, this means that no translation of a European patent description is required in order for the European patent to come into force in France, Germany, Latvia, Lithuania, Luxembourg, Slovenia, and the UK, Furthermore, under the Agreement, Denmark, Netherlands and Sweden simply require the description to be in English rather than translated into their official language. For all European patents the claims must still be provided in English, French and German, whilst for validation in the 17 EU Member States which have not ratified the London Agreement, translation of the description and claims into an official language of each country is still required. The London Agreement is open for ratification by all Member States and as such it is possible that the translation requirements for European patents may be further reduced.

4.6  Accordingly, on 30 June 2010 the Commission adopted a proposal for a Council Regulation on the translation arrangements for the EU patent. This proposal echoed the 2009 three-language arrangement, but with additional elements relating to the availability of quality machine translations and the reimbursement of translation costs for applicants from EU states that have an official language which is not English, French or German. Despite compromises being offered the required unanimity was not achieved at either the 11 October or 10 November Competitiveness Council. Ultimately, at the 10 November Council, Spain, Italy and Poland could not agree to the compromise being offered. It was therefore concluded by the Belgian Presidency that the required unanimity could not be achieved within a reasonable timescale.

The document

4.7  In advance of the 10 December Competitiveness Council, 11 Member States, including the UK, wrote to the Commission to request that they make a proposal to use enhanced cooperation in an attempt to agree a language regime for the translation of EU patents. Denmark, Estonia, Finland, France, Germany, Lithuania, Luxembourg, the Netherlands, Poland, Slovenia, Sweden and the United Kingdom are listed as requesting States on the draft Council Decision.

4.8  The Commission's proposal for a decision authorising enhanced cooperation was published on 14 December 2010, and the operative part consists of only two articles. Article 1 says that the named states are authorised to establish enhanced cooperation between them in the area of the creation of unitary patent protection, by applying the relevant provisions of the Treaties, while Article 2 says that the Decision shall enter into force on the day of its adoption.

4.9  The substance of the enhanced cooperation is not set out in the Articles but will be the subject of implementing proposals once the authorising Decision has been adopted by the Council. However the recitals indicate (particularly in recital 7) that the translation arrangements should correspond to those in the Commission's proposal of 30 June 2010 combined with elements of compromise proposed by the Belgian Presidency in November that had wide support in the Council.

4.10  Recital 14 clarifies that the possibility of obtaining unitary patent protection on the territories of the EU Member States participating in the enhanced cooperation does not affect the availability or the conditions of patent protection on the territories of non-participating EU Member States. However, undertakings from non-participating EU Member States should have the possibility to obtain unitary patent protection on the territories of the participating Member States under the same conditions as undertakings from participating Member States. Existing rules of non-participating Member States determining the conditions of obtaining patent protection on their territory remain unaffected.

The Government's view

4.11  In her Explanatory Memorandum of 7 January, the Minister of State for Intellectual Property at the Department for Business, Innovation and Skills (Baroness Wilcox) says that inability to agree on the languages of the EU patent has been a longstanding barrier to overall agreement on the patent. Translation of a whole patent into a single language averages over £850, and translation only of a patent's claims (which describe its legal scope) averages over £200. As there are now 23 official EU languages, even translations limited to a patent's claims, covering all EU official languages, would be very expensive. This would have been the consequence of the deal presented in 2003, and rejected in 2004, explains the Minister, and which was then roundly opposed by industry.

4.12  The Commission's proposal of July 2010, as in August 2000, was for patents to be published in one of the three working languages of the EPO (English, French and German) and for a patent's claims to be published in all three of these languages. Machine translations of the full patent would be available in all 23 EU languages, and a special translation system with a focus on technical language is being constructed for this purpose. This approach, explains the Minister, aims to balance the need for public information, with the need for low costs and legal certainty given by a reduced language system. She says the Government supports this approach, due to the significant cost savings over current translation requirements for European patents, though could support other efficient language regimes. Many other Member States also support this. However, Spain, Italy and Poland argue that the proposed language regime is discriminatory and that that this will disadvantage the general public in those states whose languages are not represented, as they will not be able to understand what is covered by an EU patent.

4.13  The Minister says that when the UK wrote to the Commission to request enhanced cooperation, it included in its letter a specific reference to the still awaited Opinion of the Court of Justice of the EU on the European and EU Patents Court, as that Opinion may have a material effect on the UK's participation. This caveat was included in order to ensure that if the Court of Justice concluded that it did not have sufficient jurisdiction and required wider powers under Article 262 TFEU, then the UK could withdraw from the request for enhanced cooperation before it was presented to the Council for a vote.

4.14  She says that the UK's position on enhanced cooperation in general is that any proposals will be examined on a case-by-case basis to ensure that Treaty requirements are rigorously applied, and that there are no (or minimal) impacts on non-participating Member States. In the present case, it is also important for any proposed package to achieve real benefits for business, consumers and the economy.

4.15  The Minister concludes by reminding us that the more countries that are involved in any agreement on a unitary patent, the more extensive any benefits would be in terms of market coverage for patent owners. Moreover the Treaty itself provides an obligation under Article 328(1) TFEU that the Commission and the participating Member States promote participation by as many Member States as possible.


4.16  We thank the Minister for her Explanatory Memorandum.

4.17  As with our predecessors, we see the merit of the EU Patent, and of easing the translation burdens associated with it. So we supported the Commission's proposal for a three-language regime for EU patents, and, in light of the seeming impossibility of achieving consensus, support this request for enhanced cooperation.

4.18  We do, though, have two queries at this stage. The Minister says that the UK will withdraw from the request for enhanced cooperation if the Court of Justice finds that the international agreement establishing the European and EU Patents Court is incompatible with the Treaties. We understand that the Court's opinion is expected to be published on 8 March, and the Council is expected to adopt this Decision for enhanced cooperation on 10 March.

4.19  Firstly, we ask the Minister to explain the basis on which she contends that it is consistent with the strict rules on enhanced cooperation for a requesting State to withdraw its request—no provision for this is made in the Treaties. We think that if the UK is not sure that it wants to proceed on the basis of enhanced cooperation, rather than be counted among the requesting Member States it should consider whether to join at a later date, for which provision is made in Article 331 TFEU.

4.20  We question, secondly, why it is necessary for the Council Decision to be taken two days after the Opinion of the Court of Justice is published. The Opinion is relevant to this proposal for enhanced cooperation, as the Government's conditional stance on the proposal demonstrates. We would also like sufficient time to scrutinise the Opinion before clearing the Council's Decision to approve enhanced cooperation from scrutiny, and would expect an Explanatory Memorandum on the Opinion when the Minister deposits it. We would, therefore, be grateful if the Minister would consider whether the Council Decision could be postponed.

4.21  In the meantime the Council Decision remains under scrutiny.

40   The previous Committee cleared this proposal from scrutiny on 19 November 2009 (see headnote). Back

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