20

Unitary patent protection systems in Europe
Researcher:Masahiko Matsunaka(*)

The single European market formed by the ever expanding European Union is one of the strategic markets
for Japan, while its member states are also important as states with which patent applications are filed. However,Japanese applicants do not sufficiently understand the details of the recent trend towards establishing a new
intellectual property system in Europe, particularly developments concerning the unitary patent protection
system, partly due to the considerable uncertainness of the outcome of future discussions. At present, discussions
on the Community-level patent protection system (Community patent) and discussions aimed at reducing thetranslation costs based on the EPC (London Agreement) and unifying the judicial procedure (European Patent
Litigation Agreement (EPLA)) are conducted in parallel. This paper reports the results of examination withregard to the strategies by which the EU member states and European companies are involved in a series of
discussions, and the way in which Japanese applicants should observe these developments towards theestablishment of a new system.

Ⅰ Introduction
In Europe, there is strong demand for aunitary patent protection system in whichapplicants may acquire patents in multiple states
by taking the same procedure, while the sameprocedure and determination standards are also
applied in courts in enforcing those patents. Thisis due to three main reasons.
The first reason is the single market strategy
upheld by the EU. The strategy intended toenhance EU’s industrial development andexternal competitiveness by allowing freemovement of people, goods, capital, and services
within the EU. However, intellectual property
rights (IPRs) are treated as an exception to theprinciple of free movement. At present, where
granting and enforcement of patent rights are
based on principles of territoriality and patents
exist in the respective member states based on
their respective national laws, movement ofgoods and services would inevitably be restrictedeven under the single market concept. In light of
the idea to establish a single Europe by
eliminating borders between the member states,
a unitary patent protection would be an essential
system.
The second reason is the current high costsof European patents. The European Patent
Convention (hereinafter referred to as the EPC)
realizes unified examination of patent applications
by the European Patent Office (hereinafterreferred to as the EPO), but the procedures after
the granting of the patent are left to the nationallaws of the respective states. Article 65 of the
EPC allows a contracting state to have theapplicant submit a translation of the patent claims(*)

and the entire specification in a specified official
language as a requirement for a European patent
granted by the EPO to remain effective inrespective designated states. Due to thisrequirement for translation, the European patentis extremely costly compared to U.S. andJapanese patents, and such high costs ofEuropean patents have been indicated as
impeding R&D in Europe, and furthermore,industrial development in Europe.
The third reason is the issue of differences in
the judicial systems and court decisions among
EPC contracting states. European patents, withprocedures that are indeed centralized in thepatent granting phase, become a collection ofnational patents, often referred to as a “bundle ofpatents,” after the granting phase. Therefore,
when filing a patent infringement action with acourt, if an act of infringement has been
conducted in multiple states, the patentee mustfile actions in those respective states. There is no
guarantee that all of these courts will render thesame decisions, and this is detrimental to boththe patentee and accused infringer in terms of the
difficulty to foresee the outcome of the trials.
Furthermore, the fact that the patentee must filemultiple actions in the respective states is amajor problem in terms of judicial costs andaccess to justice.
Against such a background, the unitary
patent protection system that is currently soughtin Europe must satisfy three requirements: (i)low cost; (ii) effectiveness throughout Europe;and (iii) consolidation of procedures in thelitigation phase. In order to realize a system thatsatisfies these requirements, Community level
discussions are under way for establishing a

Senior Coordinator for Licensing Center, Intellectual Property Right Operation Company, Matsushita ElectricIndustry Co. Ltd.

IIP Bulletin 2005

● 146 ●

Community patent system in the Community
frameworkandintergovernmental
level
discussions are also made for improving European
patents.

Ⅱ Community patent
1

Background

The idea of the Community patent itself is
not new, but has been discussed since the 1960s.
In 1969, an expert committee consisting ofmember states of the then European Economic
Community (EEC) indicated the basic concepts
for two conventions. One developed into EPC,
and was adopted at a diplomatic meeting in
Munich in 1973. The other served as the basicmodel of the Community Patent Convention(Luxemburg Convention) and was signed in 1975.
However, the Luxemburg Convention
obligated the applicant to translate both theclaims and the entire specification into all official
languages of the Community. Since this would
impose an extremely large monetary burden on
the applicant, the Convention has only been
ratified by a limited number of member states,
and has yet to enter into force. As a lesson from
this, a system based on Community law wasconsidered as a possible way of unifying thepatent system at the Community level. In 1997,
the European Commission announced the “Green
Paper on the Community patent and the patent
system in Europe (hereinafter referred to as theGreen Paper).” After hearing opinions on theGreen Paper, the European Commission
submitted the “Proposal for a COUNCILREGULATION on the Community patent” in
2000. After consulting the European Parliament,
the forum of discussion was moved to the Councilof the European Union.
Discussions toward adopting the proposed
Regulation faced considerable difficulty, but theCouncil of the European Union managed to agree
on a political approach on the Community patent
on March 3, 2003. The entry into force of the
proposal for a Council Regulation on theCommunity patent was expected to be near at
hand
with
this
success,butmainlylanguage-related problems continued to remain
unsolved, and the system has yet to beestablished even today. Meanwhile, the European
Council adopted the Lisbon strategy in March
2000. This strategy had affirmed to realize theCommunity patent system by the end of 2001 at
the latest.
2

Outline of the Community patent(1) Legal basis
This proposal for a Regulation on theCommunity patent was drafted with the aim tocreate a unitary industrial property right, theCommunity patent. The legal basis for the
proposed Regulation is Article 308 of the EC
Treaty, similar to the Community trademark
system and the Community design system.
The proposed Regulation assumes that theCommunity patent will coexist with the EPC, andclearly specifies that the Community will accede
to the EPC, an application for a Community
patent will be a European patent application inwhich the territory of the Community isdesignated, and the Community patent will be
granted by the EPO.
(2) Language regime
The applicant has to present a complete
application document in one of the three official
languages of the EPO (English, German, French)
as well as, a translation of the claims into the twoother EPO languages. However, where theapplicant files the application in a non-EPO
language and provides a translation into one of
the EPO languages, the cost of that translation
will be borne by the system.
For reasons of legal certainty in connection
withactionsorclaimsfordamages,
non-discrimination and dissemination of patented
technology, the applicant must, upon the grant of
the patent, file a translation of all claims into all
official Community languages (except if a member
state renounces the translation into its official
language). The translations will be filed with the
EPO and the costs borne by the applicant.
(3) Judicial system
Under the Community patent system, theCommunity Patent Court is established attachedto the Court of First Instance (hereinafterreferred to as the “CFI”) based on Article 225a of
the EC Treaty. The Community Patent Court will
have exclusive jurisdiction in actions and claimsof invalidity or infringement proceedings, ofactions of a declaration of non-infringement, ofproceedings relating to the use of the patent or to
the right based on prior use of the patent, or
counterclaims for invalidity/limitation or requests
for declaration of lapse. The Community Patent
Court is composed of a central chamber and one
or more regional chambers. If the number ofcases introduced before the central chamber in
one calendar year exceeds 150 proceedings, a
regional chamber can be established in themember state in which the greatest number ofparties involved in litigation were domiciled.
The chambers of the Community Patent
Court will sit in sections of three judges. The
judges will be appointed by a unanimous decisionof the Council for a fixed term. The candidates forappointment must have an established high level● 147 ●IIP Bulletin 2005

of legal expertise in patent law.
The Community Patent Court will conduct
the proceedings in the official language of themember state where the defendant is domiciled,
or in one of them to be chosen by the defendant,
where in a member state there are two or more
official languages. At the request of the parties
and with the consent of the Community Patent
Court, any official EU language can be chosen as
language of proceedings. The Community Patent
Court may, in accordance with the rules ofprocedure, hear parties in person and witnesses
in an EU official language other than the languageof proceedings. In that case translations andinterpretation into the language of theproceedings from another official EU language
should be provided.
An appeal against a decision of theCommunity Patent Court may be brought before
the CFI within two months of the notification of
the decision appealed against. The CFI cannot
refer a case back to the Community Patent Court
except in exceptional circumstances. However, areview may be conducted by the ECJ on theapplication of the First Advocate General of the
CFI in cases where there is a serious risk for theunity and consistency of Community law.
The Community Patent Court shall beestablished by 2010 at the latest. Each member
state shall designate a limited number of national
courts to have jurisdiction in the actions andclaims mentioned above until that time.
(4) Role of national patent offices
The EPO will play a central role in theadministration of Community patents and willalone be responsible for examination of
applications and the grant of Community patents.
All national patent offices will have an importantrole to play, inter alia advising potential applicantsfor Community patents, receiving applications
and forwarding them to the EPO, disseminating
patent information, and advising SMEs.
Applications for Community patents can be
filed with the national patent office of a member
state in its working language(s). Applicants willremain free to present their patent applications
directly to the EPO. They may also request that
their applications be fully processed by the EPO.
On behalf of the EPO and at the request of
the applicant, national patent offices of member
states having an official language other than thethree official languages of the EPO may carry out
any task up to and including novelty searches intheir respective language(s). In addition, national
patent offices of member states having as theirofficial language one of the three EPO languages,
which have experience of cooperation with the
EPO and which need to maintain a critical mass
may, if they so wish, carry out search work on

IIP Bulletin 2005

behalf of the EPO.
(5) Distribution of fees
National patent offices will be compensatedfor the activities they undertake in respect ofCommunity patents. Renewal fees for Community
patents will be payable to the EPO. The EPO willkeep 50 percent to cover its costs, including thecosts of searches carried out by national patentoffices. The remaining 50 percent will be
distributed among the national patent offices of
the Community member states in accordancewith a distribution key, which will be decided by
the Council of the European Union. The
distribution key will be decided according to thepatent activities and the size of the market.
(6) Review clause
Five years after the grant of the first
Community patent, the European Commission
will present a report to the Council of theEuropean Union on the functioning of all aspectsof the Community patent and, where necessary,
make appropriate proposals. The assessment will
cover the issues of quality, coherence, and timerequired for decisions and cost to the inventors.
Further reviews should be made periodically.
3

Remaining points at issue

The issues that remain to be discussed
include the time limit for submitting thetranslation and the effects of (inaccurate)translation.
The common political approach requires
submission of the translation “upon the grant of
the patent,” but this means “within a reasonable
time from the date of grant of the patent.” During
this period, the granted patent will be valid
irrespective of the availability of the translation.
Also, the Community patent application may be
converted into a European patent during thisperiod.
There is an argument over how long this“reasonable period” is. Generally, if this period islong, the applicant will have sufficient time to
examine whether or not the right ultimately
needs to be a Community patent, by watching thetrend of the technical field in which the patented
invention pertains. If the applicant does not want
the right to be established as a Community patent,
he/she may convert it to an ordinary European
patent. Germany insists that a reasonable period
would be two years.
The effects of the translation were taken up
as a major issue on the agenda by the Council of
the European Union in the first half of 2004.
When the translation is inaccurate, a person who
performed an act by recognizing that the act is
not an infringement based on the translation● 148 ●

could be sued as an accused infringer. It would benecessary to provide certain relief in such a case.
The presidency (Ireland) indicated a compromise
scheme. According to this scheme, in an
infringement case related to a Community patent,
the Community Patent Court will take into
account any discrepancies which arise between
the text of the patent as granted and thetranslation filed in the official language relied onby the alleged infringer, and if there are
discrepancies, the court will take into account
whether the discrepancies between thetranslation and the text of the patent as granted
had a significant effect on the alleged infringer’s
activity. Also, the courts, on the basis of theirfindings, may mitigate the award of compensation
or damages and may in addition, allow the alleged
infringer to continue use of the invention within
the member state (in which the infringement
occurred) for a period of up to two years on
payment of reasonable compensation to the rightholder.
The debate over this period became heatedover whether to make the period two years as in
the compromise scheme or 30 months.
Furthermore, discussions were made on
extending (doubling) the period when theinaccurate translation was intended to be
misunderstood. The point of conflict was thetrade-off between an increase in legal certainty
and an increase in translation costs caused bypreventing inaccurate translation. Germany
opposed having translation costs increase due toexcessively endeavoring to achieve accuratetranslations, while Spain insisted on prioritizing
legal certainty.

Ⅲ

Developmentsonintergovernmental level

theIn the intergovernmental conference held inParis on June 24 and 25, 1999, the member statesof the European Patent Organisation adopted
mandates for two working parties. One was on
reducing the translation costs of European
patents based on Article 65 of the EPC, and theother was on harmonization of European patent
litigation.
The former was adopted as the Agreementon the application of Article 65 of the Convention
on the Grant of European Patents (London
Agreement) in the intergovernmental meeting in
London on October 17, 2000. The latter is still
under discussion as the European Patent
Litigation Agreement (EPLA).
1

London Agreement

The London Agreement is aimed at reducing
the translation costs of European patents. Under

the current EPC, the applicant needs to translate
the entire text of claims and the specification in
the official language of the designated state after
the patent has been granted. The London
Agreement intends to reduce this translation costby 50%.
According to the London Agreement, any
state having an official language in common with
one of the official languages of the EPO must notrequire translation of the entire specification into
the official language of the state based on Article
65 of the EPC. Meanwhile, any state having no
official language in common with one of theofficial languages of the EPO must not requiretranslation of the entire specification into theofficial language of the state based on Article 65of the EPC, if the applicant has designated at least
one of the official languages of the EPO and theEuropean patent has been granted in that
language (or translated into that language).
However, the state having no official language incommon with one of the official languages of the
EPO of the previous sentence will continue tohave the right to require that a translation of theclaims into one of their official languages be
supplied.
For example, let us suppose that an applicant
files a European patent application in English bydesignating the United Kingdom, France, and theNetherlands. While there is no need fortranslation with respect to designation of theUnited Kingdom, there will also be no need totranslate the entire specification into French withrespect to designation of France, because Frenchis one of the EPO’s procedural languages (theclaims are already translated into French at the
EPO’s examination phase). With respect to thedesignation of the Netherlands, the claims need
to be translated into Dutch, but if the Netherlands
has prescribed use of English among the EPO’s
procedural languages, there will be no need totranslate the specification. On the other hand, if it
has prescribed the use of German or French, thespecification must be translated into German or
French. Therefore, if states having no official
language in common with one of the official
languages of the EPO all prescribe the use ofEnglish (though this would be very unlikely),
applicants such as Japanese companies that often
file European patent applications in English would
only have to translate the claims into the official
languages of the designated states.
The London Agreement also provides fortranslations in the case of disputes, such as
infringement litigation. The patent owner must
supply, at the request of an alleged infringer, a fulltranslation into one of the official languages of thestate in which the alleged infringement took place.
The patentee must also supply, at the request of
the competent court, a full translation into one of● 149 ●IIP Bulletin 2005

the official languages of the state concerned. In
this case, the translation costs will be borne by
the patentee.
At the intergovernmental conference inLondon, the agreement was signed by 10 EPC
contracting states (Denmark, France, Germany,
Liechtenstein,
Luxemburg,
Monaco,theNetherlands, Sweden, Switzerland, and theUnited Kingdom). This agreement needs to be
ratified by eight signatory states including thethree states in which the most European patents
took effect in 1999 (France, Germany, and theUnited Kingdom) in order to enter into force. In
other words, it does not require ratification/accession by all contracting states of the EPC.
This is an extremely realistic and highly
cost-saving system for inventions for which it
would be sufficient to designate states having oneof the official languages of the EPO as theirofficial language.
This agreement is more favorably received
by industry compared to the language regime of
the Community patent. The Federation ofGerman Industries (BDI) and the Movement ofFrench Enterprises (MEDEF) indicated in theirjoint statement that the London Agreement is
crucial for a more competitive European patent.
The agreement is a great achievement of theEuropean Patent Organisation and it should enter
into force as soon as possible. They also indicatedthat this will not only help European industry toobtain affordable protection for technicalinventions, but it will also contribute favorably tothe debate on the establishment of a Community
patent. They concluded by appealing to allcontracting states to ratify the London
Agreement as soon as possible.
However, the responses of practitioners
were not necessarily favorable. According to thehearing survey conducted by the author, theFrench bar association is strongly against the
London Agreement. The first reason is that thedate, based on which damages are found in
infringement litigation, is not clear. The second
reason is that the Agreement could threaten theposition of the French language in the European
patent system and have considerable impact onfees agents can charge their clients. Whileconcrete procedure toward ratification is under
way in Germany and the United Kingdom,
ratification by France is considered to be the key
for the entry into force of the London Agreement.
2

European Patent Litigation Agreement(EPLA)At the EPLA working party meeting in 2003,
discussions were made on two proposals. The
first proposal was to establish the European
Patent Court composed of the Court of FirstIIP Bulletin 2005

Instance, comprising a central chamber andmultiple regional chambers, and the Court ofAppeal, and to confer to it jurisdiction overinfringement and application for revocation ofEuropean patents. The second proposal was toallow national courts handling cases on patent
infringement or validity to seek non-binding
opinion from the European Patent Appeal Court.
As a result, a Draft Agreement on the
Establishment of a European Patent Litigation
System and a Draft Statute of the European
Patent Court were agreed upon by the working
party.
The European Patent Court will comprise
the Court of First Instance and the Court ofAppeal. Furthermore, the Court of First Instancewill comprise the central chamber and multiple
regional chambers. Regional chambers will be set
up in the EPLA contracting states, and existing
national courts including their know-how will beutilized. However, litigation procedures will be
unified amongst the regional chambers. The
regional chambers of the Court of First Instancewill have territorial competence. A regional
chamber will be set up by a contracting state orby a group of contracting states. When a regional
chamber handles more than 100 cases in a year,
another regional chamber may be established.
The headquarters of the Court of First Instanceand the location of the Court of Appeal are
undecided.
The European Patent Court has jurisdiction
in respect to any action for actual or threatened
infringement or for a declaration of noninfringement of a patent, any action or
counterclaim for revocation of a patent, and any
action for damages or compensation.
After a transitional period of seven years, thecourt in a contracting state where the accused
infringer is domiciled, or the court agreed uponby the parties will have exclusive jurisdiction on
the revocation and infringement of the patent.
Even if the accused infringer is not domiciled inthat state, the court of a contracting state inwhich the infringement occurred will have
non-exclusive jurisdiction on an action for
infringement.
Allocation of cases to the central chamber orregional chambers of the Court of First Instancewill be in accordance with the Brussels andLugano Conventions and the Brussels Regulation.
When no regional chamber has jurisdiction, thecentral chamber handles the case. An action forrevocation of a patent, which is not a counterclaim,
must be filed with the central chamber.
The European Patent Court may seek
preliminary rulings of the European Court ofJustice (ECJ) with regard to the application ofCommunity law. These rulings bind the European
Patent Court as long as the decision takes effect● 150 ●

in a member state of the European Union.
Decisions of the European Patent Court that
contracting states designate as their national
court will be directly enforceable in allcontracting states without any recognition
procedure.
The collegial body of the court will becomposed of three judges from different states.
Two will be judges specializing in law and at least
one judge must have a technical background(technically qualified judge; however, he/she must
not only have expert knowledge of technology,
but also have reasonable practical experience
under patent law). The judges for the Court ofFirst Instance will be appointed from a list of aninternational pool of judges. One of the legallyqualified judges will serve as the rapporteur andthe other will serve as the chairman. When acontracting state requires establishment of aregional chamber, it must nominate two judges.
The nominated judges are allowed to continue toserve as judges in the national courts of thecontracting state.
The language to be used in the European
Patent Court is stipulated as below.
(i) Before the central chamber of the Court ofFirst Instance, the language of the proceedings
will be the language used in the EPO procedure.
(ii) Before a regional chamber in a contracting
state that uses one of the EPO’s procedural
languages as its official language, the proceedings
will be conducted in said official language.
(iii) Before a regional chamber in a contracting
state that uses multiple procedural languages of
the EPO or that uses none of the EPO’s
procedural languages as its official language, theproceedings will be the EPO’s procedural
language designated by the contracting state.
(iv) Before the Court of Appeal, the language ofthe proceedings will always be the language ofthe first-instance proceedings(v) If the parties agree, the court may allow theuse of another language during all or part of theproceedings.
After that, the EPLA working party held
further discussions on the individual concernsthat had been mentioned. For example, in respect
to the effect of invalidity decisions, there was aconflict between those favoring an erga omnes
effect of invalidity for all states in the case of acounteraction by the defendant in an infringement
proceeding, and those stating that it should be left
to the choice of the parties. After the discussion
the majority of delegations seemed to support themore flexible approach (i.e., the latter approach).
The working party also discussed problems
concerning the future of the EPLA. Userorganizations, (AIPPI, ICC and UNICE) had
strongly supported the adoption of the EPLA,

stating that an improved European litigation
system should be created for the existence of
600,000 EPC patents also. However, theEuropean Commission presently takes the
opposite stance to the intergovernmental
conference, which is trying to adopt the EPLA,
because the outcome of the Community patent is
uncertain. The largest barrier for the EPLA
would be the issue of the powers under the EU
law of the EU member states promoting the
EPLA.
This is known as the AETR doctrine. In an
action filed by the European Council against theCouncil of European Union’s decision on theEuropean Agreement concerning the Work of
Crews of Vehicles Engaged in International Road
Transport (AETR), the ECJ held that the EU
member states must not enter negotiations with
non-EU states and organizations for formulating
new rules that would affect Community laws andregulations or would change their scope.
In the EU, jurisdiction on civil andcommercial
matters
includingintellectual
property rights is stipulated in the Brussels
Regulation. Since the EPLA establishes theEuropean Patent Court and confers jurisdiction to
the court, it obviously affects the Brussels
Regulation. Moreover, the states participating in
the EPLA negotiation are not only EU member
states, but also include non-EU states (e.g.,
Switzerland). Therefore, the EU member states
would have no powers to institutionalize the
EPLA based on the AETR doctrine.
Another solution that is currently considered is to
apply enhanced cooperation. This rule wasintroduced by the Amsterdam Treaty, and thelimitation on its application was further eased by
the Treaty of Nice. However, it is yet to be
applied. Community law can be legislated throughthe approaches of member states, but theunderstanding and cooperation of the European
Commission is indispensable for it.

ⅣConclusion

The discussions on the Community patentand the discussions on intergovernmental levelon translation and the judicial system are mademore or less in parallel. Currently discussions on
the Community patent are made by the Councilof the European Union, which is composed ofministerial-level members of the EU member
states. Therefore, many states also participate
in the intergovernmental discussions on
improvement of the EPC. While having the same
objective of realizing unitary patent protection in
Europe, in what ways do these two approaches
differ?

● 151 ●IIP Bulletin 2005

1

Expectations andCommunity patentconcerns

for

the

The
Community
patenthas
beenconsistently advocated to coexist with theexisting patent systems in Europe (i.e., thenational patent and the European patent).
Applicants will have access to a third option in
addition to the national patent and the European
patent, and the Economic Commission for Europe,
which is an advisory body of the European
Commission, has indicated a positive opinion forthis aspect. However, so far as the discussions todate are concerned, the Community patent would
not be expected to provide a third option. In thetrial calculation by the European Commission in
2003, the Community patent is estimated toachieve an approximate 50% reduction intranslation costs compared to those required for atypical European patent. Despite this fact, both
the discussions by the Council of the European
Union and comments by economic organizations
such as UNICE find this cost reduction to be
insufficient and require further reductions to thetranslation costs. It is questionable why theCommunity patent is not regarded as “better thannothing” when it allows unitary patent protection
at lower costs than the current systems.
The
Community
patentaims
atstrengthening Europe’s competitiveness to matchthe level of the United States and Japan. If theCommunity patent is to be realized at sufficiently
low costs, applicants, rather than utilizing theCommunity patent selectively, are expected tofile all of their applications as Community patentapplications. Such a filing strategy would beparticularly important for large companies. Thisis because the European internal market can beconsidered as a single state, economically.
Therefore, in introducing a new system forprotecting patents, comparison should not bemade with the existing systems in Europe, butwith the systems of the United States and Japan.
If so, a cost reduction of about 50% would still beinsufficient.
However, it would be considerably difficult toachieve further cost reduction in the Community
framework. By expanding now five times, the EU
has become a giant, supranational body consistingof 25 member states and 450 million citizens in
May 2004. The EU adheres to its basic principle
to treat all official languages of the member states
as EU’s official languages, and the number ofofficial languages is currently 20. The reason thatthe reduction of translation costs of theCommunity patent is making little headway is dueto this equal treatment of official languages of themember states.
The objective regarding the translation costs
would more or less be achieved if it will became

IIP Bulletin 2005

sufficient to translate the claims and thespecification into one of the current procedural
languages of the EPO and the claims into theother two languages, as suggested in the original
proposal for the Regulation on the Community
patent. However, it seems quite impossible torealize this system as Community law by gaining
the consent of the respective member states,
particularly states whose official languages are
Latin languages and states that have newly joined
the EU.
Considering such restriction of Community
law, the approach to achieve reduction oftranslation costs (London Agreement) andunification of the judicial system (EPLA) by
utilizing the EPC, which has already madeconsiderable success at intergovernmental level,
rather than leaving everything to the Community
patent, would also be a very realistic option for
the EU member states. Furthermore, such an
option may be more appealing for some member
states for advantageously promoting industrial
policy by hearing the opinions of industry in thosestates, rather than the Community patent system,
which would principally be operated by theEuropean Commission.
2

Future outlook

As discussed above, discussions on a unitary
patent protection system in Europe are under
way in two frameworks: the Community level andthe intergovernmental level of EPC member
states. Since the subjects of the respective
discussions are the Community patent that will(that may) be created in the future and theEuropean patent, which already has a history of
30 years, having these two systems notcomplement, but compete with each otherobviously would not benefit the European states.
In spite of this, the discussions on these twosystems are deadlocked, particularly with regard
to the judicial system: the Community patent not
being able to make progress due to therequirement for unanimous approval of theEuropean Commission, and the EPLA not being
able to make advances without gaining
cooperation of the European Commission.
As these discussions have gone beyond
discussions on patent systems and developed into
discussions with very strong political implications,
it is extremely difficult to predict the final
outcome. The possible outcomes can betheoretically derived as follows: (i) the
Community patent will be established byovercoming the language regime issue; (ii) the
Community patent becomes abandoned and the
EPLA will be established; and (iii) the European
Commission makes a certain compromise and a
new system will be established by fusing the● 152 ●

Community patent and the EPLA.
However, all of these cases are expected to
involve different difficulties. As for (i), a
single-language regime of only English can beassumed as a concrete solution, but it would be
impossible to gain the approval of certain statessuch as Italy and Spain.
With regard to (ii), it seems unlikely in lightof the past developments that the European
Commission would directly abandon the proposed
Regulation on the Community patent. If so, theEU would be pressed to achieve a realistic
compromise with the EPLA side. The EPLA side
would have no reason to reject cooperation of theEuropean Commission either, as long as the legal
problem remains. Then the case in (iii) could
become realistic.
3

Measures to be taken by Japaneseapplicants

Lastly, the points to note when Japaneseapplicants file patent applications in Europe insuch a situation are mentioned below. European
patents filed from Japan account for about 16% of
all European patents. It is likely that specificindustry and company strategies are devised withregard to the choice of designated states in filing
European patent applications, but thosestrategies will come under pressure for review if
a unitary patent protection system is introduced.
Considering that the recent discussions on
unitary patent protection system eye a single
European market, vertical choice of designatedstates based on the place of production and placeof consumption would not necessarily beappropriate. In addition, it would be necessary toevaluate the potential of investment byinternational
companies
andeconomicdevelopment in the states of central and eastern
Europe that are new EU member states. At least,
large European companies are expressing theiropinions through industrial associations on theperspective of a single Europe, on the premise of
breaking away from state-by-state patentacquisition strategy in Europe.
If the Community patent is to be introduced,
it would be a mistake to consider it as a new
option added to conventional systems. It will
depend on the costs of the new system to be
introduced, but if it is used together with theconventional systems, the jurisdiction would be
likely to differ by right upon enforcement, so
careful decisions would be required when
protecting technology in a certain technical fieldby multiple patents. In any case, Japaneseapplicants also need to closely watch the future
developments of the discussions.

● 153 ●IIP Bulletin 2005