Proposal for a Council Regulation on the Community patent
Date: 2000-07-05
Institutions: European Commission
Subjects: European Patent Office, European patent, approximation of laws, intellectual property, patent law

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Proposal for a Council Regulation on the Community patent

(2000/C 337 E/45)

(Text with EEA relevance)

COM(2000) 412 final (cid:15) 2000/0177(CNS)

(Submitted by the Commission on 1 August 2000)

THE COUNCIL OF THE EUROPEAN UNION,

should therefore be without prejudice to the right of the
Member States to grant national patents.

Having regard to the Treaty establishing the European
Community, and in particular Article 308 thereof,

Having regard to the proposal from the Commission,

Having regard to the opinion of the European Parliament,

Having regard to the opinion of
Committee,

the Economic and Social

Whereas:

is not distorted. The creation of

(1) The activities of the Community include the establishment
of an internal market characterised by the abolition of
obstacles
to the free movement of goods and the
creation of a system ensuring that competition in the
the
internal market
their
legal conditions enabling undertakings to adapt
activities in manufacturing and distributing products to
a Community dimension helps to attain these objectives.
A patent to which uniform protection is given and which
the Community
produces uniform effects
throughout
instruments which
the legal
should feature amongst
undertakings have at their disposal.

(2) The Munich Convention on the Grant of European Patents
of 5 October 1973 (hereinafter referred to as the 8Munich
Convention9) established the European Patent Office (here-
inafter referred to as 8the Office9) and entrusted it with the
task of granting European patents. The expertise offered
by the Office should be used in the granting and adminis-
tration of the Community patent.

(3) The

accession of

to the Munich
the Community
Convention will enable the Community to be included
in the Convention system as a territory for which a
unitary patent can be granted. The Community can,
therefore,
the
law applicable to the Community patent once granted.

this Regulation to the creation of

limit

(5) The objective of an affordable Community patent militates
in favour of a patent
the
that
Community in the language in which it was granted
under the Munich Convention.

is valid throughout

(6) Any negative effects of a monopoly created by a
Community patent
should be prevented through a
system of compulsory licences. The Commission should
therefore be given decision-making powers in this matter.
Commission decisions are subject to appeal under Article
230 of the Treaty before the Court of First Instance of the
European Communities and before the Court of Justice of
the European Communities.

enforceable

throughout

(7) For reasons of legal certainty, all actions relating to certain
aspects of the Community patent should come under the
jurisdiction of one court, and the decisions of that court
should be
the Community.
Exclusive jurisdiction for a certain category of actions
and applications relating to a Community patent, and in
particular for actions relating to infringement and validity,
should therefore be given to the Community intellectual
property court. Judgments of a Chamber of First Instance
of that court should be subject to appeal to a Chamber of
Appeal of that court.

(8) The court ruling on infringement and validity should also
be able to rule on penalties and compensation for damage
on the basis of common rules. Those powers are without
prejudice to the powers to apply any rules on criminal
liability and unfair competition provided for under the
Member States’ national law.

(9) The rules for proceedings before the Community intel-
lectual property court are laid down in the court’s
statute and rules of procedure.

(4) Community patent

law applicable to the Community
patent should not replace the laws of the Member States
on patents, nor European patent law as established by the
Munich Convention. It would not in fact appear to be
justified to require undertakings to apply for registration
of
their patents as Community patents, since national
patents and European patents continue to be necessary
for those undertakings which do not want protection of
inventions at Community level. This Regulation
their

(10) In accordance with the principles of subsidiarity and
proportionality as set out in Article 5 of the Treaty, the
the
in particular
the proposed action,
objectives of
creation of a unitary right with effect throughout
the
Community, can be achieved only by the Community.
This Regulation confines itself to the minimum required
in order to achieve those objectives and does not go
beyond what is necessary for that purpose.

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(11) Since the measures necessary for implementing this Regu-
lation are measures of general scope within the meaning
of Article 2 of Council Decision 1999/468/EC of 28 June
1999 laying down the procedures for the exercise of
implementing powers conferred on the Commission (1),
they should be adopted in accordance with the regulatory
procedure laid down in Article 5 of that Decision,

Member State exercises sovereign rights or
accordance with international law.

jurisdiction in

2.
This Regulation shall apply to inventions created or used
in outer space, including on celestial bodies or on spacecraft,
which are under the jurisdiction and control of one or more
Member States in accordance with international law.

HAS ADOPTED THIS REGULATION:

CHAPTER I

GENERAL PROVISIONS

Article 1

Community patent law

This Regulation establishes a Community law on patents. This
law shall apply to all patents granted by the European Patent
Office (hereinafter
the
provisions of the European Patent Convention of 5 October
1973 (hereinafter
referred to as the 8Munich Convention9)
throughout the entire area of the Community.

8the Office9) under

referred to as

For the purpose of
considered to be Community patents.

this Regulation, such patents shall be

Article 2

Community patent

1.
The Community patent shall have a unitary character. It
shall have equal effect throughout the Community and may
lapse in
only be granted,
respect of the whole of the Community.

transferred, declared invalid or

The Community patent

shall have an autonomous
2.
It shall be subject only to the provisions of this
character.
Regulation and to the general principles of Community law.
However, the provisions of this Regulation shall not exclude
the application of the law of Member States with regard to
criminal liability and unfair competition.

3.
Unless otherwise provided for, the terms used in this
Regulation shall have the same meaning as the corresponding
terms used in the Munich Convention.

4.
For the purposes of this Regulation, the term 8application
for a Community patent9 shall mean an application for a
European patent designating the territory of the Community.

CHAPTER II

PATENT LAW

SECTION 1

RIGHT TO THE PATENT

Article 4

Right to the Community patent

The right to the Community patent shall belong to the

1.
inventor or his successor in title.

If

the right

the inventor

is an employee,

2.
to the
Community patent shall be determined in accordance with
the State in which the employee is mainly
the law of
employed;
the State in which the employee is mainly
if
employed cannot be determined, the law to be applied shall
be that of the State in which the employer has his place of
business to which the employee is attached.

3.
If two or more persons have made an invention inde-
pendently of each other, the right to the Community patent
to the person whose Community patent
shall belong
application has the earliest date of filing or, where applicable,
the earliest date of priority. This provision shall apply only if
the first Community patent application has been published.

Article 5

Claiming the right to the Community patent

If the Community patent has been granted to a person
1.
who is not entitled to it under Article 4(1) and (2), the person
entitled to it under that article may, without prejudice to any
other right or remedy which may be open to him, claim to
have the patent transferred to him.

a person is

2. Where
Community patent,
paragraph 1, claim to be made a joint proprietor.

that person may,

entitled to only part of

the
in accordance with

Article 3

Application to the sea and submarine areas and to space

1.
areas adjacent

This Regulation shall apply to the sea and submarine
to a Member State’s territory in which that

(1) OJ L 184, 17.7.1999, p. 23.

3.
Legal proceedings in respect of the rights referred to in
paragraphs 1 and 2 may be instituted only within a period of
two years after the date on which the Community Patent
Bulletin, referred to in Article 57, publishes the grant of the
Community patent. This provision shall not apply if
the
proprietor of the patent knew, at the time of the grant or of
the acquisition of the patent, that he was not entitled to the
patent.

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The fact that legal proceedings have been instituted shall
4.
be entered in the Register of Community Patents referred to in
Article 56. The final decision in the legal proceedings or any
withdrawal thereof shall also be entered.

(c) from offering, putting on the market or using a product
obtained directly by a process which is the subject-matter
of the patent, or importing or stocking the product for
these purposes.

Article 6

Article 8

Effect of change of proprietorship of the Community
patent

1. Where there is a complete change of proprietorship of a
Community patent as a result of legal proceedings referred to
lapse upon the
in Article 5,
in the
registration of
Register of Community Patents referred to in Article 56.

the person entitled to the patent

licences and other rights shall

If, before the institution of

2.
registered,

legal proceedings has been

(a) the proprietor of the patent has used the invention within
the Community or made effective and

the territory of
serious preparations to do so,

or

(b) a licensee of the patent has obtained his licence and has
used the invention within the territory of the Community
or made effective and serious preparations to do so,

he may continue such use provided that he requests a
non-exclusive licence of the patent from the new proprietor
whose name is entered in the Register of Community Patents.
Such request must be made within the period prescribed in the
implementing regulations. The licence shall be granted for a
reasonable period and upon reasonable terms.

3.
Paragraph 2 shall not apply if the proprietor of the patent
or the licensee was acting in bad faith at the time when he
began to use the invention or to make preparations to do so.

SECTION 2

EFFECTS OF

THE

COMMUNITY
COMMUNITY PATENT APPLICATION

PATENT AND THE

Article 7

Prohibition of direct use of the invention

The Community patent shall confer on its proprietor the right
to prevent all third parties not having his consent:

(a) from making, offering, putting on the market or using the
the patent, or

product which is the subject-matter of
importing or stocking the product for these purposes;

(b) from using the process which is the subject-matter of the
patent or, when the third party knows, or it is obvious in
the circumstances, that the use of the process is prohibited
without the consent of the proprietor of the patent, from
offering the process for use within the territories of the
Member States;

Prohibition of indirect use of the invention

third parties not having his consent

1.
In addition to the right conferred pursuant to Article 7,
the Community patent shall confer on its proprietor the right
to prevent all
from
supplying or offering to supply within the territories of the
Member States to a person, other than one entitled to exploit
the patented invention, with means, relating to an essential
element of that invention, for putting it into effect therein,
when the third party knows, or it is obvious in the circum-
stances, that these means are suitable and intended for putting
that invention into effect.

2.
Paragraph 1 shall not apply when the means are staple
commercial products, except when the third party induces the
person supplied to commit acts prohibited by Article 7.

Persons performing the acts referred to in Article 9(a) (b)
3.
and (c) shall not be considered to be parties entitled to exploit
the invention within the meaning of paragraph 1.

Article 9

Limitation of the effects of the Community patent

The rights conferred by the Community patent shall not extend
to:

(a) acts done privately and for non-commercial purposes;

(b) acts done for experimental purposes relating to the subject-

matter of the patented invention;

(c) the extemporaneous preparation for individual cases in a
pharmacy of a medicine in accordance with a medical
prescription nor acts concerning the medicine so prepared;

(d) the use on board vessels of countries other than Member
States of the patented invention, in the body of the vessel,
in the machinery, tackle, gear and other accessories, when
such vessels temporarily or accidentally enter the waters of
Member States, provided that the invention is used there
exclusively for the needs of the vessel;

(e) the use of the patented invention in the construction or
operation of aircraft or land vehicles or other means of
transport of non-member States, or of accessories to such
aircraft or land vehicles, when these temporarily or acci-
dentally enter the territory of Member States;

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(f)

the acts specified in Article 27 of the Convention on Inter-
national Civil Aviation of 7 December 1944, where these
acts concern the aircraft of a country other than a Member
State.

Article 10

Community exhaustion of the rights conferred by the
Community patent

The rights conferred by the Community patent shall not extend
to acts concerning the product covered by that patent which
are carried out within the territories of the Member States after
that product has been put on the market in the Community by
the proprietor of the patent or with his consent, unless there
are legitimate grounds for the proprietor to oppose further
commercialisation of the product.

Article 11

Rights conferred by the Community patent application
after publication

Compensation reasonable in the circumstances may be
1.
claimed from a third party who,
in the period between the
date of publication of a Community patent application and the
the
date of publication of
Community patent, has made any use of
the invention
which, after that period, would be prohibited by virtue of
the Community patent.

the mention of

the grant of

2.
the
Reasonable compensation shall be due only if
applicant has either communicated to the person using the
invention or filed with the Office a translation of the claims
which the Office has made available to the public and which is
in the official
language of the Member State in which the
person using the invention has his residence or principal
place of business or, where that State has more than one
in the language which that person has
official
the contested use
accepted or designated, provided that
constitutes infringement of the application according to the
original text of the application and according to the text of
the translation. However, if the person using the invention is
able
the Community patent
text of
application in the language in which it was made available to
the public, reasonable compensation shall be due without
communication of a translation.

to understand the

language,

3. When reasonable compensation is fixed, due account
shall be taken of the good faith of the person who has used
the invention.

The official language referred to in paragraph 2 shall be

4.
an official language of the Community.

Article 12

Right based on prior use of the invention

used the invention in the Community or had made effective
and serious preparations for such use before the filing date or,
where priority has been claimed,
the
application on the basis of which the patent is granted (here-
inafter referred to as 8the prior user9); the prior user shall have
the right,
to continue the use in
question or to use the invention as planned during the prep-
arations.

for business purposes,

the priority date of

2.
The right of the prior user may not be transferred either
during the user’s lifetime or following his death other than
with the user’s undertaking or that part of the undertaking
in which the use or the preparations for use took place.

Article 13

Process patents: burden of proof

1.
If the subject-matter of a Community patent is a process
for obtaining a new product, the same product when produced
without the consent of the proprietor shall, in the absence of
proof to the contrary, be deemed to have been obtained by the
patented process.

In adducing proof to the contrary, the legitimate interests
2.
of the defendant in protecting his manufacturing and trade
secrets shall be taken into account.

SECTION 3

THE COMMUNITY PATENT AS AN OBJECT OF PROPERTY

Article 14

Dealing with the Community patent as a national patent

the
Unless otherwise specified in Articles 15 to 24,
1.
Community patent as an object of property shall be dealt
with in its entirety, and for the whole of the Community, as
a national patent of the Member State in which, according to
the Register of Community Patents provided for by Article 56:

(a) the applicant for the patent had his residence or place of
business on the date of filing of the Community patent
application;

(b) where subparagraph (a) does not apply, the applicant had

an establishment on that date;

(c) where neither

subparagraph (a) nor

subparagraph (b)
representative whose name is
in the Register of Community Patents had

applies,
entered first
his professional domicile on the date of that entry.

the applicant’s

1.
person who,

A Community patent may not be invoked against a
in good faith and for business purposes, had

In all other cases, the Member State referred to shall be that in
which the European Patent Organisation has its seat.

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If two or more persons are mentioned in the Register of
2.
Community Patents as joint applicants, the first subparagraph
of paragraph 1 shall apply to the joint applicant
first
mentioned. If this is not possible, the first subparagraph of
applicants next
paragraph 1 shall
mentioned in order of entry. Where the first subparagraph of
paragraph 1 does not apply to any of the joint applicants, the
second subparagraph of paragraph 1 shall apply.

to the

apply

joint

The acquisition of a right may not be dependent on any

3.
entry in a national patent register.

Article 15

Transfer

1.
The Community patent held by an undertaking may be
transferred independently of the transfer of the undertaking.

the Community patent except where,

A transfer of the whole of the undertaking shall include
2.
in
the transfer of
there is
accordance with the law governing the transfer,
agreement
to the contrary or circumstances clearly dictate
otherwise. This provision shall apply to the contractual obli-
gation to transfer the undertaking.

Article 17

Levy of execution

1.

The Community patent may be levied in execution.

2.
At the request of one of the parties, the levy of execution
shall be entered in the Register of Community Patents referred
this Regulation and published in the
to in Article 56 of
Community Patent Bulletin referred to in Article 57.

Article 18

Bankruptcy or like proceedings

1.
The only Member State in which a Community patent
may be involved in bankruptcy or like proceedings shall be that
in which the debtor has his principal centre of interests.

In the case of

2.
patent, paragraph 1 shall apply to the share of
proprietor.

joint proprietorship of a Community
the joint

3. Where a Community patent is involved in bankruptcy or
like proceedings, on request of
competent national
authority an entry to this effect shall be made in the Register
of Community Patents referred to in Article 56 and published
in the Community Patent Bulletin referred to in Article 57.

the

The transfer of the Community patent shall be made in
3.
writing and shall require the signature of the parties to the
contract, except when it is a result of a judgment; otherwise
it shall be void.

Article 19

Contractual licensing

Subject to Article 6(1), a transfer shall not affect rights

4.
acquired by third parties before the date of transfer.

5.
A transfer shall, to the extent to which it is verified by the
documents set out in the implementing regulations referred to
in Article 59, have effect vis-C-vis third parties only after entry
in the Register of Community Patents referred to in Article 56.
Nevertheless, a transfer, before it is so entered, shall have effect
vis-C-vis third parties who have acquired rights after the date of
the transfer but who knew of the transfer on the date on which
the rights were acquired.

Article 16

Rights in rem

1.
The Community patent may, independently of the under-
taking, be given as security or be the subject of rights in rem.

2.
At the request of one of the parties, the rights referred to
in paragraph 1 shall be entered in the Register of Community
Patents
referred to in Article 56 and published in the
Community Patent Bulletin referred to in Article 57.

The Community patent may be licensed in whole or in
1.
part for the whole or part of the Community. A licence may be
exclusive or non-exclusive.

The rights conferred by the Community patent may be
2.
invoked against a licensee who breaches any restriction in the
licensing contract.

Article 15(4) and (5) shall apply to the grant or transfer

3.
of a licence in respect of a Community patent.

Article 20

Licences of right

In that case, the renewal

1.
The proprietor of a Community patent may file a written
statement with the Office that he is prepared to allow any
person to use the invention as a licensee in return for appro-
fees for the
priate compensation.
Community patent which fall due after
the
statement shall be reduced; the amount of the reduction shall
be fixed in the rules relating to fees referred to in Article 60.
Where there is a complete change of proprietorship of the
patent as a result of
legal proceedings under Article 5, the
statement shall be deemed withdrawn on the date of entry of
the name of the person entitled to the patent in the Register of
Community Patents.

receipt of

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The statement may be withdrawn at any time by a
2.
written communication to this effect to the Office, provided
that no-one has yet informed the proprietor of the patent of
his intention to use the invention. Such withdrawal shall take
effect from the date of receipt of that communication by the
Office. The amount by which the renewal fees were reduced
shall be paid within one month after withdrawal; Article 25(2)
shall apply, but the six-month period shall start upon expiry of
the above period.

patent or plant variety right involves an important technical
advance of considerable economic significance in relation to
the invention claimed in the first patent. The Commission
may take any measure it regards as useful
to verify the
In the case of a compulsory
existence of such a situation.
licence in respect of a dependent patent or plant variety
right, the owner of the first patent shall be entitled to a cross-
licence on reasonable terms to use the patented invention or
protected plant variety.

3.
The statement may not be filed while an exclusive licence
is recorded in the Register of Community Patents or a request
for the recording of such a licence is before the Office.

On the basis of

4.
the statement, any person shall be
entitled to use the invention as a licensee under the conditions
laid down in the implementing regulations referred to in
Article 59. A licence obtained under the terms of this Article
shall,
this Regulation, be treated as a
contractual licence.

for the purposes of

5.
On written request by one of the parties, the Commission
shall determine the appropriate compensation referred to in
paragraph 1 or review it
if circumstances have arisen or
become known which render the compensation determined
obviously inappropriate.

No request

6.
for recording an exclusive licence in the
Register of Community Patents shall be admissible after the
statement has been filed, unless it is withdrawn or deemed
withdrawn

The Member States may not grant licences of right in

7.
respect of a Community patent.

Article 21

Grant of compulsory licences

The Commission may grant a compulsory licence for lack
1.
or insufficiency of exploitation of a Community patent to any
person filing an application four years or later after the patent
application was filed and three years or later after the patent
was granted if the patent proprietor has not exploited the
in the Community on reasonable terms or has not
patent
made effective and serious preparations to do so, unless he
provides legitimate reasons to justify his inaction.
In deter-
mining the lack or insufficiency of exploitation of the patent,
no distinction shall be made between products originating
within the Community and imported products.

On request, the Commission may grant a compulsory
2.
to the proprietor of a
licence in respect of a first patent
national or Community patent or to the proprietor of a
plant variety right who cannot use his patent (second patent)
or his national or Community plant variety right without
infringing a Community patent
(first patent), provided that
the invention or new plant variety claimed in the second

In times of crisis or

in other situations of extreme
3.
urgency, or when it
is necessary to remedy a practice
determined after judicial or administrative process to be anti-
competitive, the Commission may authorise the exploitation of
a Community patent.

4.
In the case of semiconductor technology, exploitation
shall be possible only in the situations set out in paragraph 3.

5.
A licence or exploitation set out in paragraphs 1, 2 and 3
may be granted only if the proposed user has made efforts to
obtain authorisation from the patent holder on reasonable
terms and conditions, and if such efforts have
commercial
not been successful within a reasonable period of
time.
However, the Commission may derogate from this condition
in the situations set out in paragraph 3. In these situations, the
right holder shall be informed as soon as reasonably possible.

6.
The detailed rules of application and the procedures to be
used for applying the principles set out in this Article shall be
laid down in the implementing regulation.

Article 22

Conditions applicable to compulsory licences

1. When granting the compulsory licence under Article 21,
the Commission shall specify the type of use covered and the
conditions to be met. The following conditions shall apply:

(a) the scope and duration of the exploitation shall be limited

to the purpose for which it was authorised;

(b) the exploitation shall be non-exclusive;

(c) the exploitation shall be non-assignable, except with that
part of the enterprise or goodwill which enjoys such use;

(d) the exploitation shall be authorised predominantly for the
supply of the internal market of the Community unless it is
necessary to correct a practice determined after judicial or
administrative process to be anti-competitive;

(e) the Commission may, on reasoned request, decide to cancel
the
the authorisation, subject
legitimate interests of the persons so authorised,
if and
when the circumstances which led to it cease to exist and
are unlikely to recur;

to adequate protection of

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(f)

the licence holder shall pay the right holder adequate
remuneration, taking into account the economic value of
the authorisation and any need to correct an anti-
competitive practice;

shall be due in respect of the years following the year in which
the Community Patent Bulletin referred to in Article 57
mentions the grant of the Community patent.

(g) in the case of a compulsory licence in respect of a
dependent patent or a plant variety right, the exploitation
authorised in respect of
shall be
non-assignable except with the assignment of the second
patent or plant variety right.

first patent

the

The Member States may not grant compulsory licences in

2.
respect of a Community patent.

Article 23

Effects vis-2-vis third parties

1.
Legal acts referred to in Articles 16 to 22 concerning a
Community patent shall have effects vis-C-vis third parties in all
the Member States only after entry in the Register of
Community Patents. Nevertheless, such an act, before it is so
entered, shall have effect vis-C-vis third parties who have
acquired rights concerning the patent after the date of that
act but who knew of the act at the date on which the rights
were acquired.

2.
Paragraph 1 shall not apply in the case of a person who
acquires the Community patent or a right concerning the
Community patent by way of transfer of the whole of the
undertaking or by any other universal succession.

Article 24

The application for a Community patent as an object of
property

Articles 14 to 19 and Article 21(3) to (6), and Article 22

1.
shall apply to the application for a Community patent.

2.
The rights acquired by third parties in respect of a
Community patent application referred to in paragraph 1
shall continue to be effective with regard to the Community
patent granted upon that application.

CHAPTER III

RENEWAL, LAPSE AND INVALIDITY OF THE
COMMUNITY PATENT

SECTION 1

RENEWAL AND LAPSE

Article 25

Renewal fees

2. When a renewal fee has not been paid on or before the
due date, the fee may be validly paid within six months of that
date, provided that an additional fee is paid at the same time.

3.
Any renewal fee in respect of a Community patent falling
due within two months after the publication of the mention of
the grant of the Community patent shall be deemed to have
been validly paid if it is paid within the period mentioned in
paragraph 2. No additional fee shall be charged in this case.

Article 26

Surrender

The Community patent may be surrendered only in its

1.
entirety.

2.
Surrender must be declared in writing to the Office by
the proprietor of the patent. It shall not have effect until it is
entered in the Register of Community Patents.

3.
Surrender shall be entered in the Register of Community
Patents only with the agreement of any third party who has a
right in rem recorded in the Register or in respect of whom
there is an entry in the Register pursuant to Article 5(4), first
sentence. If a licence is recorded in the Register, surrender shall
be entered only if the proprietor of the patent proves that he
has previously informed the licensee of his
intention to
surrender; this entry shall be made on expiry of the period
laid down in the implementing regulations referred to in
Article 59.

Article 27

Lapse

1.

The Community patent shall lapse:

(a) 20 years after the date of filing of the application;

(b) if the proprietor of the patent surrenders it in accordance

with Article 26;

(c) if a renewal fee and any additional fee have not been paid

in due time.

Annual renewal fees in respect of Community patents
1.
shall be paid to the Office
in accordance with the
implementing regulations referred to in Article 60. These fees

2.
The lapse of a patent for failure to pay a renewal fee and
any additional fee within the due period shall be deemed to
have occurred on the date on which the renewal fee was due.

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SECTION 2

INVALIDITY OF THE COMMUNITY PATENT

However, repayment, to an extent justified by the circum-
stances, of sums paid under the relevant contract may be
claimed on grounds of equity.

Article 28

Grounds for invalidity

The Community patent may be declared invalid only on

1.
the grounds that:

(a) the subject-matter of the patent is not patentable according

to Articles 52 to 57 of the Munich Convention;

(b) the patent does not disclose the invention in a manner
sufficiently clear and complete for it to be carried out by
a person skilled in the art;

(c) the subject-matter of the patent extends beyond the content
of the patent application as filed, or,
if the patent was
granted on a divisional application or on a new application
the Munich
filed in accordance with Article 61 of
Convention, beyond the content of the earlier application
as filed;

(d) the protection conferred by the patent has been extended;

(e) the proprietor of the patent is not entitled under Article

4(1) and (2) of this Regulation;

(f)

the subject-matter of the patent is not new having regard to
the content of a national patent application or of a national
patent made public in a Member State on the date of filing
or later or, where priority has been claimed, the date of
priority of the Community patent, but with a filing date or
priority date before that date.

If

for

the grounds

invalidity affect

2.
the patent only
partially, invalidity shall be pronounced in the form of a corre-
the patent. The limitation may be
sponding limitation of
effected in the form of an amendment
the
description or the drawings.

to the claims,

CHAPTER IV

JURISDICTION AND PROCEDURE IN LEGAL ACTIONS
RELATING TO THE COMMUNITY PATENT

SECTION 1

ACTIONS CONCERNING THE VALIDITY, INFRINGEMENT AND
USE OF THE COMMUNITY PATENT

Article 30

Actions and claims relating to the Community patent
the Community intellectual
Exclusive jurisdiction of

property court

1.
The Community patent may be the subject of invalidity
or infringement proceedings, of action for a declaration of
non-infringement, of proceedings relating to the use of the
patent or to the right based on prior use of the patent, or of
invalidity or
requests
applications for a declaration of
It may also be the
subject of proceedings or claims for damages.

counterclaims
lapse.

limitation,

for

for

The Community patent may not be the subject of actions

2.
in respect of threatened infringement.

3.
The actions and claims referred to in paragraph 1 come
under the exclusive jurisdiction of the Community intellectual
property court. In the first instance, they are brought before
the Chamber of First Instance of that court.

4.
Subject to the provisions of the Treaty and of this Regu-
lation, the terms and procedures relating to the actions and
claims referred to in paragraph 1 and the rules applying to the
judgments given shall be established in the statute or rules of
procedure of the Community intellectual property court.

Article 29

Effects of invalidity

Article 31

Invalidity action

The Community patent shall be deemed not to have had,
1.
from the outset, the effects specified in this Regulation, to the
extent that the patent has been declared invalid either in whole
or in part.

The retroactive effect of the invalidity of the patent shall

2.
not affect:

(a) any decision on infringement which has acquired the
authority of res judicata and been enforced prior to the
invalidity decision;

Invalidity proceedings against a Community patent may
1.
be based only on the grounds for invalidity set out in Article
28(1).

Any person may initiate invalidity proceedings; however,
2.
in the case referred to in Article 28(1)(e), the proceedings may
be initiated only by a person entitled to be entered in the
Register of Community Patents as the sole proprietor of the
patent, or by all the persons entitled to be entered as joint
proprietors of it in accordance with Article 5 acting jointly.

(b) any contract concluded prior to the invalidity decision, in
so far as it has been performed before that decision.

3.
The proceedings may be brought even if opposition may
still be filed or if opposition proceedings are pending before
the Office.

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The proceedings may be brought even if the Community

4.
patent has lapsed.

of an exclusive licence may bring such proceedings if
proprietor,
proceedings.

the
formal notice, does not himself bring

after

Article 32

Counterclaim for invalidity

Article 36

1.
Counterclaims for invalidity against a Community patent
may be based only on the grounds for invalidity set out in
Article 28(1).

2.
If the counterclaim is brought in a legal action to which
the proprietor of the patent is not already a party, he shall be
informed thereof and may be joined as a party to the action.

Proceedings relating to a right based on prior use of the
invention

Proceedings relating to the right based on prior use of the
patent referred to in Article 12(1) may be brought by the
prior user or the person to whom he has assigned his right
in accordance with paragraph 2 of that Article, with a view to
establishing his right to use the invention in question.

Article 33

Infringement action

Article 37

Request for limitation

Actions for infringement may be based only on facts

1.
referred to in Articles 7, 8 and 19.

1.
At the request of the proprietor, a Community patent
may be limited in the form of an amendment to the claims,
the description or the drawings.

2.
Only the proprietor of the patent may bring an action for
infringement. Unless otherwise stipulated in the contract, the
beneficiary of a contractual licence may bring proceedings for
infringement only if the patent proprietor consents thereto.
However, the beneficiary of an exclusive licence and the bene-
ficiary of a licence of right or a compulsory licence may bring
such proceedings if the proprietor of the patent, after formal
notice, does not himself bring infringement proceedings.

3.
The proprietor of the patent shall be entitled to intervene
in infringement proceedings brought by the licensee under
paragraph 2.

A licensee shall, for the purpose of obtaining compen-
4.
sation for damage suffered by him, be entitled to intervene in
infringement proceedings brought by the proprietor under
paragraph 2.

Article 34

Action for declaration of non-infringement

1.
Any person may bring proceedings against the patent
proprietor or the beneficiary of an exclusive licence in order
to apply for a decision that the economic activity he is exer-
cising, or making effective preparations to exercise or envi-
the rights referred to in
saging exercising does not affect
Articles 7, 8 and 19.

The validity of

2.
the Community patent may not be
contested in an action for a declaration of non-infringement.

Article 35

2.
The request may not be filed during the period within
which an opposition may be filed or while opposition or
invalidity proceedings are pending.

3.
The request shall be admissible only with the agreement
of any person who has a right in rem recorded in the Register
of Community Patents or in respect of whom there is an entry
If a
in the Register pursuant to Article 5(4), first sentence.
licence is
shall be
admissible only if the proprietor of the patent proves that he
has the agreement of the licensee or at least three months from
the time at which the proprietor proves that he has informed
the licensee of his intention to limit the patent.

recorded in the Register,

the request

4.
If, following the proceedings, the Community intellectual
property court is of the opinion that, taking into consideration
the grounds for
the amendments made by the proprietor,
invalidity referred to in Article 28 do not prejudice the main-
tenance of the Community patent, it shall decide to limit the
patent accordingly.
the
the opinion that
the court
amendments are not acceptable, it shall reject the request.

is of

If

Article 38

Application for a ruling that a patent has lapsed

Any person may file an application for a ruling that a
Community patent has lapsed on the grounds laid down by
Article 27.

Article 39

Appeals

Proceedings relating to use of the invention prior to the
grant of the patent

Proceedings relating to the use of the invention during the
period referred to in Article 11(1) may be brought by the
applicant or proprietor of the patent. However, the beneficiary

An appeal to the Chamber of Appeal of the Community
1.
the
intellectual property court shall
Chamber of First
in respect of
Instance of
proceedings arising from the actions and claims referred to
in the provisions of this section.

lie from judgments of
that court

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The action shall be brought before the Chamber of
2.
Appeal within two months of the date of notification of the
judgment in accordance with the statute of the Community
intellectual property court.

3.
The Chamber of Appeal shall have jurisdiction to rule on
the facts of a particular case as well as on points of law and to
annul or alter the contested decision.

4.
The action shall be open to any party to proceedings
before the Community intellectual property court adversely
affected by its decision.

5.
the
The action shall have suspensive effect. However,
Chamber of First Instance may declare its judgment enforceable
while, if necessary, subjecting enforcement to the provision of
security.

(b) an order

to seize

the products

resulting from the

infringement;

(c) an order to seize the goods, materials and implements
which constitute the means
for putting the protected
invention into effect and which have been supplied or
offered for supply under the conditions set out in Article 8;

(d) any order imposing other penalties adapted to the circum-
stances or suitable for guaranteeing compliance with the
orders referred to in (a), (b) and (c).

Article 44

Actions or claims for damages

Article 40

Commission’s capacity to act

1.
The Community intellectual property court shall have the
power to order the payment of compensation for the damage
underlying the actions referred to in Articles 31 to 36.

1. Where necessary in the Community’s
Commission may bring invalidity proceedings
Community
the Community
before
property court.

patent

interest,

the
against
a
intellectual

The Commission may also, under the condition referred
intervene in all proceedings before the

2.
to in paragraph 1,
Community intellectual property court.

Article 41

Extent of jurisdiction

In the proceedings referred to in Articles 33 to 36,
the
Community intellectual property court shall have jurisdiction
in respect of acts committed and activities undertaken in a part
or in the entirety of the territory, zone or space to which this
Regulation applies.

Article 42

Provisional or protective measures

The Community intellectual property court may take any
necessary provisional or protective measure in accordance
with its statute.

Article 43

Penalties

the Community

Where
proceedings
defendant has infringed a Community patent,
the following orders:

intellectual property
finds

referred to in Article 33,

in
court,
that
the
it may issue

(a) an order prohibiting the defendant from continuing with

the acts which infringed the patent;

2.
In determining the appropriate damages, the court shall
take into account all relevant aspects, such as the economic
consequences to the injured party of the infringement and the
behaviour and the good or bad faith of
the parties. The
damages shall not be punitive.

language of the Community,

3.
For the purposes of paragraph 2, an alleged infringer
who has his residence or principal place of business in a
language, which is also an
Member State whose official
official
is not the language in
which the patent was granted or in which a translation of
the patent has been made public in accordance with Article
58, is presumed, in the absence of proof to the contrary, not to
have known nor to have had reasonable grounds for knowing
that he was infringing the patent. In such a situation, damages
for infringement shall be due only for the period from the time
when he is notified of a translation in that official language of
the Member State of
the residence or principal place of
business of the alleged infringer.

4. Where the Member State referred to in paragraph 3 has
two or more official languages which are also official languages
of the Community, the infringer shall be entitled to notification
in one of those official languages that he knows.

Article 45

Period of limitation

Proceedings relating to use, to the right based on prior use, to
infringement and to damages referred to in this section shall be
barred after five years have elapsed from the date on which the
facts justifying proceedings emerged, or, if the requesting party
was unaware of those facts at the time they emerged, from the
date on which he became aware of
them or should have
become aware of them.

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SECTION 2

would have jurisdiction ratione loci and ratione materiae in the
case of actions relating to national patents granted in that State.

JURISDICTION AND PROCEDURE IN OTHER ACTIONS
RELATING TO THE COMMUNITY PATENT

Article 46

Jurisdiction of national courts

The national courts of the Member States shall have juris-
diction in actions relating to Community patents which do
not come within the exclusive jurisdiction of either the Court
of
Justice under the Treaty or the Community intellectual
property court according to the provisions of Chapter IV,
Section 1.

Article 47

Application of the Brussels Convention

Unless otherwise specified in this Regulation, the Convention
on Jurisdiction and Enforcement of Judgments in Civil and
Commercial Matters, signed at Brussels on 27 September
1968 (1) shall apply to actions brought before the national
courts and to decisions given in respect of such actions.

Article 48

Proceedings relating to the right to a patent between an
employer and an employee

the courts of

By way of derogation from the provisions applicable
1.
under Article 47,
the Member State under
whose law the right to a Community patent is determined in
accordance with Article 4(2) shall have exclusive jurisdiction in
proceedings relating to the right to a patent over which an
employer and an employee are in dispute.

2.
Any agreement conferring jurisdiction shall be valid only
if it is entered into after the dispute has arisen or if it allows
the employee to bring proceedings in courts other than those
which would have jurisdiction under paragraph 1.

Article 49

Actions

relating to the levy of execution on the

Community patent

By way of derogation from the provisions applicable under
Article 47, the courts and authorities of the Member State
determined under Article 14 shall have exclusive jurisdiction
in proceedings
relating to the levy of execution on a
Community patent.

Article 50

Supplementary provisions on jurisdiction

1. Within the Member State whose courts have jurisdiction
under Article 47, those courts shall have jurisdiction which

(1) OJ C 27, 26.1.1998, p. 3.

2.
Actions relating to the Community patent for which no
court has jurisdiction under Articles 47 and 48 and paragraph
1 of this Article may be heard before the courts of the Member
State in which the European Patent Organisation has its seat.

Article 51

Obligations of the national court

A national court hearing an action or application referred
1.
to in Article 30 shall declare of its own motion that it has no
jurisdiction.

A national court hearing an action or claim relating to a
2.
Community patent other than the actions referred to in Article
30 shall treat the patent as valid unless it has been declared
invalid by the Community intellectual property court
in a
decision which has the authority of res judicata.

3.
A national court hearing an action or claim relating to a
Community patent other than the actions referred to in Article
30 shall stay the proceedings if it considers a decision on an
action or application referred to in Article 30 to be a prior
condition for its judgment. Proceedings shall be stayed either
by the court of its own motion, after hearing the parties, where
an action or application referred to in Article 30 has been
brought before the Community intellectual property court, or
at the request of one of the parties, and after hearing the other
parties, where proceedings have not yet been brought before
the Community court. In the latter case, the national court
shall
invite the parties to bring such proceedings within a
period prescribed by it. If such proceedings are not brought
within the prescribed period,
the proceedings before the
national court shall continue.

Article 52

Applicable law of procedure

Unless otherwise provided in this Regulation, a national court
shall apply the rules of procedure governing the same type of
action relating to a national patent in the Member State in
which it is situated.

SECTION 3

ARBITRATION

Article 53

Arbitration

The provisions of
this Chapter relating to jurisdiction and
judicial procedure shall be without prejudice to the national
arbitration rules of the Member States. However, a Community
patent may not be declared invalid or be invalidated in arbi-
tration proceedings.

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CHAPTER V

IMPACT ON NATIONAL LAW

Article 54

Prohibition of simultaneous protection

1. Where a national patent granted in a Member State
relates to an invention for which a Community patent has
been granted to the same inventor or to his successor in title
with the same date of filing, or, if priority has been claimed,
with the same date of priority, that national patent shall be
ineffective to the extent that it covers the same invention as the
Community patent, from the date on which:

(a) the period for filing an opposition to the decision of the
Office to grant a Community patent has expired without
any opposition being filed;

(b) the opposition proceedings are concluded with a decision

to maintain the Community patent;

or

(c) the national patent is granted, where this date is subsequent
to the date referred to in point (a) or (b), as the case may
be.

The subsequent

2.
patent shall not affect the provisions of paragraph 1.

lapse or invalidity of

the Community

3.
Each Member State may prescribe the procedure whereby
the effect of the national patent is determined to have been lost
in whole or, where appropriate, in part. It may also prescribe
that the loss of effect shall apply from the outset.

4.
Simultaneous protection by a Community patent or
Community patent application and a national patent or
to the date
national patent application shall exist prior
applicable under paragraph 1.

Article 55

National utility models and utility certificates

Article 54 shall apply to utility models and utility certificates
and to applications for utility models and utility certificates in
the Member States whose laws make provision for such
protection rights.

CHAPTER VI

FINAL PROVISIONS

Article 56

for by this Regulation. The Register shall be open to public
inspection.

Article 57

Community Patent Bulletin

The Office shall periodically publish a Community Patent
It shall contain entries made in the Register of
Bulletin.
Community Patents, as well as other particulars whose publi-
cation is prescribed by this Regulation or by the implementing
regulation.

Article 58

Optional translations

The proprietor of the patent shall have the option of producing
and filing with the Office a translation of his patent in several
or all of the official languages of the Member States which are
official languages of the Community. Those translations shall
be made available to the public by the Office.

Article 59

Implementing regulation

The rules implementing this Regulation shall be adopted

1.
in an implementing regulation.

2.
The implementing regulation shall be adopted and
amended in accordance with the procedure laid down in
Article 61(2).

Article 60

Rules relating to fees

The rules relating to fees shall determine the annual
the

1.
renewal
including additional
fees and the ways in which they are to be paid.

the amounts of

fees,

fees,

2.
The rules relating to fees shall be adopted and amended
in accordance with the procedure referred to in Article 61(2).

Article 61

Establishment of a committee and procedure for the
adoption of the implementing regulations

1.
The Commission shall be assisted by a committee, the
Committee for issues relating to fees and to the rules for the
implementation of the Regulation on the Community patent,
composed of representatives of the Member States and chaired
by the representative of the Commission.

Register of Community Patents

The Office shall keep a Register of Community Patents, which
shall contain those particulars whose registration is provided

2. Where reference is made to this paragraph, the regulatory
procedure laid down in Article 5 of Decision 1999/468/EC
shall apply, in compliance with Article 7 thereof.

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The period provided for in Article 5(6) of Decision

3.
1999/468/EC shall be three months.

Article 63

Entry into force

Article 62

Report on the implementation of this Regulation

Every five years from the date on which this Regulation enters
the Commission shall publish a report on its
into force,
implementation.
In particular, the report shall focus on the
impact of the costs incurred in obtaining and renewing the
Community patent and the effect of the litigation system in
respect of infringement and validity.

This Regulation shall enter into force on the sixtieth day
1.
following that of its publication in the Official Journal of the
European Communities.

2.
Applications for a Community patent may be filed with
the Office from the date laid down in a Commission Decision
in accordance with the procedure referred to in Article 61(2).

This Regulation shall be binding in its entirety and directly
applicable in all Member States.