Opinion of the Advocate General — ECLI:EU:C:1999:198
Date: 1999-04-22
Based on: Treaty establishing the European Economic Community (1957)
Subject matter: Free movement of goods;Measures having equivalent effect;Intellectual, industrial and commercial property;Quantitative restrictions;Patents
Procedure: Reference for a preliminary ruling
Origin: Germany

summary of the specification (published at the same 
time as the application) and, when the patent is granted, 
merely to a translation of the claims; a requirement to 
translate all of the specification would still exist only in the 
event of legal action being taken by the patent holder to 
assert his rights under the patent (the so-called 'global' 
solution devised by the EPO). 
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BASF V PRÄSIDENT DES DEUTSCHEN PATENTAMTS 
13. Firstly, it is common ground that, as 
Community law now stands, the provisions 
on patents have not yet been the subject of 
uniform rules or of an approximation of 
laws at Community level. 20 It follows that 
it is for the national legislature to determine 
the conditions and detailed rules regarding 
the protection conferred by patents. 21 I am 
not overlooking the fact that a measure 
such as that at issue in the main proceed­
ings does not concern the movement of 
goods, whether or not they are covered by a 
patent, but rather one of the conditions for 
that patent to have full and lasting effect in 
one or more Member States. In fact, the 
subjective legal position of the patent 
holder in the circumstances of this case 
must, to be correct, be described as a 
requirement (onere), not an obligation 
(obbligo) to file a translation of the speci­
fication (as BASF, the Member States and 
the Commission have suggested). By 
'requirement' I mean in this case not an 
obligation as to conduct imposed uncondi­
tionally on the holder of a power, and thus 
subject to the sanction of mandatory inter­
vention, by way of substitution, by the legal 
system, in the event of failure to comply, 
but rather a condition which the person 
concerned has to satisfy only in so far as it 
is instrumental to the pursuant of a parti­
cular result which he wishes to achieve and 
which is favourable to him. 22 As regards 
the present case, the United Kingdom 
pointed out both the content of the exclu­
sive right which a patent guarantees its 
holder for a period of 20 years, 23 and also 
the strict civil and criminal sanctions under 
the various national legal systems for 
infringement of a patent. However, accord­
ing to the national governments which have 
submitted observations, the requirement to 
file a translation of the specification in 
good time is primarily designed to ensure 
that economic operators active on the 
market of the Member State for which a 
European patent has been granted do not 
run the risk of having such penalties 
imposed on them, contrary to the funda­
mental requirement of legal certainty, 24 
without having been put in a position to 
assess accurately the scope of the protection 
provided by the patent in question through 
having access to the patent specification 
concerned in their official language. As the 
Danish and Finnish Governments pointed 
out, it would be unjust and inefficient to 
require third parties, who are already in a 
subordinate position in relation to the 
inventor's monopoly over enjoyment of 
his product, to translate the patent specifi­
cation themselves individually in order to 
be certain that they are not infringing the 
20 — See footnote 19 above and the portion of text relating to it. 
21 — See inter alia judgment in Case C-235/89 Commission v 
Italy [1992] ECR I-777, paragraphs 12 and 13. 
22 — I would point out, incidentally, that the function of the 
legal relationship described between a power and an 
obligation (to do or not to do) is to resolve conflicts of 
interest between a number of persons. In individual cases 
the legal system tries to prevent a situation in which a right 
is exercised by an individual in order to satisfy different 
interests from those for which it was granted and thus 
leads to an unregulated sacrifice of the rights of the persons 
against whom that right is exercised. The legal system 
therefore provides, for the benefit of the latter, suitable 
instruments for monitoring and guarantee purposes, both 
by determining in advance the conditions governing the 
exercise of that right, and by taking administrative action 
beforehand (declaring exercise of the right void) or after­
wards (duty to compensate for loss) in the event of failure 
to comply. 
23 — I would also point out that according to the case-law of the 
Court, the specific purpose of a patent is to guarantee in 
particular to the holder, in order to compensate the 
creative effort which the invention represents, the exclusive 
right to use it for the production and initial placing on the 
market of industrial goods, both directly and through the 
granting of licences to third parties, and the right to oppose 
infringements. This right to be the first to market a 
product, which is given him under the monopoly of 
enjoyment of the product, enables the inventor to obtain 
reward for his creative effort without however guarantee­
ing it for him under all circumstances. In particular, it 
follows from the principle of Community exhaustion (see 
judgments in Case 15/74 Sterling Drug [1974] ECR 1147, 
and in Case 19/84 Pharmon [1985] ECR 2281, paragraph 
22) that if a patent holder decides in full knowledge of the 
fact to market a product in any Member State in which it is 
not patentable, he must accept the consequences of his 
decision as regards the possibility of parallel imports (see 
inter alia judgments in Case 187/80 Merck [1981] ECR 
2063, paragraphs 9 to 11). See also judgment in Joined 
Cases C-267/95 and C-268/95 [1996] ECR I-6285, 
paragraphs 30 to 37. 
24 — As we know, legal certainty is one of the general principles 
of the Community legal system (see inter alia judgments in 
Case 78/74 Deuka [1975] ECR 421 and in Case C-325/91 
France v Commission [1993] ECR I-3283, paragraph 26. 
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OPINION OF MR LA PERGOLA — CASE C-44/98 
patent in question by their own activity. On 
the other hand, compliance with the 
requirement at issue within the prescribed 
time-limit enables all third-party operators 
in the Contracting State in respect of which 
a European patent is granted also to 
consider whether it is expedient to oppose 
that patent where one or more of the 
grounds stated in Article 100 of the Con­
vention are satisfied. 25 
14. Indeed, the Court's case law cited 
above disclosed another principle: whilst 
Member States are given exclusive powers 
to prescribe in which cases and according 
to what procedures a patent gives protec­
tion, they are not allowed to take Arti­
cle 222 of the EC Treaty as a basis on 
which to adopt measures in relation to 
industrial and commercial property which 
would adversely affect the principle of the 
free movement of goods within the internal 
market. 26 I do not understand how Arti­
cle 30 of the Treaty can be applied in 
respect of a provision like that contained in 
the second and third subparagraphs of 
Article 11(3) of the IntPatÜG. 
It has been held by the Court that 'all 
trading rules enacted by Member States 
which are capable of hindering, directly or 
indirectly, actually or potentially, intra-
Community trade' are to be considered as 
measures having an effect equivalent to 
quantitative restrictions on imports within 
the meaning of Article 30 of the Treaty. 27 
Both the actual manufacture and the mar­
keting of a patented product in the territory 
of the designated States and the subsequent 
movement of that product across frontiers 
represent only a possibility in relation to 
the favourable decision with which the 
procedure for granting a patent may be 
concluded. Thus, although a European 
patent may be void ab initio in a national 
territory, possibly as a result of the patent 
holder's inertia with regard to filing a 
translation, this certainly does not consti­
tute a legal obstacle to the marketing in 
Germany of the product for which patent 
protection had been applied, nor to the 
movement of the product in question across 
frontiers. A penalty such as that contained 
in the law at issue appears to be applicable 
in this context without any discrimination 
based on the origin of the goods which may 
be traded between Member States, and is 
therefore by no means protectionist. On a 
proper view, since the penalty in question 25 — Namely: (a) the subject-matter of the patent is not 
patentable under Articles 52 to 57 of the Convention 
(which relate to patentable inventions and exceptions to 
patentability, novelty, non-prejudicial disclosures, inven­
tive steps and industrial application), (b) the patent does 
not disclose the invention in a manner sufficiently clear for 
it to be carried out by a person skilled in the art, or (c) the 
subject-matter of the patent extends beyond the content of 
the application as filed, or, if the patent was granted on a 
divisional application or on a new application filed in 
accordance with Article 61 of the Convention). 
26 — See Commission v Haly judgment cited in footnote 21, 
paragraph 14. Article 222 provides: 'This Treaty shall in 
no way prejudice the rules in Member States governing the 
system of property ownership'. 
27 — See judgment in Case 8/74 Dassonuille [ 1974] ECR 837, 
f iaragraph 5. Even the requirement to use a particular 
anguage for the marketing of imported goods may 
constitute a measure having equivalent effect (judgment 
in Case 369/89 Piageme and Others [1991] ECR I-2971, 
concerning national rules which impose the exclusive use 
of a specific language for the labelling of food products 
and do not permit the use of another language which is 
easily understood by the purchasers or ensuring the 
consumer is informed by other means). 
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BASF V PRÄSIDENT DES DEUTSCHEN PATENTAMTS 
entails the loss ab initio of the right to 
commercial exclusivity otherwise belonging 
to the holder in the State in which the 
patent had been granted, the measure at 
issue may actually have the effect of 
removing a possible obstacle to access to 
the national market for the invented pro­
duct. 
15. Member States have also rightly 
pointed out that the choice of designated 
Contracting States is a matter for the 
commercial and industrial strategy of the 
inventor or his assignee. As regards this 
choice, the potential profits to be expected 
from the commercial exploitation of the 
invention on the geographical markets 
concerned must be set against all the 
expenses already incurred, such as those 
for research and development, and those 
still to come (launching, marketing and 
advertising costs). However, even if it were 
established that the requirements imposed 
by the Convention's rules on the use of 
languages were of great significance in the 
choice of the States for which patent 
protection is sought, as BASF has 
claimed, 28 'involuntary' waiver of protec­
tion for an invention under the German 
legal system would be determined, accord­
ing to the plaintiff, not by the fact that the 
contested law requires a translation but 
rather by: (i) the high level of costs which 
the patent holder must meet for translating 
the specification and (ii) the fact that the 
economic operator concerned may lack 
sufficient funds, in particular if it is a small 
or medium-sized undertaking. 29 These are 
clearly imponderable circumstances of a 
purely economic nature and in any case 
irrelevant to the national measure at issue. 
The aspect of the high cost of translations, 
in particular, appears likely to vary accord­
ing to time and place, in particular follow­
ing technological developments on the 
market in the services concerned. More­
over, as the Finnish government has 
observed, it may be doubted whether there 
is any general interest in patent protection 
if the applicant for a European patent 
himself considers that the potential eco­
nomic value of the exploitation of the 
invention is less than the total cost of 
obtaining the relavant right. 
16. BASF has also claimed that the penalty 
laid down by the German legislature for 
failure to file the patent specification within 
the prescribed time-limit may lead to 
division of the Community market into a 
protected zone, and a free zone comprising 
Germany and possibly the other Member 
States which are not designated in the 
application or in respect of which the 
28 — The argument put forward at the hearing by the Austrian 
Government in contradiction of the plantiff's assertion 
seems to me very interesting: even after the German 
legislature adopted the contested law which introduced the 
requirement to translate a patent specification into Ger­
man the number of European patent applications in which 
Austria was also designated (without any additional 
translation costs being involved) did not undergo any 
appreciable increase as one would have expected. The 
percentage of designations of Austria and Germany 
remained basically unchanged (in 1997 the two countries 
were designated respectively in 64.51% and 98.05% of 
applications filed by applicants from the Member States, 
Japan and the Uniteci States; 37.17% and 97.66% 
respectively of the total number of patents (39 646) 
granted during the same year following applications 
submitted by persons from the same geographical area 
were granted in respect of Austria and Germany: see EPA/ 
EPO/OEB, 1997 Annual Report, Munich, 1998, pp. 56, 
57, 62 and 63). 
29 — It seems doubtful at least that the arguments set out in the 
text — apart from the fact that they are well founded and 
relevant tor the purposes of resolving the case in the main 
proceedings — could apply to a company such as BASF 
AG, the dominant company in the group of companies of 
the same name, whose turnover in 1998 was around DM 
54 065 000 000 (approximately EUR 27 643 000 000 and 
a pre-tax profit of around DM 5 419 000 000 (approxi­
mately EUR 2 771 000 000 and which at 31 December 
1998 had 105 945 employees (see 1998 Annual Report, 
http://www.basf/htm/e/dat...entwick/gericht/gb98/aufei-
nen.htm). 
I - 6281 
OPINION OF MR LA PERGOLA — CASE C-44/98 
patent is void ab initio due to failure to 
provide a translation (see footnote 10 
above). This argument does not convince 
me either. The possibility of isolation of the 
markets of the Member States is, in my 
view, a necessary result of the centralised 
system introduced by the Convention. 
Under that system it is perfectly usual for 
the inventor (in the same way as if he was 
applying for a national patent to be granted 
in one or more Member States) to restrict 
the protection he applies for under the 
European patent to a smaller or larger part 
of the Community. Moreover, the right of a 
holder of a patent (be it European or 
national) to oppose infringements of the 
invention in States in which he has the 
monopoly as regards first placing it on the 
market, clearly also concerns the importa­
tion of competing products manufactured 
and marketed by third parties in a country 
within the free zone. 30 
17. Lastly, it seems to me, there is also little 
merit in the argument put forward by BASF 
for the first at the hearing that application 
of Article 30 to the contested translation 
requirement stems, as a secondary point, 
from the fact that patents are referred to as 
goods ('assets') within the meaning of Title 
I of Part 3 of the Treaty. I do not think one 
can speak of the free movement of intan­
gible goods such as industrial and commer­
cial property rights except in the figurative 
sense. To my mind, this excludes the 
possibility of patent rights being subsumed 
under the concept 'goods' as developed by 
the Court in the context of the interpreta­
tion of Article 30, according to which 
objects which can be valued in money and 
which are capable of being transported 
physically across a frontier for the purposes 
of sale or other lawful commercial transac­
tions, whatever the nature of those transac­
tions, are subject to prohibition of national 
measures which constitute an obstacle to 
trade between Member States. 31 
18. According to earlier judgments of this 
Court, Article 30 of the Treaty does not 
preclude a national measure whose restric­
tive effects on the free movement of goods 
are too uncertain and indirect to warrant 
the conclusion that it is an undue restric­
tion on trade between Member States. 32 As 
has been observed in legal literature, 33 the 
object of the principle recalled here, laid 
down in the Dassonville judgment, is 
always to verify whether a causal link 
30 — As the Spanish Government observed, the only solution 
which would prevent the isolation of the markets con­
demned by BASF would be to abolish the national patent 
systems and replace them by an exclusive unitary system of 
Community patents. This is a solution which would 
conflict with the system under which national patents 
and the Community patent coexist, which is based on the 
Community Patent Agreement (see Article 5). 
31 — See judgments in Case 7/68 Commission v Italy [1968] 
ECR 617 and in Case C-2/90 Commission v Belgium 
[ 1992] ECR I-4431, paragraph 26, and the judgment in 
Evans Medical and Macfarlan Smith, cited above in 
footnote 16, paragraph 20. 
32 — See inter alia judgment in Case C-93/92 CMC Motorrad-
center [19931 ECR I-5009, paragraph 12, concerning a 
rule of case-law of a Member State which imposes a 
requirement to provide information in pre-contractual 
relations regarding the circumstances of which each party 
is aware and which, although not linked to the subject-
matter of the agreement for sale and its characteristics, are 
designed to bring about a decision by the other contracting 
party; see also judgment in Case C-266/96 Corsica Ferries 
[1998] ECR I-3949, paragraph 31) concerning the require­
ment imposed by the laws of a Member State on shipping 
companies established in another Member State, whose 
vessels call at the ports of the first State, to use, in return 
for payment of an amount exceeding the actual cost of the 
service provided, the services of groups of local handlers 
who have exclusive franchises. 
33 — See Oliver, P.: Free Movement of Goods in the European 
Community (3rd Edition), London 1996, pp. 81 and 82, 
footnote 55. 
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BASF V PRÄSIDENT DES DEUTSCHEN PATENTAMTS 
exists — it does not in this particular case 
— between the national measure concerned 
and the pattern of imports. The conclusion 
which I have come to in this case is also 
necessary since, as we know, Article 30 
does not lay down what might be termed a 
de minimis rule, so that for there to be a 
breach of that provision all that is needed is 
an obstacle to trade between States, if only 
a minor one; 34 all this, however, depends 
on there being a causal link between the 
measure adopted and a restrictive effect on 
imports, which, however, as I said above, 
does not exist in this case. 
19. On the basis of what has been observed 
so far, there can be no question, also in the 
case of a measure like the one at issue in the 
main proceedings, of its restricting imports, 
even indirectly or potentially. The only 
factor which BASF has been able to put 
forward to support its claim that the law in 
question is a measure having an effect 
equivalent to a quantitative restriction is 
the following: operators with small or 
medium-sized businesses, or in any event 
lacking sufficient funds, who are interested 
in obtaining patent protection for their 
inventions in Germany might be discour­
aged from making their patents effective in 
that State due to the high cost of obtaining 
the prescribed translation of the specifica­
tion. In any event, the nullity ab initio in 
German territory of the patent that may 
already have been issued might in turn 
discourage imports into Germany of the 
product from other Member States for 
which patent protection has in theory been 
obtained, the reasons for this being both 
that the goods exported to the German 
market might attract the attention of third-
party infringers who were in a position to 
manufacture and market competing pro­
ducts at lower prices on that market, and 
also that patented products marketed in 
Germany might be imported in parallel into 
the exporting Member States at a lower 
price than that charged in those States by 
the patent holder or his licensees. However, 
I consider that simply contemplating such 
possibilities is insufficient to show that 
there is a restriction on the trade in goods 
between Germany and the other Member 
States. 3 5 There seems, therefore, to be 
nothing to be obtained from referring, as 
BASF did at the hearing, to the Court's 
judgment in Commission v United King­
dom, in which the Court held that a 
national measure granting a compulsory 
licence to a national manufacturer in 
exchange for reasonable remuneration in 
a case where demand for the patented 
product is satisfied on the domestic market 
mainly through imports, 'necessarily 
reduces imports of the patented product 
34 — The principle that Article 30 of the Treaty is applicable 
also in the absence of a substantial impact on the 
movement of goods across frontiers and even if the 
national measure in question does not exclude other 
possibilities for selling imported products was laid down 
y the Court in Joined Cases 177/82 and 178/82 Van de 
Haar and Kaveka de Meern [1984] ECR 1797. 
35 — See Opinion of Advocate General Darmon delivered on 
12 December 1989 in Case C-69/88 Kranz [1990] ECR 
I-583, point 13 (p. I-588). Advocate General Darmon 
states: 'The very broad definition of a "measure having 
equivalent effect" formulated in the Dassonville judgment 
has since 1974 served as a constant point of reference for 
subsequent judgments on the subject. The inherent breadth 
of that definition and the Court's concern, apparent in its 
judgments, not to reduce its scope fully explain why 
businessmen have attempted to have a wide variety of 
measures treated as measures having equivalent effect to 
quantitative restrictions on imports, where such an 
effect — however indirect and tenuous — cannot be 
altogether ruled out' (see point 16). 
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OPINION OF MR LA PERGOLA — CASE C-44/98 
from other Members States and thus affects 
intra-Community trade'. The comparison 
put forward by the plaintiff in the present 
case between the requirement to file a 
translation of the patent specification and 
the requirement to exploit the patent in the 
form of manufacturing the patented pro­
duct in the national territory seems to be 
arbitrary, because in the second case, unlike 
the first case, as a condition for preserving 
the relevant exclusive right, the patent 
holder was required to engage in conduct 
that affected the pattern of trade in goods 
across frontiers. 
Since, in the absence of any perceptible 
effect on imports, there can be no measure 
having equivalent effect, and the question 
now before the Court should be answered 
in the affirmative: the national legislation 
which the Bundespatentgericht has referred 
for the Court's consideration must be 
regarded as unrelated to the free movement 
of goods across the national frontiers of the 
Member States. 
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BASF V PRÄSIDENT DES DEUTSCHEN PATENTAMTS 
IV — Conclusions 
In the light of the foregoing I propose that the Court should answer the question 
referred by the Bundespatentgericht as follows: 
Article 30 of the Treaty does not preclude a national measure which provides that 
where the holder of a patent granted by the European Patent Office with effect 
for a Member State does not file with the patent office of the Member State in 
question within the prescribed time-limit a translation of the patent specification 
in the official language of that Member State, in a language other than that in 
which the European patent is drafted, the patent concerned shall be deemed to be 
void ab initio. 
I - 6285