Promoting innovation through patents - Green Paper on the Community patent and the patent system in Europe
Date: 1997-06-24
Institutions: European Commission
Subjects: European patent, innovation, patent, research and development, technological change

COMMISSION OF THE EUROPEAN  COMMUNITIES 

Brussels,  24.06.1997 
COM(97) 314 final 

Promoting innovation through  patents 

Green Paper on the Community  patent and the patent system  in Europe 

(presented by .the Commission) 

•'•,<ïA-hfc*V 

***  •tii1*'  *  • 

Summary 

Patents play a central role among the different  instruments available for protecting  innovation.  It 
is a fact that the patent system has become complicated  in Europe, with national patents  existing 
alongside  European patents  and  Community patents  (although the  Community  patent  system  has 
yet to actually come into operation). 

When  it  adopted  a  First  Action  Plan  for  Innovation  in  Europe,  the  Commission  deemed  it 
essential  to  gain  as  full  a  picture  as  possible  of the patent  system  in  Europe  in  order  to  assess 
whether  it  meets  the  needs  of  users,  examine  whether  new  Community  measures  are  necessary 
and consider what such measures  could involve and what form they could take. 

This  Green  Paper  pursues  those  three  objectives  and  provides  the  basis  for  wide-ranging 
consultation  of interested parties, the other  Community institutions  and the competent  authorities 
in  the  Member States  on  the  question  of  the  protection  afforded  to  innovation  by  the  patent 
system in Europe. 

The central part of the Green Paper  is devoted to the Community patent and the adjustments  that 
might need to be made to the  1975  Luxembourg  Convention  in order to offer  users  a  system that 
is accessible and legally secure at a reasonable cost. 

But  other  technical  questions  are  necessarily  raised  by  any  discussion  of  the  future  of  the 
Community patent,  such as the  further  harmonization  of certain  aspects  of patent  law that  could 
be necessary  at  Community  level, the  impact  of the information  society and  electronic  commerce 
on software-related  inventions, formalities,  and the use of patent agents. 

Lastly,  certain  issues  discussed  within  the  European  Patent  Organization  have  a  decisive 
influence  on the general  debate  on patents  in Europe and the promotion  of  innovation.  Some  of 
these issues are also tackled in the Green  Paper. 

CONTENTS 

1. INTRODUCTION 

2. THE  PATENT  SYSTEM  AND THE SINGLE MARKET 

2.1 History 

. 

2.2 The need for  further  Community action on the Community patent 

3. THE COMMUNITY  PATENT 

3.1 The need for  a unitary patent system 

3.2  Presumed weaknesses of the Luxembourg Convention 

3.3 The problem of the cost of translations and possible solutions 

3.4 The problem of the judicial arrangements and possible solutions 

3.5 Fees 

3.6  Links to be established  between the Community patent and the European patent 

3.7  Other questions 

4. FURTHER  HARMONIZATION  AT COMMUNITY LEVEL 

4.1 The need for  further  harmonization at Community level 

4.2 The patentability of computer programs and software-related  inventions 

4.3  Employees* inventions 

4.4  Formalities, use of patent agents and recognition of professional  qualifications 

4.4.1  Formalities 

4.4.2  Use of patent agents 

4.4.3  Professional  qualifications 

4.5 Additional  measures to make the patent system more attractive 

5. THE  EUROPEAN  PATENT 

5.1  General  structure ofthe  European patent 

5.2 The problem  ofthe  cost ofthe  European patent 

5.2.1  Fees 

5.2.2  The distribution  of revenue from  renewal  fees 

5.2.3  Translations 

lb 

2 

2 

3 

4 

4 

6 

8 

10 

12 

14 

14 

15 

15 

16 

17 

18 

18 

18 

19 

20 

21 

21 

22 

22 

2? 

24 

<\ 

l. 

INTRODUCTION 

Innovation  is vital  for  the viability  and  success of a modern economy.  In this  regard,  Europe 
seems  less  well  placed  than  its  main  competitors.  It  has  an  excellent  scientific  base  but  is 
less  successful  than  other  regions ofthe  world  at  converting  its  skills  into  new  products  and 
market  share, especially  in high-technology  sectors.1  Despite certain notable  success  stories, 
such  as  the  French  high-speed  train  (TGV)  and  the  GSM  mobile  phone  system.  Europe  is 
lagging  behind 
information  and 
communications  technology.  Concern  has  been  voiced  about the  extent  to  which  European 
industry  is  taking  part  in  the  development  of  the  information  society  and  electronic 
commerce; a special effort  needs to be made to improve the situation.2 

technical  fields,  especially 

in  many  of 

the  new 

In  economic  terms,  it  has  been  clearly 
It  is  vital  to  protect  the  fruits  of  innovation. 
established  that  companies  with  specialized  know-how  which  sell  branded  products  and 
patented  products or processes have a competitive advantage when it comes to maintaining  or 
expanding their market share. 

We  are  now  witnessing  the globalization  of our  economies.  At the  same time,  the  value  of 
what  is produced  lies more in the intangible investment component.  Despite this,  in a number 
of  key  indicators  of  research  effort  (the  percentage  of  GDP  allocated  to  research,  research 
costs  in  industry,  research  expenditure  per  capita  and  the  total  number  of  researchers  as  a 
proportion  ofthe  labour force) the European Union trails behind Japan  and the  United  States. 
Improving the patent system in Europe is not, in itself, going to reverse this  trend: this  can be 
achieved  only  by  a  fundamental  reorganization  of  European  research,  as  is  currently  under 
consideration.  However,  the  patent  system  must  under  no  circumstances  act  as  a  further 
brake  on  the  competitiveness  of  European  companies.  Ease  of  obtaining  patents,  legal 
certainty,  appropriate  geographic  coverage:  these  are  all  essential  criteria  for  the  effectue 
protection  of innovation in the European Union. 

It  must  be  noted  that  today,  almost  forty  years  after  the  Treaty  of  Rome  was  signed. 
companies  doing business within the Community still do not have access to a single system of 
patent  protection.  Although the advantages of such  a system  speak  for  themselves  (enabling 
rights to  be managed  centrally  and  affording  greater transparency  for  competitors),  the  1975 
Luxembourg  Convention,  which  was  supposed  to  establish  such  a  system,  has  never  been 
applied. 

The  Community  must  seek  to  remove  the  political  and  practical  obstacles  that  remain, 
preventing  the  single  market  from  realizing  its  full  potential.  It  is  currently  faced  with  an 
array  of  challenges,  such  as  the  need  to  create  more  jobs  by  increasing  the  international 
competitiveness  of  European  companies,  the  globalization  of  the  economy  (in  the  face  of 
which  the  single  market  is  an  essential  condition  of  success)  and  the  commitment  of  the 
Union to strengthening ties with the countries of central  and eastern  Europe. 

1  Green Paper on innovation (COM(95) 688 final. 20.12.1995). 

2  Commission  communication  entitled  "A  European 

initiative 

in  electronic  commerce' 

(COM(97)  157 final. 16.4.1997). 

1b 

2. 

T HE  P A T E NT  S Y S T EM  AND  T HE  SINGLE  M A R K ET 

2.1 

History 

Patent protection is ensured in the European Union by two systems, neither of which is based 
on a  Community  legislative instrument: the national  patent  systems  and the  European  patent 
system. 

The national patent was the first to appear.  It must be stressed that,  in the Member States  of 
the European  Community, the national patent was harmonized de facto  as, one by one, all the 
Member States acceded to the Munich Convention on the European  Patent.3 

system 

is  based  on 

The  European  patent 
the 
1973 Munich  Convention  on the  European  Patent,  or  European  Patent  Convention,  and  the 
1975 Luxembourg  Convention on the Community  Patent,  or  Community  Patent  Convention, 
which is an integral part ofthe Agreement relating to Community patents, signed in  1989.4  It 
was the  Member  States'  intention  in  1975 to ensure that the time-lag between the  entry  into 
force  ofthe two  Conventions was as short as possible. 

international 

agreements, 

two 

The  European  Patent  Convention  does  not  create  a  uniform  protection  right  but  it  does 
provide  the  applicant  with  protection  in  as  many  of  the  Signatory  States  as  he  wishes. 
Although  this  system  has  the  advantage  of  being  extremely  flexible,  it  also  has  certain 
drawbacks  associated  with  its  complexity  and  cost.  What  is  more,  there  is  no  provision 
within this system for a court with powers to settle patent disputes at European  level; there is 
the  risk  here  that  the  competent  courts  in the  Member States  will  hand  down  contradictory 
judgments. 

The  Community  patent  (introduced  by  the  Community  Patent  Convention)  is  intended  to 
bring  together  the  bundle  of protection  rights  resulting  from  the  grant  of  a  European  patent 
and  merge them  into a single, unitary  and autonomous, protection  right  valid  throughout  the 
Community  of  Twelve  and governed  only by the  provisions  ofthe  1989  Agreement  relating 
to  Community  patents.  However,  this  Convention  has  yet to take  effect  owing  to  delays  in 
ratification  by the twelve signatory Member States. 

The  aims  of  the  European  Patent  Convention  and  the  Agreement  relating  to  Community 
patents  differ  but  complement  each  other.  The  European  Patent  Convention  is  intended  to 
rationalize  the  grant  of  patents  by  establishing  a  centralized  procedure  managed  by  the 
European  Patent  Office  in  Munich.  It  is thus  open to  accession  by  any  European  State,  in 
some  cases  at  the  invitation  of  the  Administrative  Council  of  the  European  Patent 
Organization.5  The Agreement relating to Community patents  is designed to contribute to the 
achievement  of the  aims  of the  single market,  with  special  reference  to  fair  competition  and 
the free movement of goods. 

All the Member States of the European Community are members of the Munich  Convention  on the 
European  Patent,  as  are  also  three  non-member  countries:  Switzerland.  Liechtenstein  and  the 
Principality of Monaco. 

Agreement relating to Community patents, done at Luxembourg on  15 December  1989 (OJ No L 401, 
30.12.1989. p. 1). 

Article  166 ofthe  Convention. 

2.2 

The  need  for  further  Community  action  on  the  Community  patent 

The first  question  that needs to be addressed  is whether  and to what extent  interested  parties 
would  be. prepared  to  use  the  Community  patent  system  as  devised  in  the  Luxembourg 
Convention  if  it  were  at  last  to  come  into  effect  following  ratification  by  the  12  Signatory 
States.  Would  industry  be attracted towards the new  system  or would,  on the  contrary,  the 
existing  system  of  the  European  patent  and  national  patents  prove  sufficient  to  meet  its 
needs?  In the  latter eventuality,  use ofthe  Community patent would  be extremely  limited,  if 
not marginal. 

In  1975 the nine Member States which then made up the  European Community,  "desiring  to 
give  unitary  and  autonomous  effect  to  European  patents  granted  in  respect  of  their 
territories",6  concluded  the  first  version  of  the  Luxembourg  Convention.  The  definitive 
version  ofthe  Convention  was  adopted  in  1989.  The  Agreement  relating  to  Community 
patents signed in Luxembourg on  15 December  1989 concerns the Community of Twelve but 
does  not  deal  with the  1995  enlargement  in  which  Austria,  Finland  and  Sweden joined  the 
Community; the three new Member States are not directly concerned by the  1989 Agreement, 
although  they  are  legally  required  to  accede to  it.  In  accordance  with  the  provisions  of  the 
1989 Agreement,  a special agreement may be concluded between the  Contracting  States  and 
the acceding  State to determine the details of application ofthe  Agreement necessitated by the 
accession  of  that  State.7  This  would  require  such  a  special  agreement  to  be  negotiated, 
signed and then ratified  by all the signatories to the  1989 Agreement: obviously an  extremely 
cumbersome  and  complicated  procedure,  which  could  only  become  more  so  as  further 
countries join the European Union. 

The  patent  system  was  set  up  in  Europe  by  means  of  international  agreements.  This  is 
because,  at  the time, the  Community's  competence  in this field was  not  clearly  established. 
Times  have  changed,  however,  and  the  Court  of  Justice  of the  European  Communities  has 
repeatedly recognized that the Community is competent to take action in the field of patents  if 
this contributes to the attainment of one ofthe  objectives  ofthe  Treaty  (in this case, either the 
free  movement  of goods  or a  system  ensuring that  competition  is not  distorted).8  It  should, 
however, be stressed that,  in accordance with Article 235  ofthe  EC Treaty, the creation  of a 
new  Community  system of protection by means  of  a  regulation  would  require  unanimity,  in 
turn necessitating a consensus between Member States on all the technical  issues  involved. 

Adoption of a  Community regulation would offer  the  following  advantages: the date of entry 
into  force  of the provisions  would  be known  for  certain,  since it  would  be  fixed  irrevocably 
by  the text  itself  (whereas  the  entry  into  force  of  a  convention  is  uncertain,  depending  as  it 
does on the speed with which the signatory countries  ratify  it), and matters would be greatly 

Preamble  to  the  Convention  for  the  European  patent  for  the  common  market  (Community  Patent 
Convention) (OJ No L 17, 26.1.1976, p. 1). 

Article 7(4) ofthe  Agreement. 

Paragraph 27  of  the  Court's  judgment  of  ,13 July 1995  in  CaseC-350/92  Spain  v  Council 
[19951 ECR 1-1985 and  paragraph 59 of its Opinion  1/94  of  15 November  1994  [1994] ECR 1-5267 
(request  submitted  by  the  Commission  for  an  opinion  on  whether  or  not  the  Community  had 
exclusive competence to conclude the GATT Agreements). 

simplified  when  it came to future  enlargements ofthe  Community  since the regulation  would 
automatically  form  part ofthe  acquis communautaire and would not have to  be amended  or 
renegotiated.  Whether  or  not  the  Luxembourg  Convention  should  be  turned  into  a  legal 
instrument  covered  by  the Treaty  and  adopted  under  Article 235  is therefore  a  fundamental 
question  to be addressed. 

As soon as strategic discussions  began at Community level on innovation  and  how to  protect 
it and on its effects  on employment, the Commission deemed it necessary to take  stock  of the 
situation  concerning  the  Community  patent  and  the  patent  system  in  Europe.9  Hence  this 
Green  Paper,  which  first  tackles  the  shortcomings  resulting  from  the  absence  of  the 
Community  dimension  in  the  European  patent  system  and  the  obstacles  preventing  the 
Community  system  from  coming  into  operation,  before  going  on  to  look  into  the  related 
technical,  legal  and  political  questions,  such  as  further  harmonization  of  patent  law  at 
Community level. 

The Green Paper has three main objectives: 

to  gain  as  full  a  picture  as  possible  of  the  situation  as  regards  the  protection  of 
innovation  by the patent  system in the European Community; 
to examine  whether new Community measures are necessary and/or  whether  existing 
arrangements  need to be adjusted; and 
to consider what these new measures could involve and what form  they could  take. 

The  Commission  invites  all  interested  parties to take part  in a  wide-ranging  consultation  on 
the topic and to respond to the questions set out in this Green Paper. 

3.  THE COMMUNITY PATENT 

3.1 

The  need  for  a  unitary  patent  system 

The  Munich  Convention  ushered  in  major  improvements  in  the  patent  system,  such  as  a 
centralized procedure for the grant of patents based on uniform patent law and conducted  in a 
single  language,  a  reduction  in the  costs  of protection  where  it  is  sought  in  more  than  one 
Member State, a high quality protection right and de facto  harmonization-of the provisions  of 
national patent  law governing patentability, validity and the extent of protection. 

But, because  it is not supplemented  by the unitary  Community patent, the system  also has  its 
limitations: 

-  once  a  European  patent  has  been  granted,  its  entry  into  the  national  phase  gives  rise  to. 
considerable  costs  and  complicates  the  management  of  rights,  since  translations  of  the 
specification  have to be filed  with the national patent office  of each designated  country  and 
renewal fees  have to be paid  for each of those countries; 

-  the  management  of  proceedings  for  infringement  or  revocation  is  complex,  since  actions 
have  to  be  brought  before  the  national  courts  of  each  country  for  which  the  European 
patent has been granted; 

First  Action  Plan  for  Innovation  in  Europe,  presented  by  the  Commission  on  20 November 1996 
(COM(96) 589  final). 

- 

in the absence of a common court,  the emergence  of different  interpretations  of  European 
patent law by national courts is liable to undermine the value ofthe  European  patent; 

-  the  sum total  of the national  fees  payable  for  renewal  of  a  European  patent  constitutes  a 
heavy  burden  for  patentees,  especially  since  only part  of the proceeds  (currently  50%)  is 
used to defray  the costs incurred by the European Patent  Office  in managing the procedure 
for granting patents; 

-  the additional  costs of protection  for  each designated  country  are prompting  businesses  to 
be  selective  in  their  choice  of  countries,  with  effects  that  run  counter  to  the  aims  of  the 
single  market.  The  fact  that  requests  for  protection  are  concentrated  on  the  larger 
Member States  disadvantages  the  smaller  ones  in  terms  of  both  technology  transfer  and 
their attractiveness to investors.  And the limitation of protection to only part  ofthe  single 
market reduces its commercial value. 

If  the  Community  patent  system  was  brought  into  operation,  it  would  have  the  essential 
feature  of granting  patents with a unitary character  that would have equal  effect  throughout 
the Community and could be granted, transferred,  revoked or allowed to lapse only in respect 
ofthe  whole ofthe  Community.10  The more Member States, that joined  the  Community,  the 
wider the geographic coverage ofthe  protection afforded  by the Community patent. 

Although  the  Agreement  relating  to  Community  patents  could  have  been  expected  to  be 
ratified  reasonably  soon after  it was  signed in Luxembourg  in  1989, this  is  still not the  case 
more than seven years later,11 and it is debatable whether, in its present form,  the  Convention 
still attains the objectives assigned to it at the time. 

Some  commentators  -  in  academic  circles  more  than  in  industry  -  have  taken  up  a  stance 
which  they  claim  to  be  based  on  logic:  they  argue  that  the  approach  taken  towards  trade 
marks and proposed for  designs, which involves setting in place a unitary protection  right by 
means of a Community regulation, must necessarily  be followed  in the  case  of patents.  This 
argument is not strong enough on its own to justify  such an approach.  It is, however,  easy to 
imagine the advantages of a unitary patent system: 

-  the management  of rights would be greatly  facilitated,  since there would  no  longer  be  any 
national phase, which should also have the effect  of  reducing  costs  (no  fees  for  entry  into 
the national phase, savings in the use of professional  representatives, etc.); 

10  Article 2(2) ofthe  Community Patent Convention. 

11  Only  seven  Member States  have  so  far  completed  ratification  procedures:  Denmark,  Germany, 
the  United Kingdom  (source:  Council 

Greece,  France.  Luxembourg,  the  Netherlands  and 
memorandum of 22 November 1996). 

-  the  system  would  avoid  the  need  for  infringement  actions  to  be  brought  in  each 
Member  State  since  the  plaintiff  could  bring  all  the  actions  before  the  courts  of  the 
Member  State in which the defendant  is domiciled;12 

- 

it would offer  greater  legal certainty through the  creation  of  a  central  court  competent to 
hand down decisions on interpretation and validity of Community patents. 

In  response  to  this  Green  Paper,  potential  users  are  invited  to  give  their  views  on  the 
advantages  and disadvantages  of unitary patent protection, having due regard to the essential 
features  of  such  a  system:  wide  geographic  coverage,  necessary  costs,  application  of  the 
Community principle ofthe  exhaustion of rights, etc. 

Two questions will then have to be addressed: 

-  the  size  of  the  need  expressed  by  users  for  a  unitary  patent  system  will  first  have  to  be 

assessed; 

-  it will then have to be seen whether the objectives  to be  set  for  such  a  unitary  system  can 
be  attained  by  means  of the  Luxembourg  Convention,  either  in  its  present  form  or  after 
amendment. 

Questions 

Generally  speaking, what would  in your view be the advantages  and  disadvantages  of 
patent protection covering the entire Community, in terms  of: 

costs? 
geographic coverage? 
the problem of distortions of competition? 
the free movement of goods? 
legal certainty? 
the monitoring of  infringements? 
translation  requirements? 

What  are.  in  your  opinion,  the  essential  conditions  to  be  met  in  terms  of  costs  and 
legal structure if such a system is to function  effectively? 
If ratification  procedures currently in progress were finally to result  in the  Community 
patent  coming  into  effect,  would  you  be  prepared  to  use  it  as  provided  for  in  the 
Luxembourg  Convention? 
Any  adjustment  of  the  Luxembourg  Convention  would  require  the  unanimous 
agreement ofthe  Contracting  States, involving either amendment  ofthe  Convention  or 
the adoption of a regulation based on Article 235 ofthe  EC Treaty.  Do you think that 
such  adjustment  would  be  appropriate,  or  are  you  satisfied  that  the  European  patent 
together  with the national patent systems suitably meet the needs of industry? 

3.2 

Apparent  weaknesses  ofthe  Luxembourg  Convention 

The  elimination,  as  far  as  the  single  market  is  concerned,  of  all  the  disadvantages  and 
imperfections  ofthe  European  patent  system  as  outlined  in  point 3.1  is  the  very  purpose  of 
the Community patent.  But, according to information  in the Commission's  possession,  two 

12  Article  14(1) ofthe  Protocol on the settlement of litigation concerning the infringement  and validity 

of Community patents. 

fundamental  aspects  ofthe  Community  patent,  as  devised  in the  1989  Agreement,  are  seen  as 
detracting  from  its  usefulness  and  practical  attractiveness. 

For  one thing, there  are the extremely  high translation  costs  due to  the  need  to  have the  entire 
patent  specification  translated  into the  languages  of  all  the  Member  States.13  A  Community 
patent  granted  in  the  Community  of  Fifteen  would  require  ten  translations.  As  the  average 
cost  of  a  page  of  translation  is  DM  12814  and  patent  specifications  run  on  average  to 
20  pages,  total  expenditure  on  translation  would  be  in  the  region  of  DM  25  000,  which  is 
clearly  a  huge  cost  for  firms  to  bear,  particularly  SMEs.  That  cost  is,  however,  to  be 
compared  with the  major  advantage  conferred  by the unitary nature  ofthe  Community  patent, 
which  offers  uniform  protection  throughout  a market  of over  340  million  people.15 

The  second  problem  posed  by  the  Luxembourg  Convention  appears  to  be  that  ofthe  judicial 
arrangements  set  in  place.  The  Convention  provides  for  two  procedures  that  can  result  in 
revocation  of  a  Community  patent. 

Firstly,  an  application  for  revocation  may  be  filed  direct  with the  European  Patent  Office. 
If 
the  Revocation  Division  finds  that the grounds  for  revocation  laid  down  in the  Convention  are 
met,  it revokes  the patent  with  effect  throughout  the  Community.16 

There  is,  however,  a  second  means  of  obtaining  revocation  of  a  patent:  it  is  to  bring  a 
counterclaim  for  revocation  before  a  national  court  in  which  an  infringement  action  has 
already  been  initiated.  In such  cases,  if the  court  finds  that  any  ofthe  grounds  for  revocation 
laid  down  in  the  Convention  prejudices  the  maintenance  of  the  Community  patent,  it  orders 
the  revocation  ofthe  patent.17  A judgment  by  a  national  court  of  first  instance  which  has 
become  final  and  orders  the  revocation  of  a  Community^  patent  has  the  same  effects  in  all 
Contracting  States.  Notwithstanding  the  possibility  of  bringing  the  matter  before 
the 
Common  Appeal  Court  in  such  cases,18  the  powers  which  are  conferred  by  the  Convention 
on  a  single  national  court  to  order  the  revocation  of  a  Community  patent  throughout  the 
Community  is  considered  by  some  to  be  a  potential  source  of  legal  uncertainty. 
Some 
potential  users  ofthe  Community  patent  system  take  the  view that  there  is  too  great  a  risk  of 
a  patent  covering  a  territory  as  vast  and  economically  important  as  the  Community  being 
revoked  by  a judgment  handed  down  by  a  single national  court. 

This  is  compounded  by  a  further  difficulty:  once the  validity  of  a  Community  patent  has  been 
challenged  by  a  counterclaim  before  a national  court  following  an  infringement  action,  any 

13  Article  30(1) and  (2) ofthe  Community Patent  Convention. 

14 

15 

Figures are taken  from  documents produced  by the European  Patent  Office  in  Munich,  which  uses  the 
German  mark as its reference  currency. 

In the Community  of Twelve. 

16  Articles  55 to 58 ofthe  Community  Patent  Convention. 

17  Articles  15(2) and  19(1) ofthe  Protocol on the settlement  of  litigation. 

18  Articles 21 and  22 ofthe  Protocol  on the settlement  of litigation. 

other  national  court  in  which  another  infringement  action  has  been  brought  must  normally 
stay the proceedings.19  In view ofthe  length of proceedings, which are often  pursued  up to  a 
third  judicial  tier,  the  criticism  is  levelled  against  this  rule  that  it  is  liable  to  result  in 
implementation  of  the  legal  protection  conferred  by  the  Community  patent  being  held  in 
check. 

Questions 

Do  you  share  the  view  that  the  main  weaknesses  of  the  Community  patent  in  its 
present  form  (Luxembourg  Convention)  are  (i)  its  high  cost  due to  the  obligation  to 
have the patent specification translated into all Community languages and  (ii) the  legal 
uncertainty  associated  with  the  judicial  arrangements?  Can  you  see  any  other 
disadvantages? 

3.3 

The  problem  ofthe  cost  of translations  and  possible  solutions 

If the view  is  taken  that  the  cost  of translating  the  Community  patent  specification  into  all 
Community languages  constitutes a major  stumbling-block  to the success  of the  Community 
patent, then  solutions must be contemplated.  But we must acknowledge  from  the outset  that 
it is a thorny problem. 

One  solution  that  can  be  contemplated  is  that  envisaged  by  the  original  version  of  the 
Luxembourg  Convention,  which  dates  back  to  1975.  The  general  idea  was  to  limit  the 
translation  requirement  to  the  patent  claims  (Article 33).  But  this  limited  translation 
requirement  could  be  extended  by  means  of  the  reservation  provided  for  in  Article  88, 
whereby  any  Member  State could  declare that,  if the  patent  specification  was  not  published 
in  one  of  the  official  languages  of  that  State,  the  proprietor  of  the  patent  could  not  avail 
himself  in  that  State  of  the  rights  conferred  by the  patent.  The  system  established  by  the 
1975  Luxembourg  Convention  thus  involved  compulsory  translation  ofthe  patent  claims 
only, either  at the time the patent was granted or  shortly  afterwards.  Any  Contracting  State 
also  had  the  right  to  demand  a  translation  of the  patent  specification,  the  proprietor  of  the 
patent being free to decide when to file the translation, according to his protection needs. 

This  solution  would  enable  the  patentee  to  decide  how  urgently  he  needs  protection  in  a 
particular  Member  State and would allow him flexibility  in choosing the point when he files a 
translation  of  the  patent  specification.  The  provision  draws  a  distinction  between  cases 
where the patentee files the translation  of the patent  specification  within three  months  of  the 
date of publication  ofthe  mention ofthe  grant ofthe  patent,  more than three months  but  less 
than  three  years  later,  or  after  three  years  have elapsed.  In  the  first  case,  the  patentee  can 
avail  himself  of the  rights  conferred  by the patent  as  soon  as  the translation  is  filed.  In  the 
second  case,  he can  do so from  the same point in time but,  in respect  of use  of the  invention 
without his consent  before the translation  is filed, he can avail himself of the  rights  conferred 
by the patent  only to the extent  of claiming  reasonable  compensation.  In the third  case,  any 
person  who  has  used  or  made  effective  and  serious  preparations  for  using  the  invention 
before the translation  is filed may continue to use it on reasonable terms. 

A  second  solution  was  discussed  at  the  1989  Conference  on  revising  the  Convention  and 
appeared  to  meet  with  fairly  broad  agreement. 
It  involved  leaving  the  requirement  for 
translation  ofthe  full  specification  intact, but failure to file the translation  in one or more 

19  Article 34 ofthe  Protocol on the settlement of litigation. 

languages  was  not  to  result  in  revocation  of  the  Community  patent:  its  sole  consequence 
would  be that the patent would not take effect  in the Member State(s) concerned.  This  would 
constitute an exception  to the unitary  character  of the  Community  patent  and  would  make  it 
similar  in that respect to the European patent. 

A  third  solution  that  can  be  considered  with  a  view  to  reducing  translation  costs  is  the 
"package solution" developed  by the European  Patent Office  for the European  patent.20  The 
three main features  of this solution are: 

-  publication,  at  the  same  time  as  publication  of  the  application  or  as  soon  as  possible 
thereafter,  of an  enhanced  abstract  in the  language  of the  proceedings  and,  subsequently, 
of translations  into the languages of all Member States; 

- 

translation  ofthe  patent claims only at the time the patent is granted; 

-  translation  ofthe  full  patent specification  before any action is brought by the patentee  with 

a view to enforcing  the rights created by the patent. 

The  aim  of the  package  solution  is to  improve  the  supply  of  information  on  patents  and  to 
eliminate  the  serious  disadvantages  inherent  in  the  existing  system  while  alleviating  the 
financial burden on applicants. 

On  the  basis  of  the  projections  established  by  the  EPO  it  can  be  estimated  that,  if  it  were 
transposed  to the  Community patent,  the  package  solution  would  involve  the  preparation  of 
the  enhanced  abstract,  at  a  cost  of  approximately  DM  100,  and  its  translation  into  ten 
languages  at  DM  120 per language, i.e. a total translation  cost  for  the  new  abstract  of  some 
DM  1 300.  Since  a  patent  contains  on  average  3.5 pages  of  claims,  and  assuming  that  the 
translation  of claims  would  cost  DM 500 per  language, the  average translation  costs  for  the 
claims would work out at DM 5 000. 

Total translation  costs would therefore  be in the region  of  DM 6 300  per  patent  application, 
which  would  represent  a  saving  of  some  DM  18 700  per  application  in  comparison  with  a 
situation  in which the complete patent  specification  had to be translated  into  all  Community 
languages. 

Other solutions to the translation problem can be contemplated: 

•  doing away with the requirement  for  translations  altogether  or requiring  translation  ofthe 

claims only; 

•  establishing  a system of translation  "on demand",  whereby a translation  would  have to  be 
provided  only if a third party were to demand  one.  To finance  such a system,  it would  be 
necessary  either  to  set  up  a  reserve  fund  to  cover  the  cost  of  any  translations  that  were 
demanded  or to introduce a levy to cover the costs of insuring against  such an  eventualitv; 

• 

the  patent  specification  could  comprise  a  summary  description,  which  would  contain  the 
information  essential to an understanding ofthe  invention and interpretation  ofthe  claims 

20  Document  No CA/46/96  of  19 November  1996  presented  to  the  Administrative  Council  of  the 

European  Patent Organization. 

and  would  be  translated,  together  with  an  annex  containing  a  more  comprehensive 
description  that  would  not  normally  have to  be translated.  A  variation  on  this  idea  was 
recently  made  public:  the  shortened  version  of  the  description.  This  would  involve  the 
description  being  condensed,  at the  initiative  of the  applicant  but  with the  cooperation  of 
the examiner,  on completion ofthe  substantive examination ofthe  application. 

Whatever  the  scenario  chosen,  it  appears  to  have  been  accepted  that,  in  the  interests  of 
optimum  efficiency,  the  filing  of translations  should  not  be  devolved  to  the  national  patent 
offices  but  should  be centralized  at the European  Patent  Office.  This  is the approach  taken 
in the Luxembourg  Convention. 

Questions 

With  a  view  to  reducing  translation  costs,  are  you  in  favour  of  a  system  based  on 
Articles 33  and  88  ofthe  1975  Luxembourg  Convention  or  the  "package  solution" 
developed by the European Patent  Office? 
If  neither  of  the  above  solutions  were  feasible,  would  you  be  in  favour  of  an 
arrangement  that  would  constitute  an  exception  to  the  unitary  character  of  the 
Community  patent,  whereby  failure  to file translations  would  result  in the  patent  not 
taking effect  in the Member State(s) concerned? 
Do  you  regard  the  other  alternative  solutions  that  have  been  proposed  for  reducing 
translation  costs  as  appropriate  and  promising  (translation  on  demand,  shortened 
description, etc.)? 
Do  you  share the view that  centralization  of the filing of  translations  of  Community 
in  the 
patent  specifications  at  the  European  Patent  Office,  as  provided  for 
Luxembourg  Convention, is an important aspect ofthe translation arrangements? 

3.4 

The  problem  of the judicial  arrangements  and  possible  solutions 

The problem posed  by the judicial  arrangements  set in place by the  Luxembourg  Convention 
was  described  in  point 3.2  above.  To  remedy  the  presumed  disadvantages  of  these 
arrangements,  it  should  be  seen whether  adjustments  can  be made to the machinery21  in  the 
context  of  a  Community  initiative  aimed  at  integrating  the  Community''  patent  more 
effectively  into the legal system covered by the Treaty. 

One  solution  would  be to  give  Member States'  national  courts jurisdiction  for  infringement 
actions,  actions  for  a  declaration  of  non-infringement  and  all  actions  in  respect  of  the  use 
made  ofthe  invention  prior  to publication  ofthe  mention ofthe  grant  ofthe  patent.  On  the 
other  hand,  actions  for  revocation  of  Community  patents  could  fall  within  the  exclusive 
jurisdiction  of a new  revocation  division to be set up  within the  European  Patent  Office.  In 
other  words,  contrary  to  the  provisions  of  the  existing  Convention,22  the  national  courts 
would not have jurisdiction for counterclaims  for revocation of Community patents. 

If  a  counterclaim  for  revocation  were  brought  before  a  national  court  in  response  to  an 
infringement  action,  the  court  would  have  to  stay  the  infringement  proceedings  until  the 
competent  revocation  division  at the  EPO had decided  on the validity  ofthe  patent.  In  other 
words, questions to do with the validity and revocation of Community patents could no 

21  Chiefly  to avoid the consequences of Article 20 ofthe Protocol on the settlement of litigation. 

22  Article  15( 1 )(d) of the Protocol on the settlement of litigation. 

10 

longer  be decided  by national  courts, but only by bodies  operating  at  Community' level.  To 
prevent  any  proliferation  of  counterclaims  for  revocation  by  alleged  infringers,  it  would  no 
doubt  be  necessary  to  limit the  obligation  to  stay  the  proceedings  to  cases  where  the  court 
hearing the infringement  action considers that there are serious  grounds  affecting  the  validity 
ofthe  Community patent. 

Starting from two  separate lines  of action, jurisdiction  for  validity  and  revocation  questions 
would be exclusively conferred  on a body operating within the EPO and, thereafter,  the  Court 
of  First  Instance  of  the  European Communities.  Two  avenues  would  thus  be  open  for 
securing the revocation of a Community patent: 

-  filing  an application for .revocation direct with the European Patent Office;23  or 

-  bringing  a  counterclaim  for  revocation before  a national  court,  which  would  have  to  stay 
the proceedings until the revocation division had taken its decision.  Having due regard  for 
that decision, the national court could then settle the dispute over  infringement. 

As regards the conditions in which an application for revocation may be filed, the grounds  for 
revocation,  examination  of  the  application,  revocation  or  maintenance  of  the  patent,  and 
publication  of  a  new  specification  following  revocation  proceedings,  the  present  wording  of 
Articles 55 to 59 ofthe  Luxembourg Convention could probably be maintained. 

To  allow  appeals  against  decisions  on the validity' of  Community  patents,  an  appeal  to  the 
Court  of  First  Instance  of the  European Communities  (CFI)  would  lie  from  decisions  taken 
by  the  revocation  divisions.  Appeals  could  be  brought  on  grounds  of  lack  of  competence, 
infringement  of an essential procedural requirement,  infringement  ofthe  Treaty- or ofthe  legal 
instrument  establishing  the  Community  patent  or  of  any  rule  of  law  relating  to  their 
application,  or misuse of powers.  The CFI would be competent both to revoke and to  reverse 
the  decision  challenged.  Certain  questions  to  do  with  the  organization  of  the  CFI's  work 
could  arise  in  this  context,  and  the  possibility  of  setting  up  within  the  CFI  a  specialized 
chamber for  dealing with Community patent issues could be considered.24 

A final appeal would lie from  decisions on Community' patents  by the Court  of First  Instance 
to  the  Court  of  Justice  of  the  European Communities.  This  right  of  appeal  would  be 
restricted to points of law.25 

To  ensure that  these  arrangements  are  fully  effective,  it  would  have to  be  clearly  stipulated 
that  decisions  which  have  become  final  and  which  order  the  revocation  or  amendment  of  a 
Community' patent have the same effects  in all Member  States. 

23  Article 55 ofthe  Community Patent Convention. 

24 

If this suggestion were accepted, the detailed arrangements for setting up the new revocation  division 
at the EPO and the possibility of appealing against its decisions before the Community  Courts would 
be the subject of detailed study; this would hinge chiefly on the nature ofthe  legal  instalment  chosen 
for setting these procedures in place. 

25  Article  168a(l) ofthe EC Treaty. 

11 

Another  possible  solution  would  be  based  more  closely  on  the  architecture  of  the  1975 
Convention.  Under the Convention, a national  court  in which an action  for  infringement  had 
been  brought  would  retain jurisdiction to decide on  a  counterclaim  for  revocation;  however, 
its  decision  on  that  counterclaim  would  affect 
in  the 
Member State in which the court was located.  An exception to this limitation ofthe  effect  of 
the decision  could be contemplated  in cases where an action for  infringement  brought  before 
a  court  in  the  Member State  of  the  alleged  infringer's  domicile  related  to  infringements 
committed  in  another  Member State.  In  such  cases,  the  revocation  order  would  affect  the 
Community  patent  in  that  other  Member State  too.  Such  a  solution  would  shield  the 
proprietor ofthe  patent from the risk of generalized and immediate revocation of his right. 

the  Community  patent  only 

A  general  point  needs to  be made  here.  It  is  not  possible to  create  new  courts  under  legal 
arrangements  which  are  covered  by the  Treaty,  unlike  the  arrangements  established  by  the 
Luxembourg  Convention,  which  involve  setting  up  a  common  appeal  court  for  Community 
patents.  Under  legal  arrangements  covered  by  the  Treaty,  cases  can  be  heard  only  by  the 
Court  of  First  Instance  or  the  Court  of  Justice  of  the  European Communities;  the  solution 
outlined here therefore  does not envisage the creation of a common appeal court  for patents. 

Question 

As far  as judicial arrangements are concerned, are you in favour  of a  system: 

which would give  exclusive jurisdiction  for  revocation  proceedings  to  bodies 
operating  within  the  European  Patent  Office  (revocation  division)  and,  on 
appeal, to the Court of First Instance ofthe  European Communities, or 
which  would  leave  jurisdiction  for  revocation  proceedings  with  national 
courts,  while  restricting  the  effects, of  their  decisions  to  the  territory  of  the 
Member State in which they are located? 

3.5 

Fees 

It  should  first  be  stressed  that  the  European  Patent  Office  should  be  in  charge  of  technical 
operation  of  the  Community  patent,  whether  the  latter  comes  into  existence  in  the  manner 
provided  for by the Luxembourg  Convention or in a legal form that is covered  by the  Treaty. 
The  procedural  fees  (filing  fee,  search  fee,  examination  fees,  etc.)  levied  in  the  case  of  the 
its 
European  patent  will  therefore 
December  1996  meeting,  the  Administrative  Council  ofthe  European  Patent  Organization 
took  two  major  decisions  designed  to  reduce  procedural  fees  significantly.  One  of  those 
decisions  reduces  the  amount  of  the  filing,  search  and  designation  fees,26  while  the  other 
postpones  the  date  on which  designation  fees  fall  due to  six  months  after  publication  of  the 
search report. 

likewise  apply  to  the  Community  patent.  At 

These new procedural  fees, which are to come into effect  from  1  July  1997, would  also  apply 
to  the  Community  patent.  There  should  be  no  designation  fee  for  the  Community  patent 
since  it  is  unitary  and  affords  uniform  protection  throughout  the  Community:  no  particular 
Member  State is, strictly speaking, "designated".  If a designation  fee or its equivalent  were 

26  The filing fee is to be reduced from  DM 600 to DM 250, the European search fee  from  DM 1  900 to 
DM  1  700,  the  international  search  fee  from  DM 2 400  to DM 2 200  and  the  designation  fee  from 
DM 350 to DM 150.  The reductions will represent a total saving of DM 124 million in a full vear. 

12 

nevertlieless applied, it would at the very least have to be capped so that it did not exceed  the 
amount paid for a limited number of designations in the case ofthe  European patent. 

If the  Community patent were to migrate towards  a  legal system covered  by the  Treaty,  the 
financial provisions  relating to  renewal  fees  would have to be revised.  The  1989 version  of 
the  Luxembourg  Convention  provides  that  revenue  derived  from  fees,  less  the  payments  to 
the  European  Patent  Organization  by  way  of  renewal  fees,  are to  be  distributed  among  the 
States  parties  to  the  Convention  in  accordance  with  a  scale  laid  down  therein.27  Under  a 
legal  system  covered  by  the  Treaty,  such  a  system  could  not  work  and  would  have  to  be 
abolished. 

The  body  in  charge  of  operation  of the  Community  patent  system  should  be  financially  in 
balance,  which means that  it  should  retain all the different  fees  paid by  users.  The  revenue 
side  of  its  budget  should  therefore  comprise,  without  prejudice  to  other  items,  the  revenue 
from  fees  payable  under  the  fees  regulation  and,  if necessary,  a  contribution  charged  to  the 
general  budget  of  the  European Communities.  The  regulation  on  fees  for  the  Community 
patent  should,  for  its  part,  be  adopted  by  way  of  the  committee  procedure,  on  a  proposal 
from the Commission. 

Fees  should  be  set  such  that  the  corresponding  revenue  normally  enables  the  budget  to  be 
balanced.  This  means  that,  as  a  general  rule, the  body  operating  the  system  would  not  be 
able to make over any share ofthe  revenue to other national or international bodies. 

Lastly, given the unitary character  of the Community patent and therefore  the absence of any-
choice as  regards the geographic  extent of the protection  it confers,  thought  should  be  given 
to the  question  of whether  additional  measures  should  be taken  on the  fees  front  in  order  to 
make  the  system  attractive  to  users.  The  possibility  should  be  discussed  of  setting  the 
renewal fees  for the Community patent payable to the European  Patent  Office  such that they 
amount to less than the total  amount  of the renewal  fees  for  a  European patent  covering  the 
whole ofthe  Community. 

It has  also been  suggested that the proprietor  of a Community  patent  should  have the  option 
of not paying a share ofthe  annual  renewal  fee corresponding to certain Member States; this 
would make the system more flexible  and would enable the Community patent to be renewed 
in respect  of  some  Member  States  only.  This  system,  which  is  sometimes  referred  to  as  the 
"à  la carte Community patent",  would introduce a form  of partial waiver of rights, restricted 
to certain Member  States, through non-payment of a proportion ofthe  annual renewal  fees.28 

Questions 

Should the  financial  arrangements  laid  down  in the  Luxembourg  Convention  and  the 
European  Patent  Convention  concerning  the  renewal  fees  for  Community  patents  be 
amended  such that  the  revenue from  these fees  accrues  in full  to the  European  Patent 
Office  in order to defray  the costs of granting and administering  Community patents'? 

27  Article 20 of the Community Patent Convention. 

28  This would require the amendment of Articles 48 and 49 ofthe Community Patent Convention. 

13 

Given the alternative means of protection available to users (European  patent,  national 
patents,  etc.),  do  you  consider  that  further  measures  are  necessary  to  make  the 
Community patent system attractive, for example a reduction in renewal  fees? 
Would  it  be  feasible  to  give  proprietors  of  Community  patents  the  option  of  partial 
waiver ofthe  protection they confer,  in respect of a limited number of Member  States, 
through non-payment ofthe  annual renewal fees? 

3.6 

to  be  established  between 

Links 
European patent 

the  Community  patent  and 

the 

The  Community  patent  should  be  a  unitary  system  conferring  rights  that  can  be  relied  on 
throughout  the  Community.  The  larger  the  Community  becomes,  the  wider  the  geographic 
coverage  of  the  protection.  This  will  no  doubt  be  an  advantage,  but  it  could  also  prove 
problematic  for  some businesses,  which might find it  difficult  to  assess,  at  an  early  stage  in 
the  procedure,  the  need  for  such  extensive  protection.  In  addition  to  the  possible  need  for 
protection  in  certain  countries  that  are not  Member States  of the  European Community7,  the 
European  patent  will  retain  its  usefulness  in that  it  enables  the  firm  concerned  to  designate 
certain countries and not necessarily all the Member States. 

There is therefore  undoubtedly  a need to introduce  some flexibility  into the patent  system  in 
Europe,  and  this  could  possibly  be  achieved  by  establishing  links  between  the  Community 
patent and the  European patent.  The advantage of allowing such conversion would be that  it 
would make it possible initially to cover the whole of the single market  and then to  limit  the 
geographic  coverage  only  during  or  towards  the  end  of  the  procedure  for  the  grant  of  the 
patent. 

An  applicant  for  a  Community  patent  would  thus  be  able  to  ask  for  his  application  to  be 
converted  into  a European patent application as long as the application  existed  in  legal  tenus 
(which would  not be the case if the application had  been withdrawn  or  was  deemed  to  have 
been withdrawn  or  if it had been refused).  A European  patent  application  deriving  from  the 
conversion of a  Community patent  application would  have the same date of filing or  priority 
as the Community patent application it replaces. 

The  opposite  situation,  in  which  a  European  patent  application  could  be  converted  into  a 
Community patent application, would be more difficult  to envisage, except in cases where the 
European patent application designated all the Member  States ofthe  European  Community. 

It should  furthermore  be borne in mind that the possibility of converting  a Community  patent 
(once  it has  been granted)  is  already  provided  for  by the  second  sentence  of Article  30(6)  of 
the  1989 Luxembourg  Convention. 

Question 

Do  you  think  it  necessary  to  establish  links  between  the  Community  patent  and  the 
European  patent,  for  example  by  making  it  possible  to  convert  a  Community  patent 
application  into  a  European  patent  application?  Would  you  wish  to  see  any  other 
links established?  If so, how could they operate? 

3.7 

Other  questions 

The Annexes to the Agreement relating to Community patents  signed  in Luxembourg  in  1989 
contain  several  declarations and resolutions on certain substantive points of patent  law. 

14 

In the context  of a new initiative regarding the Community patent, thought  could  be given to 
the question of whether action should be taken on some of these resolutions. 

The  resolution  on  common  rules  on  the  granting  of  compulsory  licences  in  respect  of 
Community  patents  has  become  largely  irrelevant  since  a  comprehensive  set  of  rules 
governing  compulsory  licences  has  been  incorporated  in  the  GATT/WTO  Agreement  on 
trade-related  aspects of intellectual property rights (TRIPs).29  If a new initiative covered  by 
the  Treaty  were taken in the field ofthe  Community patent,  all the provisions  ofthe  TRIPs 
Agreement could  be either  reproduced  in full  or explicitly  referred  to  in the  legal  instrument 
used. 

According to the resolution  concerning prior use or possession,  a procedure is to  be initiated 
for  revising the  Convention in order to create a right, based on prior use or possession  of  an 
invention which is the subject-matter  of a Community patent,  which will have uniform  effect 
throughout the territories ofthe  Member States.  The right of prior use or possession  depends 
on good faith.  It is debatable whether there is any need for further  action in this  area in order 
to ensure that the effects  of prior use or possession are uniform throughout the  Community. 
It should be borne in mind that all European countries agreed on rules governing prior use in 
the  context  of the  first  part  of the  diplomatic  conference  for  the  conclusion  of the treaty  on 
patent harmonization (The Hague,  1991). 

Question 

Do  you  think  that  questions  of  prior  use  or  possession  need  to  be  hannonized  at 
Community level in the context of a new initiative concerning the Community patent? 

4. 

FURTHER HARMONIZATION AT COMMUNITY LEVEL 

4.1 

The  need  for  further  harmonization  at  Community  level 

The  European  Community  has  been  able to  use  its  powers  to  legislate  in  the  patents  field, 
notably  in order to take  account  of technological  progress  in sectors  with  high  value  added. 
Two  Parliament  and  Council  Regulations  have thus  been adopted  creating  a  supplementary 
protection  certificate  for  pharmaceutical  and  plant-health  products  with  a  view  to  plugging 
the  gap  in protection that  was penalizing  research into those  products.  In  another  field,  the 
Commission  has proposed  an instrument  specifying  the conditions  in which  a patent  may be 
obtained  for a biotechnological  invention.30 

These examples  demonstrate that if the need is clearly established, the Community' is capable 
of  proposing  and  adopting  appropriate  legislation.  The  question  arises  whether  further 
harmonization,  at  Community  level,  of  patent  law  in  other  areas  of technology  or  on  other 
aspects would be desirable. 

29  Article 31 (a) to (1) of the TRIPs Agreement. 

30  Proposal for a European Parliament and Council Directive on the legal protection of biotechnological 

inventions (COM(95) 661 final,  13.12.1995; OJ No C 296, 8.10.1996). 

15 

4.2 

The  patentability  of computer  programs  and  software-related  inventions 

The  development  of  the  information  society  and  electronic  commerce  offers  the  European 
economy  a  genuine  opportunity  but  also  confronts  it  with  new  challenges.  The  design  and 
constant  improvement  of new computer programs  and software  is set to play  a major  role in 
the  development  of  the  information  society  and  electronic  commerce  since  the  programs 
concerned have to afford  swift,  reliable and accurate access to the information  and  interactive 
services  sought.  The  Commission  has  already taken  certain  steps  with  a  view  to  setting  in 
place  legislation  ensuring,  throughout  the  Union,  an  adequate  level  of  protection  of 
innovation  linked  to  the  information  society. 
In  November  1996  it  thus  adopted  a 
communication  on  follow-up  to  the  Green  Paper  on  copyright  and  related  rights  in  the 
information  society.31  Rules  on copyright  and  related  rights  are  essential  if the  information 
society  and  electronic  commerce  are  to  function  properly  in  the  European  Union,  since  the 
content of most ofthe  new services lends itself to protection by intellectual property rights. 

In  the  European Community  today,  computer  programs  can  enjoy  copyright  protection  as 
literary  works32  but  cannot  be  protected  "as  such"  by  patents.  The  patentability  of 
software-related  inventions does not call into question the existing protection  of  software  by 
copyright law.  Faced with the increasing importance of software, the European Patent  Office 
and  the  national  patent  offices  of  some  Member States  have  in  recent  years  granted 
thousands  of  patents  protecting  logical  models  composed  of  basic  ideas  and  principles  that 
constitute "technical solutions to technical problems".  These patents were not granted  for  the 
software  per  se  but  in  respect  of  software-related  inventions  consisting  of  hardware  and 
specific  software. 

At international  level, Article 27 of the TRIPs  Agreement  does not  rule  out the  patentability 
of  computer  programs,  and  some  non-member  countries  do  allow  them  to  be  the 
subject-matter  of patents.  On 28 February  1996 the  United States  published  new  guidelines 
for  examiners  concerning  software-related 
inventions:  whereas  a  claim  relating  to  a 
mathematical  algorithm  was  accepted  in  the  past  only  if  a  physical  transformation  was 
present,  a  more pragmatic  approach  is  advocated  today  based  on the  necessary  "utility"  of 
the invention.  This has the effect  of broadening the scope of software-related  inventions  that 
are patentable.  Software  was, however,  already  extensively  patented  in the  United  States:  a 
computer  program  carried  on a tangible  medium,  e.g.  a diskette,  was patentable  even  before 
the new guidelines were published.33 

Japan  is also  examining  whether the  guidelines  issued to examiners  on this  question  need  to 
be  amended.  On  8 August  1996  the  Japanese  Patent  Office  thus  published  new  draft 
guidelines in accordance with which computer programs would not be patentable as  such,  but 
inventions  would  be  patentable  where  they  involved  a  high  degree  of  "technological" 
creativeness using the laws of nature. 

31  COM(96) 568 final, 20.11.1996. 

32  Council  Directive  91/250/EEC  of  14 May 1991  on  the  legal  protection  of  computer  programs 

(OJ No L 122, 17.5.1991, p. 42). 

33  Decision ofthe  US Patent and Trademark Office of 26 April  1996 in re Beauregard. 

16 

In  the  Community,  interested  parties  have  already  been  consulted  on  these  matters  via  the 
questionnaire  on  industrial  property  rights  in  the  information  society  drawn  up  by  the 
Commission  in  July  1996.  The  answers  received  vary  widely:  some  respondents  wished  to 
see  the  present  balance  maintained  between  copyright  (for  programs  as  such)  and  patent 
protection  (for  software-related  inventions)  and  action  limited  to  ensuring  that  the  relevant 
provisions  are applied uniformly  in the different  Member States; others felt,  on the  contrary, 
that  the  time  had  come  to  reshape  the  system  and,  in  particular,  to  consider  deleting 
Article 52(2) ofthe  European Patent Convention so as to allow the patentability  of  computer 
programs as such.  In the opinion of those advocating such an approach, the requirement that 
the  invention  be  of  a  "technical" nature  should  be  maintained  but  once  such  a  feature  was 
present, a program which is recorded on a medium and puts the invention into effect  once it is 
loaded and started up would become patentable. 

Given  the  position  taken  by  some interested  parties,  who  advocate  deleting  Article 52(2)  of 
the  European  Patent  Convention, the possible practical  consequences  of such  a  step  need  to 
be  examined,  with  special  reference  to  the  simultaneous  application  of  copyright  law  and 
patent law to the same work or invention. 

Questions 

As  far  as  the  patentability  of  computer  programs  and  software-related  inventions  is 
concerned,  do you think that: 

existing  differences  between  judicial  precedents  in  the  Member  States  are 
liable to create barriers to trade or distort competition'? 
differences  between  Europe and its main trading  partners  are  liable to  create 
difficulties  for European firms? 
these  differences  call  for  further  harmonization  at  Community  level  in  this 
area? 

As  far  as  the patentability  of  computer  programs  and  software-related  inventions  is 
concerned,  do  you  think  that  deletion  of  Article 52(2)  of  the  Munich  Convention 
should ultimately be proposed? 

If so, what  is your view of the simultaneous  application  of cop} right law  and 
patent law to the same creation or invention? 
If not, do you nevertheless think that the guidelines  for  EPO examiners  should 
be amended in this respect? 

4.3 

Employees'  inventions 

There  are at present great differences  between  Member States'  rules governing  inventions  by 
employees.  Employees'  inventions  are  inventions  made  by  research  staff  or  technical  staff 
(researchers,  engineers,  etc.)  under  an  employment  contract  with  a  firm  or  laboratory. 
In 
some  Member States  the  question  is  dealt  with  in  general  terms  by  patent  law  (e.g.  in 
France34  and  the  United Kingdom35);  in  others  a  specific  law  has  been  enacted,  as  in 
Germany  and  Sweden.  The general  rule which is common to all  such  legislation  is that  if an 
invention  is made in the course ofthe  employee's normal duties under his employment 

34  Article L.611 -7 of the Intellectual Property Code. 

35  Sections 39 to 43 ofthe  Patents Act ("Employees' inventions"). 

17 

contract  (i.e.  if the employee has an  inventive  role), the patent belongs to  the employer.  For 
the  rest,  the  precision  of  the  legislation  varies  greatly  from  one  Member  State  to  another. 
Some laws contain  procedural  provisions on the filing  of patent applications  by the  inventor, 
stipulate whether the inventor can or must have his name mentioned on the patent, etc.  Other 
laws  distinguish  between  "permanent",  "temporary"  and  "occasional"  inventive  roles,  with 
different  rules for  determining ownership ofthe  patent in each case.  Other laws, such  as the 
German  act,  contain  a  long  series.of  provisions  relating  to  the  remuneration  of  employees 
with  an  inventive  role  and  lay  down  the  precise  method  for  calculating  additional 
remuneration. 

Clearly, the application of these different  rules by businesses has an impact on research work 
and  management.  The  more  the  legislation  is  detailed  and  complex,  the  more  human 
It  could  be  that 
resources  the  firm  has  to  devote  to  the  management  of  such  matters. 
differences  between  national  laws  on  employees'  inventions  are  having  an  effect  on  the 
freedom  to provide services in the single market and/or on the conditions of competition. 

Question 

Are existing differences  between Member States' laws on employees'  inventions  likely 
to  have  an  impact  on  innovation  and  employment  conditions  and/or  the  freedom  to 
provide  services  and/or  the  conditions  of  competition?  Are  they  such  as  to  justify 
harmonization at Community level? 

4.4 

Formalities,  use  of  patent  agents  and  recognition  of  professional 
qualifications 

4.4.1 

Formalities 

Formalities  currently  differ  between  Member States  as  regards  the  forms  to  be  completed, 
time-limits to  be  observed,  infonnation  to be provided, the way  in which  information  has  to 
be presented and legalization of documents.  Procedures also occasionally differ  following  the 
grant of a patent.  This means that detailed knowledge of each national  system  is necessary  in 
order to be able to give valid  advice to applicants  or patentees.  Work  currently  in  progress 
within  the  World  Intellectual  Property  Organization  (WIPO)  with  a  view  to  concluding  a 
treaty  harmonizing  patent  law with  regard  to such  formalities  shows  the  way  forward.  It  is 
questionable whether, once such a treaty were adopted, there would be any need to  engage in 
further  harmonization  of  formalities  at  Community  level,  for  example  with  regard  to  the 
infonnation  required  on the  invention,  the  inventor  and  the  applicant,  the  way  in  which  the 
infonnation  is to  be presented  and  the  degree  of authentication  required,  and  the  number  of 
forms  to  be completed,  so that  the  application  is treated  in the  same  manner  throughout  the 
Community. 

4.4.2  Use  of patent  agents 

Most  Member  States'  laws  contain  provisions  which,  in  one  way  or  another,  require 
applicants  for  or  proprietors  of  patents  to  have  a  domicile  or  address  for  service  in  their 
territory  insofar  as  the  protection  requested  there  is  granted.  The  applicant,  or  his 
representative,  is  not  usually  allowed  to  deal  direct,  from  his  home  Member  State,  with  the 
patent offices  ofthe  other  Member States without having a domicile or  address  for  service in 
those Member States. 

Some national  rules  also make it mandatory  to use the  services  of a  qualified  representative 
who  is  domiciled  in  the  national  territory.  These  rules  prevent  a  single  representative, 
domiciled  in one Member State, acting  for  his  client  vis-à-vis the patent  offices  of the  other 
Member States. 

In connection  with this question, the Court has stated in Sâger  v Dennemeyer36  that,  having 
regard  to  the  particular  characteristics  of  the  provision  of  services  in  certain  sectors  of 
activity,  specific  requirements  imposed  on  the  service  provider  cannot  be  regarded  as 
incompatible with the Treaty, particularly where they are intended to protect the recipients  of 
the  services  in question against the harm which they could  suffer  as  a  result  of legal  advice 
given  to  them  by  persons  who  did  not  possess  the  necessary  professional  or  personal 
qualifications.  However,  as  a  fundamental  principle  ofthe  Treaty,  the  freedom  to  provide 
services may be limited only by rules which are justified  by imperative reasons relating to the 
public  interest  and  which  apply  to  all  persons  or  undertakings  pursuing  an  activity  in  the 
State of destination, insofar  as that interest is not already protected by the rules to which the 
service provider is subject  in the Member State in which he is established.  In the case  ofthe 
monitoring and renewal of patents through the payment of fees, the service provider  does not 
advise his clients but confines himself to alerting them when the renewal fees have to be paid. 
The  Court held that  rules  reserving  such  services  for  persons  holding  a  special  professional 
qualification,  such  as  lawyers  or  patent  agents,  were  disproportionate  in  relation  to  the 
objective  sought. 

It is worth considering whether the consequences of this judgment  should be codified  in some 
way  at  Community  level,  either  through  legislative  hannonization  or  by  means  of  an 
interpretative  communication,  and  whether  any  such  instrument  should  also  cover  other 
procedural aspects such as addresses for service and requirements regarding domicile.  In any 
event, such codification  would not affect  the possibility of initiating infringement  proceedings 
if  certain  national  rules  were  to  prove  incompatible  with  the  freedom  to  provide  services 
(Article 59 ofthe  EC Treaty) or the right of establishment  (Article 52 ofthe  EC Treaty). 

4.4. S  Professional 

qualifications 

As  far  as  professional  qualifications  are  concerned,  the  scope  of  Directive 89/48/EEC 
includes  qualifications 
in  the  field  of  patents.  Under  that  Directive,  professional 
qualifications  acquired  in one Member State must be recognized throughout the  Community, 
but  the  Member  States  are  entitled  to  require  the  person  concerned  either  to  undergo  an 
adaptation  period  or to take  an  aptitude test.  The  fonn  this  aptitude test  is to take  and  the 
topics covered have so far not been finally  decided in several Member States. 

In  accordance  with  the  Directive  (see  in  particular  Article  1(g)),  and  indeed  with  the 
proportionality  principle, the aptitude test  should be limited to what  is necessary.  Since the 
substantive  law practised  by the professional  has  already  been to  a great  extent  hannonized 
and transposed  by the Member States, the aptitude test  should  be  limited to  cases  where the 
matters  covered  by  the  applicant's  education  and  training  "differ  substantially  from  those 
covered by the diploma required in the host Member State".37  The European  qualifying 

36  Judgment of 25 July 1991 in Case C-76/90 [19911 ECR 1-4221. 

37  Article 4(1 )(b) of the Directive 89/48/EEC. 

19 

examination  (Article  134(2)(c) ofthe  European Patent  Convention)  could  also be deemed,  as 
far  as  patents  are  concerned,  an  adequate  qualification  for  making  representations  to  the 
national  offices. 

In its judgment  in Gebhard** the Court  of Justice held that the possibility  for  a national  of  a 
Member State of exercising his right of establishment,  and the conditions  for  his  exercise  of 
that right, must be determined in the light ofthe  activities  which he intends to  pursue  on the 
territory ofthe  host  Member State.  Where the taking-up  or the pursuit  of a  specific  activity 
is  subject  to  certain  conditions,  such  as  the  obligation  to  hold  particular  diplomas,  those 
conditions  must  satisfy  four  fundamental  requirements:  they  must  be  applied  in  a 
non-discriminatory  manner; they must be justified  by imperative  requirements  in the  general 
interest; they must be suitable for securing the attainment ofthe  objective which they pursue; 
and  they  must  not  go  beyond  what  is  necessary  in  order  to  attain  it  (principle  of 
proportionality). 

Questions 

On the question ofthe  harmonization at Community level ofthe  procedural  formalities 
connected with the grant and renewal of patents: 

Do  you  think that  such  harmonization  is  necessary  and,  if  so, that  it  should 
cover  the  use  of  patent  agents,  addresses  for  service  and  the  choice  of 
domicile?  Can you suggest any other topics that should be covered? 
Do you think that any such harmonization  should take the form  of  legislation 
(a directive) or of a recommendation addressed to Member States?39 

4.5 

Additional  measures  to  make  the  patent  system  more  attractive 

It is clear that one ofthe  obstacles to optimum use ofthe  patent  system in Europe  is the  cost 
involved  not  only  in  obtaining  protection,  but  also  in  enforcing  it  before  the  courts. 
Suggestions  have  been  made  for  facilitating  use  of  the  patent  system  by  businesses,  and  in 
particular  SMEs. 

One line of action could be to hannonize national laws on utility models, a particular  form  of 
protection for technical innovation that can be obtained swiftly  and cheaply and is well-suited 
to  the  needs  of  many  SMEs.40 
In  the  patents  field,  consideration  could  be  given  to  the 
possibility of setting up a system of legal costs insurance that would be financed individually 
by each patent holder.  If a business which had taken out an insurance policy of this type had 
to  take  court  action  in  order  to  enforce  the  rights  conferred  on  it  by  a  patent,  it  would  be 
entitled to submit  a claim to the insurance company for  reimbursement  of its  costs.  Various 
alternative arrangements  could be considered: either individual policies taken out by  firms,  or 
an  insurance  pool  that  could  be joined,  on  a  voluntary  basis,  by  all  businesses  in  a  given 
sector,  in order to spread the risks more evenly.  In the case of  SMEs  in particular  and  given 
the  difficulties  they  usually  face  in  securing  protection  for  their  innovations,  some  fonn  of 
public  financing  (or  part-financing)  of  the  system  of  legal  costs  insurance  could  be 
considered. 

38  Judgment of 30 November  1995 in Case C-55/94 [1995] ECR 1-4165. 

39  Directives must be transposed into national law by Member States, whereas recommendations are not 

legally binding. 

40  Green Paper on the protection of utility models in the single market (COM(95) 370 final. 19.7.1995). 

20 

Since the  idea would  be to enable private  initiatives  to develop  (such  as  the  insurance  pool) 
or to allow action at national  level  (such as  public  financing),  care would  clearly  have to  be 
taken  to  ensure  that  such  measures  were  compatible  with  Articles 85  and  92  of  the 
EC Treaty. 

Question 

To make the patent  system more attractive, particularly  for  SMEs, howr do you  think 
that  implementation  of the protection  afforded  by patents  could  be facilitated?  What 
are  your  views  on the  possibility  of  introducing  legal  costs  insurance  in  the  patents 
field?  Do  you  consider  that  additional  harmonization  measures  need  to  be  taken  at 
Community level in this area? 

5. 

T HE  E U R O P E AN  P A T E NT 

5.1 

General  structure  ofthe  European  patent 

The  European  patent  came  into  existence  following  the  conclusion  of  the  European  Patent 
Convention,  which  was signed  in Munich on 5 October  1973.  The  Convention  establishes  a 
single  procedure  for  the  grant  of  patents,  which,  once  granted,  are  subject  to  the  national 
rules  of  the  Contracting  States  designated  in  the  application.  The  number  of  member 
countries  ofthe  European Patent  Organization  is currently  18.  It is worth noting that,  under 
the Europe Agreements concluded between the European Community and  its  Member  States, 
on the one hand, and the countries of central and eastern Europe, on the other, the central  and 
eastern European countries have undertaken to be ready within five years to apply to join the 
Munich  Convention. 

According to opinions voiced by users ofthe  patent system in Europe, the European patent is 
giving ample satisfaction  both in tenus ofthe  calibre ofthe  work carried  out by the  European 
Patent  Office  and  in terms  ofthe  value ofthe  protection  right  which it  confers.  Two  major 
improvements  are,  however,  eagerly  awaited  by  users.  One  concerns  the  patentability  of 
biotechnological  inventions,  an  area  in  which  the  present  uncertainties  should  be  resolved 
through  early  adoption  of the new proposal  for  a  Directive  presented  by  the  Commission  in 
late  1995.  The other relates to reductions  in the fees  charged  by the European  Patent  Office 
and  changes  to  the  rules  governing  translations  of  the  European  patent;  the  first  issue  has 
been settled and the second is currently under discussion within the  Office. 

For  the  rest,  the  current  structure  of  the  patent  system  in  Europe,  in  which  the  European 
Patent  Office  is an international organization  set up by treaty  and  is therefore  independent  of 
the Community, does not appear to pose the slightest problem for users.  It should  be stressed 
that the European Commission  is entitled to attend meetings ofthe  Administrative  Council  of 
the European  Patent Organization as an observer and that it decided, three years  ago, to avail 
itself  fully  of the  opportunities  thus  available  to  it  for  making  its  views  known  on  issues  of 
common interest to both organizations. 

Question 

Do you  share the view that the current structure ofthe  European  Patent  Office,  a body 
which  is  independent  of the Community  institutions, does not entail  disadvantages  for 
users  which  should  be  overcome  through  a  different  legal  stnicture  which  is  more 
closely integrated  into Community law? 

21 

5.2 

The  problem  of the  cost  of the  European  patent 

5.2.1  Fees 

In  1996 the Administrative  Council  ofthe  European  Patent  Organization,  supported  by  the 
Commission,  came  to  the  conclusion  that,  in  view  of  the  Organization's  revenue  and  the 
persistent level of its surpluses, a reduction  in the cost of patents  should  be considered  and  a 
signal given to users ofthe  system 

The  thrust  of  the  decision  on  the  level  of  fees  taken  by  the  Administrative  Council  on 
6 December  1996 was  explained  in point 2.6  above.  This  was  a highly  significant  decision, 
which demonstrated that the European Patent Organization had taken on board  the  criticisms 
voiced  by  users  and  was  able,  in the  prevailing  circumstances,  to  respond  positively.  The 
Administrative  Council also decided on that date that applicants  for  European patents  would 
no longer have to pay the designation  fees  when filing the application  but  could  do  so up  to 
six months after  publication ofthe  search report. 

These  decisions  are  in line with the  wishes  of users.  On the  assumption  that  the  European 
Patent  Office  will  at  some  time  in  the  future  again  have  some  room  for  manoeuvre 
financially,  it is worth considering which fees should be reduced as a matter of priority. 

Another  question  which  is  repeatedly  raised  in  Europe  is  whether  it  would  be  desirable  to 
introduce, as has been done in the United States, a special scale of fees  - e.g.  50% lower  -  for 
SMEs.  Such  an  approach,  which could  be applied  not  only to  SMEs  but  also  to  individual 
inventors  and  universities,  would  involve  reducing  all  the  fees  payable  by  a  uniform  rate. 
The  problems  to  do  with  the  definition  of  small  and  medium-sized  enterprises  have  been 
resolved  by  the  Commission  Recommendation  of  3 April  1996,41  which  standardizes  the 
definitions  of SMEs, small enterprises and micro-enterprises  used at Community- and  national 
level.  But it should  be examined  whether all  SMEs  would  automatically  quality- for  reduced 
fees,  and the effects  that  reduced  fees  for  SMEs  would have should  also be  studied  in detail. 
At  the  present  time,  some  41%  of  European  patent  applications  originating  in  Europe  are 
filed by  SMEs  (i.e. businesses  with  fewer  than  250  employees); consequently,  in  a  balanced 
budget  situation,  a 50% reduction  for  SMEs would have to be offset  by  a general  increase  in 
fees  of  approximately  22%. 
It  could  also  prove  necessary  to  stipulate  that  any  false 
representations  in this  connection  would  lead to the -loss of protection,  along  the  lines  of  the 
system in place in the United States ("fraud  on the  Office"). 

Questions 

If,  while  maintaining  standards  of  quality  and  efficiency, 
the  European  Patent 
Organization  were  in  a  position  to  continue  its  drive  to  control  costs  and  further 
reduce  the  fees  charged  by the  Office,  which  fees  should  be  reduced  as  a  matter  of 
priority? 
Do you  think that  other  aspects  of the  system  of fees  for  the  European  patent  should 
be changed?  Can you  see an advantage in, or a need  for,  introducing  reduced  fees  for 
SMEs,  along  the  lines  of  existing  arrangements  in  the  United  States  ("small  entities 
fees:;)? 

41  OJ No L  107, 30.4.1996. 

22 

5.2.2 

The distribution  of  revenue  from  renewal 

fees 

Under  the  Munich  Convention,  the  amounts  of  the  procedural  fees  collected  by  the 
Organization  and  the  share  of  revenue  from  renewal  fees  for  European  patents  paid  to  the 
Organization  by  Contracting  States  must  be  fixed  such  that  the  corresponding  income 
enables the budget to be balanced.  Since, once they have been granted,  European patents  are 
governed  by national  law, it is stipulated that the Organization is to receive revenue from  the 
Contracting  States  by way  of a  share  of the annual  renewal  fees  they  collect.  Although  the 
Convention  stipulates that the proportion of renewal fees to be paid to the  Organization  may 
be fixed at up to 75%, the Administrative Council decided in  1984 to reduce it to 50%. 

According to  estimates  that  have been  made, the result  of this  share-out  formula  is that  the 
total  revenue of the national offices  has  on average  remained  unchanged  in comparison  with 
the  situation  prevailing  before  the  European  patent  system  was  introduced,  although  their 
workload has on average fallen by half. 

Interested parties have repeatedly voiced their opposition to any further  reduction  in the  share 
of revenue from  renewal fees  accruing to the  Organization  and  called  for  the  Organization's 
surplus  income  over  its  expenditure  to  be used  in  its  entirety  in  order  to  reduce  procedural 
fees. 

The way  in which revenue from  renewal  fees  is used  varies greatly between the  Contracting 
States. 
In  some  States,  the  share  of  renewal  fees  for  European  patents  retained  by  the 
national authorities  is not allocated to activities linked to the operation  of the patent  office  or 
intended  to  promote  innovation  since it  is paid  straight  into the general  government  budget; 
some commentators  have even described  such a situation as a "tax on innovation" insofar  as 
the  revenue  from  renewal  fees  is  not  earmarked  for  innovation-related  activities. 
In  these 
circumstances, thought should be given to the allocation and use of revenue from  annual  fees. 

One last point  should  be made on the question of fees: the total  cost  of  a  European  patent  is 
also due to the procedures  for validating European patents in the different  Contracting  States 
and  the  fees  charged  in  connection  with  those  procedures.  The  mere  cost  of  publishing  a 
European patent in the different  countries thus amounts to DM 4 762. 

Questions 

On  the  question  of  the  distribution  of  revenue  from  the  renewal  fees  for  European 
patents: 

Do you  consider  it  appropriate that  revenue  from  renewal  fees  for  European 
patents should be partly used to finance the national patent  systems? 
If  so,  should  an  objective,  non-automatic  link  be  established  between  the 
needs voiced by the national  systems  and the allocation  of financial  resources 
in order to make that allocation more transparent? 
What,  in your opinion,  are the innovation-related  tasks  perfomied  at  national 
level  that  could  legitimately  be  financed  via  the  share-out  of  revenue  from 
renewal  fees  for  European  patents? 
As  far  as  the  promotion  of  innovation  is  concerned,  is  it  not  the  case  that 
some aspects  ofthe  share-out  system  have adverse effects,  particularly  where 
the bulk  of the  resources  is paid  straight  into the  general  government  budget 
and is not earmarked  for activities directly linked to innovation? 

23 

5.2.3  Translations 

One item that looms large in the total cost of patent protection is the extremely high cost of 
having European patents translated/validated.  It is estimated that  European industry  alone 
spends some DM 430 million per year on this item, which means that an "average" European 
patent  granted  for  the  eight  most  commonly  designated  Member States  costs  more  than 
DM 20 000 merely to  be translated/validated.  Aware  of this  problem,  the  Administrative 
Council  of the  European  Patent  Organization  has  looked  into  several  solutions,  and  these 
were outlined in point 3.3 above. 

Question 

Do you regard the "package solution" developed by the European Patent Office  with a 
view to reducing translation costs as appropriate and effective?  If not, why not?  Can 
you imagine other realistic solutions, bearing in mind that, if they were to be put into 
effect  and to prove effective,  they would have to be adopted  unanimously  or  by  an 
overwhelming majority of Member States? 

24 

ISSN 0254-1475 

COM(97) 314 final 

DOCUMENTS 

EN 

08  16 

Catalogue  number  :  CB-CO-97-309-EN-C 

ISBN  92-78-21652-6 

Office  for  Official  Publications ofthe  European  Communities 

L-2985  Luxembourg