Opinion of the Economic and Social Committee on 'Promoting innovation through patents: Green Paper on the Community patent and the patent system in Europe'
Date: 1998-02-25
Institutions: European Economic and Social Committee
Subjects: European patent, innovation, patent, research and development, technological change

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Opinion of the Economic and Social Committee on ‘Promoting innovation through patents:
Green Paper on the Community patent and the patent system in Europe’

(98/C 129/03)

On 25 June 1997 the Commission decided to consult the Economic and Social Committee,
under Article 198 of the Treaty establishing the European Community, on ‘Promoting
innovation through patents: Green Paper on the Community patent and the patent system in
Europe’.

The Section for Industry, Commerce, Crafts and Services, which was responsible for preparing
the Committee’s work on the subject, adopted its opinion on 6 February 1998. The rapporteur
was Mr Bernabei.

At its 352nd plenary session (meeting of 25 February 1998), the Economic and Social Committee
adopted the following opinion by 128 votes to one with one abstention.

1. The Economic and Social Committee

Whereas:

1.1.
patents are an essential instrument for stimulat-
ing investment in the research and technology sector.
Consistent and efficient European law on patents there-
fore represents an essential element for ensuring the
competitiveness of enterprises in the European Union;

1.2.
a fully integrated European innovation market
requires a unitary European system for protecting
industrial property, with a Community patent accessible
particularly for small and medium sized enterprises
which are innovative in high-technology terms or ‘pre-
cursors’ as stressed in the Committee opinion (CES
986/97 of 1 and 2 October 1997) on the impact on SMEs
of the steady reduction in funds allocated to RTD in the
European Union;

the Community patent system covered by the
1.3.
1975 Luxembourg Convention and by the 1989 Agree-
ment relating to Community patents which have never
come into operation, no longer seems adequate to
achieve such unitary protection;

1.4.
there is an urgent need to give the Community
patent problem maximum priority, because of its econ-
omic aspects and implications for competitiveness and
technological and industrial development in a global
market;

1.5.
there is therefore an urgent need to review the
patent system and relaunch it on a basis which would
enable it to take off effectively before the European
Union is further enlarged;

Recommends to the Council, the Commission and the
European Parliament that:

1.6.
The Community patent be adopted on the basis
of a Community regulation, to be adopted under
Article 235 of the Treaty.

1.7.
The Community patent must have a unitary
character and must therefore cover the whole Com-
munity, whereas an à la carte or variable geometry
Community patent would be unacceptable because it
conflicts with the requirements of the single market.

1.8.
The Community patent system must co-exist
with national patents and the European patent. An
applicant for a European patent must — in the stage
before the granting of the patent — have the opportunity
to convert his Community patent application into a
European patent application.

1.9.
The Community patent must involve accessible
costs which make it comparable to a European patent
requested for a limited number of countries. In particu-
lar, the initial costs should be reduced.

1.10. With a view to containing costs, the problem
of translations should be tackled on the basis of the
‘global solution’ evaluated by the EPO, as follows:

the patent application can be deposited in any
1.10.1.
of the EU languages, but with an obligation for it to be
translated into one of the working languages (English,
French or German);

1.10.2.
the EPO prepares and publishes a detailed
technical summary of the application in the language of
the procedure, at the same time as the application is
published. The EPO should arrange translation into the
other two official languages and publish the text in the
three aforementioned languages via Internet. In addition,
the EPO should promptly forward these texts to the
Commission departments (DG XIII) responsible for
exploiting and disseminating research findings, to be
translated into all the other Community languages and
published through the CORDIS databank. The cost of
translation would be borne by the EU as a cost of
exploitation and dissemination of research findings. In
any case, the Commission will need in future to make
the language
a general assessment of

the cost of

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arrangements adopted in the context of an enlarged
European Union.

promote innovation in Europe on which the ESC has
issued opinions on a number of occasions (1).

1.10.3. when the patent is granted, the applicant
should ensure translation of patent claims at his own
expense;

1.10.4.
prior to any legal action, the patent holder
should arrange for the translation of the whole patent,
again at his own expense.

1.11.
The system of jurisdiction should be based on
a limited number of national courts of first instance,
competent to hear infringement cases and counterclaims
for revocation, but with the limited power of declaring
the patent non-opposable to the (alleged) infringer as
regards that specific type of (alleged) infringement
(purely ‘inter partes’ effect). As an alternative, it could
be laid down that national courts — competent to
judge in the matter of infringements — can declare a
Community patent invalid (when subject to a counter-
claim for revocation) subject to the condition that the
revocation would be suspended until confirmed by an
appeal court.

1.11.1.
The power to revoke a patent with ‘erga
omnes’ effect should be reserved even in the first instance
to the EPO’s cancellation division, or preferably a new
court to be set up (subject to the remarks on the previous
alternative).

A specialized chamber of the Court of First
1.11.2.
Instance of the EC should operate as court of second
instance.

In the matter of fees, SMEs, universities and
1.12.
non-profit-making research bodies should enjoy prefer-
ential conditions; in addition, an active policy in favour
of SMEs should be adopted, by setting up patent
consultancy units attached to the representative organ-
izations.

1.13.
ization of the right of prior use.

Consideration should be given to harmon-

1.14.
Article 52(2)(c) of the European Patent Conven-
tion should be amended to make it possible to patent
computer programmes.

2.2.
The Commission recognizes the role played
by patents in protecting innovation, while drawing
attention to the complexity and disadvantages of a
system such as that currently prevailing in Europe,
which involves the coexistence of ‘national patents’, the
‘European patent’ (i.e. the unified system for the deposit
and granting of patents which then gives rise to a range
of national patents) and (but only on paper) the
‘Community patent’ (i.e. a patent which would not only
be deposited and examined centrally, like the European
patent, but would give rise to a single protection
document covering the whole area of the European
Union).

2.3.
The green paper is in five parts: the first is
an introduction dealing in general terms with the
relationship between innovation and patents; the second
gives the history of the European patent and the
Community patent and explains the reasons why this
could be a good time for a new Community initiative
on the Community patent, also with a view to future
enlargements; the third part analyses the Community
patent system in terms of the opportunities which it
offers but also in terms of the excessive costs and other
disadvantages which it can involve; the fourth part is a
discussion of whether it is desirable to harmonize at
Community levels certain aspects of substantive law
(particularly as regards the patentability of computer
programs and software-related inventions), and certain
aspects of procedural law; finally, the fifth part discusses
certain questions relating to the current system of the
European patent and its sensitive aspects, particularly
in terms of costs.

2.4.
The green paper takes as its starting point a
consideration of the advantages and limitations of a
European patent system based on the 1973 Munich
Convention (EPC).

This system has undoubtedly meant considerable pro-
gress for protection of patents in Europe, setting up a
centralized procedure (in Munich) for deposit and
examination of patent applications, thus enabling users
to protect their inventions, through a single application
and a single procedure, in one or more of the countries
which are party to the EPC.

2.

Introduction — summary of the Commission docu-
ment

The Green Paper on the Community patent and
2.1.
the patent system in Europe forms part of the action to

(1) Opinion CES 700/96 on the Green Paper on Innovation,
1.5 — OJ C 212, 22.7.1996; Opinion CES 987/97, 1.10.1997
on the Commission Working Paper: Towards the fifth
framework programme — scientific and technological
objectives — OJ C 355, 21.11.1997; Opinion CES 986/97,
2.10.1997 on the Impact on SMEs of the steady, widespread
reduction in funds allocated to research and technological
development in the EU — OJ C 355, 21.11.1997.

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Moreover, under this system the patent issued by the
European Patent Office (EPO) corresponds to a range
of national patents, each of which requires a translation
into the language of the country concerned, logically
limiting the scope of its protection to that country;
moreover, each of these patents can be the subject of
legal action only before the national courts.

2.5.
The characteristics of the Community patent
would be quite different: this form of patent, created
by the Luxembourg Convention (CPC) of 1975, and
modified and updated by the Agreement relating to
Community patents (ARCP), signed in Luxembourg in
1989, would enable the applicant, through a centralized
procedure for deposit of applications, to obtain uniform
protection throughout the European Union and to refer
— at least to some extent — to central legal bodies
responsible for deciding on the interpretation and
validity of the patent.

The green paper acknowledges

2.6.
least
implicitly) that the main problem preventing the ‘take-
off’ of the Community patent (for which the agreement
of 1989 has not yet been ratified) is the very high cost of
translation into the national languages which the system
would involve.

(at

The green paper suggests a range of possible solutions
to this problem.

2.7.
The green paper identifies another important
obstacle to the attractiveness of the Community patent,
in the system of jurisdiction set up for it and in particular
in the fact that revocation of the patent (with effect
throughout the EU) could be decided not only by a
central body (EPO) but also by national courts, when
considering a counterclaim for revocation submitted by
an alleged infringer called before the national courts.

The green paper also proposes some possible alternative
solutions to the problem of the system of jurisdiction.

2.8.
The green paper goes on to examine the problem
of the level of fees relating to the Community patent
and the possibility of providing for/perfecting a system of
transition from the Community patent to the European
patent (and possibly vice versa).

2.9. On the question of possible further harmon-
ization of patent law at Community level, the green
paper raises above all the question of whether it would
be desirable to modify a system set up by the EPC
[Article 52(2)(c)] on the basis of which computer
programs as such cannot be patented.

Other subjects covered are possible harmonization as
regards inventions by employees, and formalities and
recognition of qualifications for the profession of patent
consultant.

Finally, the green paper considers some possible
2.10.
from the Community
improvements which (apart
patent) could be made to the existing system for the
European patent, particularly as regards fees and cost
of translations.

3.

Innovation and patents — Europe, USA and Japan

Comparing the European (EU) system with the
3.1.
systems of its main competitors, the USA and Japan,
Europe is clearly at a disadvantage.

3.2. Whereas in the USA and Japan enterprises can
take advantage of a system which makes possible
the unitary protection of technological
innovations,
throughout the territory concerned and at limited cost,
in Europe protection is still fragmented and the costs
are higher.

3.3.
Indeed, a European firm which, through the
European patent system, wishes to obtain patent protec-
tion in eight Member States — i.e. for a market broadly
comparable to that of the USA — has to pay about
DM 36 000, as against a cost equivalent to DM 3 000
for the USA and DM 2 200 for Japan (1).

3.4.
If one compares the cost of obtaining a European
patent (covering eight Member States as above) and
maintaining it throughout its duration with the cost of
a USA patent, Europe comes off even worse (2).

3.5. Moreover, SMEs do not enjoy any particular
concession in Europe, whereas in the USA SMEs benefit
from a 50 % reduction in fees, under Section 41(h)(1) of
the US Patent Act (1). The above could explain, at least
in part, the fact that about two-thirds of innovative
European SMEs (of which there are about 170 000) do
not deposit patents (3), and as stressed in Opinion CES
986/97 (4) the trend is strongly accentuated by a new

(1) J. Straus ‘The present state of the patent system in the

European Union’, EC, 1997.

(2) In the case of the European patent this cost is calculated
at US $120 000, in the case of the United States at only US$
13 000. Cf. J. Straus, ibidem.

(3) Estimate in EC, Green Paper on innovation, 1995.
(4) Opinion CES 700/96 on the Green Paper on Innovation,
1.5 — OJ C 212, 22.7.1996; Opinion CES 987/97, 1.10.1997
on the Commission Working Paper: Towards the fifth
framework programme — scientific and technological
objectives — OJ C 355, 21.11.1997; Opinion CES 986/97,
2.10.1997 on the Impact on SMEs of the steady, widespread
reduction in funds allocated to research and technological
development in the EU — OJ C 355, 21.11.1997.

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approach which would draw a distinction between small
technology-intensive enterprises or ‘precursors’ which
have unused applied research capacity on the one hand,
and on the other the majority of enterprises which
simply make use of the ‘final products’ of RTD.

5.2. Completeness and consistency of the system

The Community patent would be one of the three
Community pillars for protection of industrial property,
namely:

4. Basic questions raised by the green paper

— the Community patent;

The green paper raises a number of questions; the most
important of these are listed below. An attempt will be
made to answer these and other questions in part 5 and
the following parts of this opinion:

— the Community mark, already up and running (2);

— the Community design, which is in preparation (3).

a)

Is it really necessary to get the ‘Community patent’
off the ground?

A simple harmonization of national laws could add the
utility model (4) to these three pillars.

b) How can the problem of languages and translations

be solved?

c)

Is it possible to envisage a ‘variable geometry’ or ‘à
la carte’ Community patent?

d) Is it necessary to provide for the possibility of
transfer from the Community patent to the European
patent (and vice versa)?

e)

f)

Is it possible and desirable to deprive national judges
of the opportunity to revoke a Community patent?

Is it necessary for the operator of the Community
patent system to be totally self-financed through
patent fees?

5. General comments

In approaching the problems raised by the Commission
green paper and the fundamental questions involved, it
is thought necessary to adopt the following general
criteria:

5.3. Community patent and competitiveness of Com-

munity industry

5.3.1.
Launching a European patent system which
includes the Community patent is essential if research
findings and new technical and scientific knowledge are
to be transformed into industrial and commercial
successes, thereby putting an end to the ‘European
innovation paradox’ and providing an incentive for
private investment in RTD, which is currently much
lower in the EU than in the USA and Japan.

5.3.2.
The rules for the Community patent should be
seen in the light of the fourth indent of the first paragraph
of Treaty Art. 130, under which the aim of Community
and Member State action to ensure competitiveness of
Community industry is ‘fostering better exploitation of
the industrial potential of policies of innovation, research
and technological development’ (5).

5.4. Community patent and innovation monitoring

5.1. Patents and single internal market

It is acknowledged that patenting is an important
indicator of R&D capacity (6).

The Committee has repeatedly stressed the need to
harmonize patent law in the European Union in order
to consolidate the single internal market (1).

Thus, if the Community patent system becomes oper-
ational and efficient at low cost, its use by Community

However, even harmonization of certain substantive
provisions of national law on patents is not sufficient to
complete the single market. It appears to be necessary
to introduce a single patent protection title, namely the
Community patent.

(1) Legal protection for biotechnological inventions (see Con-

clusions 5) — OJ C 295, 7.10.1996.

(2) Council Regulation No 40/94/EC, 20.12.1993.
(3) Proposal for a European Parliament and Council Regu-
lation on Community designs and models (COM(93) 342
final) in OJ C 29, 30.1.1994.

(4) Green Paper — utility models in the single market — OJ

C 174, 17.6.1996.

(5) Green Paper on innovation, 1.5. — OJ C 212, 22.7.1996.
(6) Cf. Z. Griliches and others,
ductivity’, Chicago, 1984.

‘R&D patents and pro-

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firms will also be a yardstick for their productivity in
terms of innovation and valid R&D results.

It is thus necessary to have a Community patent, while
maintaining the national and European options.

5.5. Need for competitive costs

It is clear from the above data that European enterprises,
especially SMEs, are at a cost disadvantage in protecting
their innovations on their ‘domestic’ market (the EU),
as compared with enterprises of the main competitive
countries (USA and Japan) on their respective domestic
markets (1).

One of the essential requirements for the Community
patent is therefore the containment of costs.

5.6. Need for early proposals

Apart from the economic and competition consider-
ations mentioned in 5.1 and 5.3.1 above, the Committee
would stress the importance of issuing a draft regulation
on the Community patent by spring 1999, in order to
provide the EU with a competition instrument before
going on to future enlargement.

6. Specific comments

In the light of the above criteria, the ESC has the
following comments on the basic questions raised by
the green paper and set out above:

6.1. Need for the Community patent

According to some circles, the present system, based
partly on national patents and partly on the centralized
system for deposit and patent granting (European patent)
has so far worked quite well: however, the needs of the
single market appear to make it essential also to have a
Community patent.

Comparison with the main competitors (USA and Japan
— see point 3 above) also brings out the strangeness of
a ‘Europe system’ which, while preparing to introduce
a single currency, does not yet have a unitary system for
protecting inventions.

One can also take account of the current success of
the Community mark, which goes beyond the most
optimistic expectations. This success (while remem-
bering the very different characteristics of mark and
patent) suggests that, if a protection right with Com-
munity validity existed, enterprises would be prepared
to adopt it.

(1) See Section 3 above.

The Community patent could be created (or revived) by
adopting a Community Regulation under Article 235 of
the EC Treaty.

It is important for SMEs, and especially for those which
operate solely on the domestic market, that the national
patent offices should continue. In view of the rapid
spread of technology these offices make a valuable
contribution and are necessary to preserve national
patent expertise.

6.2. Language problem

In tackling this crucial problem (perhaps the central
problem for the Community patent) the following points
should be borne in mind:

It is legitimate for the Member States to be
6.2.1.
reluctant a priori
to give up using their national
languages, but the dual nature of the patent should be
borne in mind: on the one hand, an instrument of
information on the state of the art, and on the other, a
technical/legal instrument for protecting inventions.

6.2.2. Whereas it may be regarded as essential to have
the patent in the national language when it functions as
a legal instrument, other solutions are possible for its
function as an information instrument on the state of
the art.

6.2.3.
According to reliable assessments, only a small
percentage (1-3 %) of translations of patents issued by
the European Patents Office are in fact consulted (2).

6.2.4.
The problem of translations into the national
languages also has political significance which justifies
decisions at political level.

Among the solutions presented in the green
6.2.5.
paper, further attention should be given to the Package
Solution presented by the EPO and mentioned by
the Commission in the green paper, which in the
Committee’s view could be adapted as follows:

6.2.5.1.
In accordance with the arrangements for the
European patent (3), applications for Community patents
should be deposited in one of the three official languages
of the procedure (English, French or German), or there
is the option as before of depositing them in the language
of the Member State of the EU in which the applicant is
established, with an obligation to send the translation
in one of the aforementioned three official languages

(2) Information provided by the president of the EPO, I. Kober,
at the Epidos Annual Conference 1996, and recorded in
the proceedings of the conference.

(3) EPC, Article 14.

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of the procedure, by the deadline laid down in the
regulation (1).

6.3. Unacceptability of ‘à la carte’ Community patent

6.2.5.2.
The European Patent Office should prepare
in the language of the procedure, a clear technical
summary (enhanced abstract) of the patent application.
This summary should be published simultaneously with
the publication of the application. The EPO should see
to the translation of the abstract into the other two
official languages as well and publish it in the three
languages via Internet. The EPO should forward these
texts promptly to the Commission departments respon-
sible for exploitation and dissemination of research
results (DG XIII), for translation into all the other
Community languages and publication through the
CORDIS databank, so that they will be an effective,
rapid instrument for dissemination of technical progress.

6.2.5.3. Given the usefulness for dissemination of
technical and scientific knowledge which translation of
the abstract into the national languages would have, the
translation costs would not be borne by the applicant
for the patent, but by the EU, as a cost of exploitation
and dissemination of research results.

6.2.5.4. When the patent is granted, a translation
should be made into the national languages of the
Member States of
the patent claims alone. These
translations would be arranged and paid for by the
applicants.

6.2.5.5.
Before any legal action which the patent
holder wished to bring to safeguard his rights, the whole
patent file should be translated in the country concerned.
This translation would also be the responsibility of the
patent holder and at his expense.

Entrusting the preparation of the enhanced
6.2.6.
abstract to the EPO would have the advantage that
uniform criteria would be used.

However, it would also be possible for the EPO to
entrust translation of this summary into the national
languages, under its own responsibility, to the national
patent offices — if they were willing and able;
in
such cases the national patent offices responsible for
translation should forward the translations to the
Commission departments mentioned in point 6.2.5.2
above for dissemination.

6.2.7.
In future, in view of European union enlarge-
ment, the Commission could look for other solutions —
in the more general context of the Community’s language
arrangements — especially as regards the impact on
relative costs and the competitiveness of European
industry.

The ‘à la carte’ Community patent solution is
6.3.1.
favoured by certain business and professional circles,
where the need for a ‘flexible’ system is emphasized.

In reality — while the applicant for a Com-
6.3.2.
munity patent would retain the option of choosing a
European patent at a certain stage of the procedure (see
point 6.4 below) — the ‘à la carte’ Community patent
solution appears to contradict fundamental require-
ments of the single market. It should therefore be firmly
rejected.

6.4. Option of converting a Community patent appli-

cation into a European patent application

6.4.1.
As noted above, this problem should be dis-
tinguished from the ‘à la carte’ Community patent
hypothesis, although in certain ways the practical effects
could be similar.

6.4.2.
In the context of a Community which is
preparing for further enlargement, it seems reasonable
to allow the applicant for a Community patent to be
able to transform his application — before completion
of the granting procedure — into a European patent
application which, if successful, would give rise to a set
of national patents for the countries concerned.

6.4.3. However, for reasons similar to those given in
the preceding points on the ‘à la carte’ Community
patent, it does not appear to be compatible with the
requirements of the single market to allow a Community
patent once granted to be transformed into a European
patent, i.e. into a set of national patents.

6.4.4. Nor does it appear realistic to allow a European
patent application to be transformed into a Community
patent application, except in the case of a European
patent covering all the Member States of the EU.

6.4.5.
The ESC can therefore endorse the possibility
of transforming a Community patent application into a
European patent application if the request for transfor-
mation is presented before the patent is granted.

6.5. Legal questions

On the delicate question of the respective jurisdictions
of national courts and Community bodies, it seems
reasonable to take as a starting point the system laid
down by the Regulation on the Community mark with
regard to forgery and validity of
the Community
marks (2).

(1) Cf. ‘Implementing Regulations to the European Patent

Convention’, Chapter 1.

(2) Regulation No 40/954/EC, Article 91 and following.

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A similar system could be provided for the Community
patent, with certain correctives to take account of
the specific nature of the Community patent, and in
particular of the high level of legal and technical
qualifications required of a body which would be
competent to declare such a patent invalid with effect
throughout the EU’s territory.

In the light of this, the following is a possible solution:

6.5.1.
Each Member State designates for its own
territory a small number of national courts — with a
maximum of five for each state (1) — which are com-
petent to judge in the first instance:

6.5.1.1.
munity patents;

all actions relating to infringement of Com-

6.5.1.2.
Community patents;

actions to determine non-infringement of

6.5.1.3.
counterclaims for revocation of the validity
of a Community patent presented by the (alleged)
infringer in the course of an infringement case.

For the type of case mentioned in point 6.5.1.3, two
alternative solutions are set out below, both of them
based on the need to allow the judge in an infringement
case to pronounce also on the question of validity, and
at the same time to limit the effect of the decision (so as
to avoid irreparable consequences in the event of a faulty
decision).

In the first solution, any decision unfavourable to the
validity of a Community patent would not have the
effect of declaring it null and void with general appli-
cation (‘erga omnes’). On the contrary, such an unfavour-
able decision would simply have the effect of declaring
the patent in question non-opposable to the alleged
infringer, with limited reference to that judgement and
that particular type of (alleged) infringement. (This first
solution would have the advantage of clarifying the
validity or invalidity of the patent at once, but as it
would have only inter partes effect, it could cause further
disputes on the same patent vis-à-vis other parties.)

As an alternative, the national courts selected in accord-
ance with 6.5.1 above could be empowered to revoke
a Community patent (subject to a counterclaim for
revocation) with ‘erga omnes’ effect, but with a stipu-
lation that revocation would be suspended until con-
firmed in an appeal court. (This second possibility
would have the advantage of avoiding a proliferation of

(1) The suggested number of five is of course to some extent
arbitrary. However, it is still preferable to indicate the
precise number (however arbitrary) rather than resorting
to the generic formulation of Article 91 of the Community
Mark Regulation, namely a number as small as possible.
The idea of designating in each Member State a single
court of first instance appears above all to penalize the
SMEs, whose connections with the regional environment
are still very strong.

court cases — precisely because the decision would have
‘erga omnes’ effect — but would have the disadvantage
of not coming into effect immediately, as the result of
an appeal would be awaited.)

6.5.2.
The aforementioned national courts would
therefore have no competence as regards erga omnes
cancellation of Community patents (unless of course the
alternative in point 6.5.1.3 above was chosen). Such
competence would lie exclusively with:

6.5.2.1.
In the first instance, an appropriate cancel-
lation division of the EPO or preferably a new specialized
ad hoc court.

6.5.2.2.
In the second instance, a specialized chamber
of the Court of First Instance of the European Communi-
ties (CFI).

6.5.3.
The specialized chamber of the CFI would also
operate as a court of second instance for cases of
infringement brought before the national courts.

6.5.4.
Against decisions of the specialized chamber
of the CFI a final appeal would be possible — solely for
questions of law — to the Court of Justice of the
European Communities.

6.5.5.
In all cases, the national courts competent
under point 6.5.1 above would have the power to take
urgent decisions in favour of the patent holder, should
it be deemed appropriate, applicable throughout the
territory of the EU.

6.6. The role of the national patent offices

6.6.1.
In the overall system envisaged, the national
offices would continue to play their present role with
regard to national patents and European patents.

6.6.2.
They should also play an active role in dissemi-
nating and promoting patents as such and patent
knowledge, including Community patents, especially
with SMEs, professional associations, consultancies and
independent inventors. In the case of SMEs, the action
taken should include strengthening general cooperation
with the organizations representing SMEs, micro-
businesses and craft enterprises in the Member States.

6.6.3.
For this function of diffusion and promotion,
they should receive appropriate contributions from the
Community Patent Office. These could take the form
of a share of the maintenance fees for the Community
patents.

6.7. Tax-related questions

6.7.1.
In a Community patents system, based on a
Community Regulation (2), there would be no sense in
dividing up fees among the Member States, although

(2) See Point 6.1 above.

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Official Journal of the European Communities

C 129/15

this is envisaged by the Community patent convention
and the Community patent agreement (1).

6.9. Other possible harmonizations at Community

level

6.7.2. On the contrary, in principle the fees paid by
users of this system should go to the manager of the
system, namely the EPO, saving payment by EPO to the
national patents offices of an appropriate contribution
for the activities indicated in point 6.6 above.

6.7.3.
To make the Community patent system attrac-
tive, there is a need to make the fees for its maintenance
significantly lower than the fees for maintaining in force
European patents covering the whole Community.

6.8. Favourable conditions for the SMEs

6.8.1.
In line with what is done in the USA, SMEs (to
be defined as laid down in Commission Recommen-
dation 96/280 of 3 April 1996), universities and non-
profit research bodies should enjoy suitably reduced fees
in the Community patent system (e.g. reduced by 50 %).

6.8.2.
Specifically as regards SMEs, micro-businesses
and craft enterprises, a pro-active policy needs to be
launched for the purpose of maintaining and strengthen-
ing their innovation capacity. To this end, in addition
to reducing fees, it is necessary, within the representative
organizations (trade associations, chambers of com-
merce etc.), to train advisers for the task of briefing
enterprises directly and providing them with assistance
in the innovation process right up to the patenting and
marketing stage. Such a measure could be covered by
the Fifth framework programme for research and
technological development.

6.9.1. T h e

p a t e n t a b i l i t y

o f

c o m p u t e r

p r o g r a m s

6.9.1.1.
The Committee would point out in general
terms that protection of computer programs through
copyright is provided by Directive 91/250 (2).
6.9.1.2. Moreover, the Committee thinks it desirable
to amend Article 52(2)(c) of the European Patent
Convention, which excludes computer programs from
patentable inventions, but would stress that ‘software
inventions’, to be patentable, should nonetheless consti-
tute a ‘solution to a technical problem’.

6.9.2. T h e r i g h t o f p r i o r u s e
The desirability of harmonizing the right of prior use
should also be considered.
6.9.2.1.
This would mean defining, in appropriate
and harmonized terms, to what extent a third party
which has begun to use the invention in good faith (or
has made serious effective preparations to use it on a
commercial scale) could continue such use despite the
granting of the Community patent to another party.

I n v e n t i o n s o f e m p l o y e e s

6.9.3.
It is not thought that the existing differences
6.9.3.1.
in the laws of the Member States with regard to
the inventions of employees justify harmonization at
Community level.
In accordance with the principle of subsidiar-
6.9.3.2.
ity, the matter should continue to be regulated by the
various national laws.

6.9.4. T h e n e e d f o r h a r m o n i z a t i o n i n

t h e f i e l d o f b i o t e c h n o l o g y

There is an urgent need to issue the directive on
harmonization of patent law in the field of biotechno-
logy,
in order to avoid European enterprises being
seriously disadvantaged in competition with their non-
European rivals (particularly in the USA).

(1) Cf. Article 20 of the Community patent agreement, on

(2) Council Directive No 91/250/EEC, 14.5.1991 on legal

financial costs and benefits.

protection of computer programs.

Brussels, 25 February 1998.

The President

of the Economic and Social Committee

Tom JENKINS