Opinion of the Economic and Social Committee on the "Proposal for a Council Regulation on the Community patent"
Date: 2001-03-29
Institutions: European Economic and Social Committee
Subjects: EU law - national law, European patent, patent law

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3. Conclusion

The Committee wholeheartedly supports the reform of
3.1.
the system for applying competition rules. This initial legislat-
ive instrument establishes essential machinery, and the Com-
mittee appreciates the clear and bold wording used.

3.2.
However, in view of the complexity of the topic, and
also in order to match the laudable commitment shown by the

Commission, the Committee cannot hide the fact that it would
have liked further clarifications and information,
in the
form of official accompanying measures, as stated in its
December 1999 opinion.

3.3.
The Committee will follow the Commission’s future
work with keen interest, particularly as regards the important
additional measures announced. The Committee promises to
offer the Commission its usual constructive collaboration.

Brussels, 29 March 2001.

The President

of the Economic and Social Committee

Göke FRERICHS

Opinion of the Economic and Social Committee on the ‘Proposal for a Council Regulation on the
Community patent’

(2001/C 155/15)

On 7 September 2000 the Council decided to consult the Economic and Social Committee, under
Article 262 of the Treaty establishing the European Community, on the above-mentioned proposal.

The Section for the Single Market, Production and Consumption, which was responsible for preparing
the Committee’s work on the subject, adopted its Opinion on 14 March 2001. The rapporteur was
Mr Simpson.

At its 380th plenary session (meeting of 29 March 2001) the Economic and Social Committee adopted
the following Opinion by 77 votes to 22 and with eight abstentions:

1.

Summary and recommendations

1.1.
The Committee welcomes and supports the initiative
of the Commission in proposing a Regulation to facilitate the
establishing of a Community patent.

The Committee accepts that

1.5.
to use
the procedures of the European Patent Office to register a
Community patent is both logical and simpler than any
proposal for a parallel system.

the proposal

1.2.
The Committee endorses the proposal that the Com-
munity should become a member of the Munich Convention
as a method of introducing the Community patent.

1.6.
The Committee believes that it is a crucial feature of
the proposal for a Community patent application procedure
that it should co-exist readily with the existing arrangements
for national and European patent application procedures.

1.3.
The Committee hopes that the European Patent Organ-
isation will welcome this proposal and co-operate on its
implementation and thus provide extra encouragement of
innovation and research in the European Community.

The Committee agrees that there are strong and valid
1.4.
reasons to introduce the Community patent by way of an
appropriate Regulation.

1.7.
The Committee regards the prospect of lower cost for
a Community patent as a crucial requirement of the proposed
system. The Commission proposal offers the prospect that the
cost of a Community patent might be considerably lower than
those incurred when a European patent is registered for several
countries within the Community.

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1.8.
After consideration of other options, the Committee
supports the recommendation of the Commission that the
Community patent would require to be registered in full in
one of the three procedural languages and that the claims
should be translated into the other two.

The Committee considers that

1.8.1.
the Commission
should accept arrangements that an application for a Com-
munity patent could be presented in the language of the
applicant and should be translated into one of the three
procedural languages without additional cost to the applicant.

The Committee recommends that when a patent is
1.9.
unknowingly infringed, because it is not available directly in
the language of the infringer, this should only be acceptable as
a defence when the infringer shows that he could not
reasonably and easily have had this information. Decisions on
these issues would fall within the competence of the Com-
munity Intellectual Property Court.

1.10.
For the effective operation of a Community patent,
the legal mechanisms at each stage should be clearly defined
and widely understood. The Committee expects further consul-
tation on these issues to test their acceptability to those who
have the main professional interest in their functioning.

1.11.
The Committee considers that, if a Community patent
is to operate effectively and efficiently, a Community-wide
form of legal jurisdiction should be established and would
support the proposal to establish a Community Intellectual
Property Court on the lines proposed by the Commission with
the proviso that the functions of First Instance are carried out
in existing national tribunals operating in the capacity of a
Community Court of First Instance (in the country where the
defendant is domiciled or where the breach has taken place).

The Committee believes that the Commission should
1.12.
make proposals, at this stage, to ensure that a Community
Intellectual Property Court would be accessible and affordable
to smaller businesses. It would be unacceptable if the Com-
munity Court was in reality, because of cost, access and ‘right
of audience’, effectively not available to SMEs or small research
organisations.

1.13. When the Commission publishes proposals for the
functioning of the Community Court, the Committee expects
that they will be designed to ensure that judgements are
applied uniformly across the Community and avoid the
potential inconsistencies of the present nationally based Euro-
pean Patent procedures.

2.

Introduction

2.1.
The merits and value of a patent procedure which
facilitates the uniform application and enforcement of patent
rights across the whole of the European Union are not in
doubt. A mechanism to offer enforceable rights in the whole
territory of the Community is a logical and necessary part of
the creation of a genuine Single Market. As later sections of
this Opinion will demonstrate, the Committee regards the
successful conclusion of an agreement on the early introduc-
tion of a unitary Community patent as both necessary and
urgent.

The Committee endorses the main thrust of

the
2.2.
proposal from the Commission and commends the prep-
aration of a timetable for its expeditious implementation, if
possible before mid-2002.

2.3.
It is already possible to be covered throughout the
European Union by a centrally issued European patent, albeit
one which is converted into a set of national patents in each
Member State. However, a new industrial property right,
applied without borders across the European Union is a
necessary method of helping to ensure the free movement of
goods that are protected by patents across national borders.

2.4.
A unitary Community patent is a useful step in the
creation of a genuine Single Market. For businesses, this will
encourage innovation and research and development, enhance
access to markets, and give increased legal certainty. The
expectation is that, over time, this will encourage the filing of
a larger number of patents and reduce the deficit in filing
numbers between the USA and Europe.

2.5.
The earliest discussion of the merits of a patent with
Community-wide application (a Community patent) can be
found in the 1960’s. Several initiatives have been taken at
various dates but none have produced a proposal which
has been formally approved and implemented within the
Community.

2.6. More recently, the urgent need to create a Community
patent was formally restated by the European Commission (1)
and endorsed by the European Council (2). Reflecting the
political thrust of the Lisbon European Council, these state-
ments of intent now need to be implemented as quickly as
possible. A successful conclusion is even more significant
because of the rapid evolution of the capacity and use of new
forms of information technology.

(1) COM(1999) 42 final, 5 February 1999.
(2) European Council conclusions, Lisbon, 23 March 2000.

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2.7.
The Committee considered the role of a Community
patent in an Opinion (1) adopted in February 1998. The
rapporteur was Mr Bernabei. That Opinion responded to a
Green Paper by the Commission on the merits of a Community
patent and the way in which the existing patent system in
Europe was functioning (2).

2.8.
In May 2000, the Committee commented on ‘the need
for the procedures required to establish and operate a European
patent system (to) be made simpler, shorter and cheaper’ in an
Opinion on the creation of a European research area. The
rapporteur was Professor Wolf (3).

in September 2000, the Committee
2.9. More recently,
asked the Commission to start work on creating a Community
patent as part of an industrial and intellectual property policy
reflecting the need to enhance Community research. The
rapporteur was Mr Bernabei (4).

2.10.
As part of the preparatory work in the drafting of this
Opinion, members of the Study Group visited the offices of
the European Patent Organisation in Munich and had the
benefit of listening to the advice of the senior staff, lead by
the Chairman of
the Patent Office, Mr Kober, and staff
representatives. This facilitated a wide-ranging discussion in a
Round Table conference of experts to which were also
invited representatives from the countries that may join the
Community when the current enlargement negotiations are
completed.

3.

The Commission proposal: the background

3.1.
The proposal for a Council Regulation on the Com-
munity patent has evolved, inter alia, from the responses to the
earlier Green Paper. It was foreshadowed in the Commission
Communication (5) published in early 1999.

The European patent (6) was introduced in 1973 as a
3.2.
product of the Munich Convention which established the
European Patent Organisation. The European Patent Conven-

(1) OJ C 129, 27.4.1998, p. 8.
(2) ‘Promoting innovation through patents’, COM(1997) 314, 24 June

1997.

(3) ‘Towards a European research area’OJ C 204, 18.7.2000, p. 70.
(4) ‘Follow-up, evaluation and optimisation of the economic and

social impact of RTD’OJ C 367, 20.12.2000, p. 61.

(5) op. cit, February 1999.
(6) Throughout this document care must be taken not to confuse the
different concepts of a European patent (as presently defined) and
a Community patent (which is the object of the Commission
proposal).

tion (EPC) regulates the procedure for the granting of patents.
The European Patent Organisation incorporates an Adminis-
trative Council appointed by the Member States which have
signed the Munich Convention.

3.2.1.
The European Patent Organisation is an inter-govern-
mental organisation which is not one of the institutions of the
European Union and whilst all Member States of the Union
have signed the Convention,
it also has members from
countries which are not members of the Union (7).

3.2.2.
A patent registered with the European Patent Organ-
isation can have effect in any or all the countries specified in
the application, provided that it is (if the applicant so requires)
fully translated into the official language of each country after
it has been granted. Hence, a European patent may apply in
up to 20 different countries.

European patents are enforceable but only under
3.2.3.
the national
law of each country. Consequently, although
described as European, they have the status in each country
equivalent to a national patent. The legal proceedings under
the patent may call for legal action in each country involved.
Separate actions also involve the risk of inconsistent legal
decisions in different jurisdictions.

3.2.4.
The European patent application system was a
considerable improvement on the earlier national systems but
is unsatisfactory since registering a patent in only a small
number of countries is nonetheless still expensive.

3.3.
Following the compromise that lead to the Munich
Convention in 1973, the Member States of the European
Union considered, in 1975, in a second round of negotiations,
a further proposal for a Community patent.

3.3.1.
In principle, there was agreement on the creation of
a Community patent through what became the Luxembourg
Convention. Over the years which followed, the Luxembourg
Convention was amended by including, inter alia, a Protocol
on the Settlement of Litigation concerning the Infringement
and Validity of Community Patents. However, it never entered
into force, since it was only ratified by seven (of the then 12)
Member States.

3.3.2.
The failure of all the EU countries to ratify the
Luxembourg Convention is attributed to the lack of agreement
on the cost and complications of the translations required by
the different states as well as the complexity of the judicial
system which would have been used.

(7) In early 2001, this includes Switzerland, Monaco, Liechtenstein,

Cyprus and Turkey.

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3.3.3. With this history, the Commission has prepared the
present proposal for a new Regulation.

5.2.2.
This will call for some amendments to the Munich
Convention which would need to be agreed by another
diplomatic conference on the Munich Convention (1).

4.

The Commission proposal: a summary

The Commission proposal contains

4.1.
two crucial
elements. The first is an extension of the working methods of
the European Patent Organisation to create a Community
patent. The second is a proposal to introduce a mechanism to
ensure an acceptable form of
for the
Community patent within the institutional framework of the
European Community. The Committee suggests that these
two elements should be considered together in reaching a
conclusion on the Commission proposal. There are other
consequential proposals to clarify the administrative arrange-
ments.

legal enforcement

4.2.
A Community patent will be introduced by allowing
the European Community, as a single entity, to become a
member of the Munich Convention (which created the Euro-
pean Patent Organisation). The Community would have the
status equivalent to that of a member joining an international
convention so that any applicant, whether based in the
Community or not, could obtain a patent which would
apply to the whole territory of the Community. Registration,
examination of applications and the granting of patents would
be handled by the European Patent Office.

4.3. When the procedures to register and grant a Com-
munity patent are agreed, there will be three patent instruments
available. Patent users may, according to their own interests,
register either with their national authorities, or seek a
European Patent, or consider registering a Community Patent.

5. General comments

For the proposal

5.1.
for a Council Regulation on a
Community Patent to be accepted there is a number of related
questions to be determined. These include the need to obtain
co-operation from the European Patent Organisation.

The Committee notes that

5.2.3.
the Commission has
obtained a negotiating mandate from the Council of Ministers
of the European Community to revise the Munich Convention.
These negotiations not only have to ensure the mechanisms to
create a Community patent but also that arrangements are
made so that, over time, any further changes are accommo-
dated in a symbiotic fashion and so that consistency between
the Regulation and the Munich Convention is maintained.

The Committee notes that the introduction of the
5.2.4.
Community patent will have far-reaching effects on the
national patent offices, especially with regard to their role and
functions and even their financial resources. The Community
patent as such is not dependent on the involvement of national
patent offices. Nevertheless, national patent offices have an
important role to play in the development of the patent system
in Europe. Therefore, it is important to address the question of
the future of the national patent offices in order to identify
what measures are appropriate to ensure that
they can
continue to play their part in support of innovation in the
Community.

6.

Specific comments on the proposal

6.1.
The concept of a Community patent registered through
membership of the European Patent Convention raises a
number of related and operational questions.

6.1.1.

The more important are:

1.

the method of introducing this decision to Community
law;

2.

the inter-action with the European Patent Organisation;

3.

the relationship with existing patent systems and the
national patent offices;

5.2.
The Committee endorses the proposal that the Com-
munity should become a member of the European Patent
Convention as a method of introducing a Community patent.

4.

the cost of a Community patent;

5.

information and language requirements;

5.2.1.
The Committee notes that the European Patent Office
welcomes this proposal and will co-operate actively on
implementation in order to make for easier access to a patent
covering the entire European Community.

(1) A diplomatic conference on the reform of the European Patent
Organisation was held in Munich in November 2000. However,
this conference did not deal with the Community Patent.

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6.

7.

implications of the language rules for enforcement pro-
cesses;

Convention, already tried and tested, will apply. So also will
the case law under the Munich Convention that has evolved
within the European Patent Organisation.

appropriate legal institutions to enforce the Community
patent.

6.2.
To achieve an acceptable framework for the creation
of a Community Patent, the Committee acknowledges that the
questions related to cost, languages and legal processes are
interlinked. The proposals which follow in later paragraphs
represent a compromise to reflect the competing pressures in
devising an acceptable and practical outcome.

6.2.1. T h e l e g a l b a s i s f o r a C o m m u n i t y p a t e n t

6.2.1.1.
The Commission has proposed that the introduc-
tion of a Community patent should be by means of a
Regulation, under Article 308 of the Treaty. This procedure
has already been used in relation to the fully implemented
Community Trade Mark and for the proposal for Community
Designs (1).

6.2.1.1.1.
The reason for the proposal that a Regulation
should be used to introduce the legal instrument is that the
procedures must be standardised across the Community and
Member States should not be left with discretion, as would be
implicit in the use of a Directive. If a Community patent is to
have the necessary impact in terms of its acceptance,
its
application and its administration, then a clear single binding
framework is needed.

6.2.1.1.2.
The Committee agrees that the introduction of
the Community patent by way of a Regulation is both
appropriate and necessary and this proposal has the strong
support of the Committee.

6.2.2. T h e

i n t e r - a c t i o n w i t h t h e E u r o p e a n

P a t e n t O r g a n i s a t i o n

6.2.2.1.
The Community Regulation will necessarily need
to conform with the requirements of the Munich Convention
so that the Community can accede as a member of the
Convention.

6.2.2.2.
An advantage of the accession of the Community
to the Munich Convention is that the Community Regulation
does not need to develop a separate set of substantive rules on
specific mechanisms for the registration of a Community
patent. For example, the conditions of patentability will be
those established under the Convention. The rules of the

(1) COM(2000) 412 at point 2.2.

6.2.2.3.
The Commission does, however, propose that the
Community patent should be governed with some departures
from (or additions to) the existing rules of the Convention. In
particular, these variations relate to the cost of the grant of the
patent, the need for and scale of translations, and the issue of
jurisdiction. These are commented on in the following sections.

6.2.2.4.
The Committee agrees that this forms the basis of
an effective and efficient relationship with the European Patent
Organisation.

6.2.3. R e l a t i o n s h i p w i t h e x i s t i n g p a t e n t s y s -

t e m s

The Commission has proposed that the Com-
6.2.3.1.
munity patent system should co-exist with the other systems
(e.g. the national patent system and the European patent
system).

6.2.3.2.
At this stage in the evolution of the Community
there do not seem to be any convincing arguments that this
co-existence of patent systems will make for undue difficulties.
Co-existence cannot, however, mean complete flexibility of
choice between the European patent system and the Com-
munity patent system once an initial application has been filed
in both the Munich Convention countries and with the
Community.

6.2.3.3. Where the party applying for a European patent
designates only some — i.e. not all — Community countries,
an extension to convert to a Community patent would not be
an option. This position is based on the generally accepted
principle of Patent Law of protecting third party rights that the
territories to be protected must be stated at the time of
application and cannot be increased thereafter. This does pose
a question about the applicability of any Community patent to
countries which become members of the Community at a later
date.

6.2.3.4.
If the Community patent attracts significant sup-
port, as would be expected, then at some later date the
Commission may wish to consider a submission to the
European Patent Organisation to rationalise the European
patent or make it a variant, or extension, of the Community
patent applicable to countries outside the Community. Never-
theless, it should continue to be possible for applicants to seek
registration in a selection of countries from those participating
in the European patent system rather than applying for a
Community patent.

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6.2.3.5.
The Committee believes that it is a crucial feature
of the proposal for a Community patent application procedure
that it should co-exist readily with the existing arrangements
for national and European patent application procedures.

languages. It is acknowledged that this would lead to the
available information on existing property rights being
less available in individual countries. To compensate for
this, particular provisions are envisaged (see below) where
a breach of patent case occurs.

6.2.4. T h e c o s t o f a C o m m u n i t y p a t e n t

6.2.4.1.
The challenge for the Community patent is to find
an acceptable compromise which reduces translation cost,
simplifies and reduces the fee charges, including the renewal
fees, and as a result will also reduce the fees paid to agents for
a patent with Community coverage, which provides the
requisite information and is acceptable in all the Member
States.

The Commission has included in its proposal for a
6.2.4.2.
Council Regulation an illustrative calculation of the compara-
tive cost of registering a European patent which applies to
each of the countries of the European Community and must
be registered in the language of
the applicant and also
translated into up to eight national languages (1). Cost will
differ widely depending on the nature of the application and
the necessary amount of translation. Nevertheless, there is little
doubt that a European patent system, which requires the
granted European Patent to be translated in the language of
each country concerned, incurring renewal fees in each country
and fees to agents, is significantly more expensive than a single
mono-lingual application and patent, i.e. in countries such as
the USA or Japan (2).

6.2.4.3.
The interests of the applicant contrast with those
of the general public and other potential users who are obliged
to respect an industrial property right with EC-wide validity.
National Patent Offices also need financial resources to fulfil
their remit and these come from fees.

6.2.4.4.
dations is that for a Community patent:

The implication of the Commission recommen-

a.

initial examination and filing fees would be those charged
by the European Patent Office;

b. maintenance fees would be set by the Community
Regulation and paid to the European Patent Office and
should be lower than the sum of the national renewal
fees of each of the EU Member States;

c.

translation cost would be lower because of the removal
of the obligation to provide a translation into all the EC

(1) COM(2000) 412 at point 2.4.3.1, Table 1.
(2) COM(2000) 412 at point 2.4.3.2, Table 2.

The expectation is that a Community Patent would
6.2.4.5.
be less costly than a European Patent which was registered in
several countries. Fee charges (which are a major part of total
cost) would be lower and translation cost should be lower.

6.2.4.6.
The Committee regards the prospect of lower cost
for a Community patent as a crucial requirement of the
proposed system. The Commission proposal means that the
cost of a Community patent could be considerably lower than
those incurred when a European patent is registered for several
countries within the Community.

6.2.5. I n f o r m a t i o n
m e n t s

a n d

l a n g u a g e

r e q u i r e -

6.2.5.1.
A major cost saving proposal to help the users of
the patent system is linked to a significant policy decision on
the language arrangements for Community patents with
particular regard to the extent to which reducing the number
of translations is acceptable.

6.2.5.2.
The proposed Regulation suggests that, once a
Community patent has been granted in one of the three
procedural languages of the European Patent Office (French,
German and English) and published in that language, it should
be accompanied by a translation only of the claims of the
patent (and, compulsorily, only the claims) in the other two
procedural languages. The Community patent will then be
valid in that form in all Community countries without any
other translations.

6.2.5.2.1.
The Committee would point out that natural and
legal persons resident or established in the territory of a
Member State whose official language is other than English,
French or German can submit patent applications in the
their country. They must however
official
submit a translation in one of the abovementioned official
procedural languages within a given period of time.

language(s) of

6.2.5.3.
A complete translation — as currently required
under the European patent system — could become relevant
in any later legal proceedings where an allegation of infringe-
ment was made. Then, a complete translation of the description
and the claims into the language of the Member State where
the suspected infringer is domiciled might be required to gain
full legal benefits.

6.2.5.4.
related to two aspects of

The Committee has considered various options
for
this part of

the proposal

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a Community patent. First, the language requirements on
registration and second, the suggested presumption when
the language question is linked to a claim of ‘unknowing
infringement’.

6.2.6.2.
The Commission has proposed that ‘a suspected
infringer who has been unable to consult the text of the patent
in the official language of the Member State in which he is
domiciled, is presumed, until proven otherwise, not to have
knowingly infringed the patent’ (2).

The Commission has proposed a radical change
6.2.5.5.
from the language requirements of a European patent. If a
Community patent is to prove particularly cost-effective, this
is a necessary consideration. The advice of the European Patent
Office is that this is a crucial factor.

6.2.6.3.
This presumption then has consequences for the
claims for damages on behalf of the patent holder but not on
liability for infringement.

6.2.5.6.
A range of possible alternatives, in addition to the
Commission proposal (see point 6.2.5.2) was considered by
the Committee.

One was a proposal

6.2.5.6.1.
that would ask for a
translation of the claims (and only the claims) into all the
official languages of the Community. The problem lies in the
number of languages that would be required. If the European
Union is to enlarge to over 20 Member States, the cost become
more formidable, but would still be more modest than a
complete translation of the Community patent.

6.2.5.6.2.
Another possibility is that the application should
be prepared in the language of the applicant and the claims
translated into English (but not, as a requirement, into French
and German), as English is the main working language used in
the European Patent Office (1). In this connection, consider-
ation was also given to a requirement for a translation of the
complete patent into English.

6.2.6. I m p l i c a t i o n s o f t h e l a n g u a g e r u l e s f o r

e n f o r c e m e n t p r o c e s s e s

6.2.6.1.
As a consequence of the proposal on the official
languages of the Community patent, the Commission is faced
with a further difficult question in terms of the enforcement of
Community patents. Should the obligation to observe the
Community patent apply without any exceptions across
the Community? This would be consistent with the usual
presumption that ‘ignorance’ is no excuse. Alternatively, if the
claims or full patent are not published in the language of the
relevant country, is a defence of unknowingly infringing the
patent acceptable, whatever the size of the organisations? The
objective of securing legal certainty points to the need for
adequate information on the claims at least being available in
full translated form.

6.2.6.4.
One alternative is that the Community should place
an obligation on businesses, and their agents, to undertake a
search of Community patents. However, unlike other legal
processes where there is a duty ‘to know’, such an obligation
for knowledge of existing patents is not considered a practical
suggestion. It would place an extra burden, on all potential
users, in contrast to the existing European patents.

6.2.6.5.
If a defence of ‘unknowing infringement’ is to be
acceptable, the wording used by the Commission may need to
be made more restrictive. The proposal as presently drafted,
might encourage wilful neglect of what should be a duty of
due diligence and care. In addition, Article 6 confers some
right to a licence of the patent on those who wrongfully but
unwittingly register a patent that is later found to be invalid.

The Commission further suggests that, if the pre-
6.2.6.6.
sumption applies, the proprietor of the patent would not be
able to obtain damages for ‘the period prior to the translation
of
the patent being notified to the infringer’. However,
the investments made and then lost by the party which
unknowingly infringed the patent may greatly exceed the level
of damages.

6.2.6.7. Would the Commission be prepared to add a
condition that an ‘unknowing infringement’ would only be
acceptable if the infringer could not reasonably have known
of the patent and could not easily have gained that knowledge
without undue difficulty?

After consideration of other options, the Com-
6.2.6.8.
mittee supports the recommendation of the Commission that
the Community patent should be required to be registered in
full in one of the three procedural languages and that the
claims should be translated into the other two, despite the fact
that this may make questions of legal enforcement more
complex.

(1) OJ C 204, 18.7.2000, see footnote 5, rapporteur Professor Wolf,
the ESC suggested the use of English as a common second
language (point 7.9) for the European patent system.

(2) COM(2000) 412 at point 2.4.4.

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6.2.6.8.1.
If this method is chosen the Committee considers
that the Commission should accept arrangements to ensure
that an application for a Community patent could be presented
in the national
language of the applicant, and should be
translated into one of the three procedural languages without
cost to the applicant.

6.2.6.9.
The Committee recommends that when a patent is
unknowingly infringed, because it is not available directly in
the language of the infringer, this should only be acceptable as
a defence when the infringer shows that he could not
reasonably and easily have had this information. Decisions on
these issues would fall within the competence of the Com-
munity Intellectual Property Court (as discussed in the follow-
ing section).

6.2.6.10.
The language question not only affects legal
certainty but also the accessibility of information on the
technical content of the Community patent. The Commission
should consider what steps might be taken to ensure wider
dissemination of information.

6.2.6.11.
The Committee considers that if the legal insti-
tutions are to be fully effective both the Register of Community
patents and the Community Patent Bulletin must be considered
as necessary publicity instruments with regard not only to
knowledge of patents granted but also to users.

6.2.7. A p p r o p r i a t e

l e g a l

i n s t i t u t i o n s

t o

e n f o r c e t h e C o m m u n i t y p a t e n t

The Commission proposes the establishment of a
6.2.7.1.
Community Intellectual Property Court for legal action on the
questions of validity and infringement. The Court would
comprise two Instances, one of First
Instance, the other
of Appeal. This would offer a centralized judicial system
specialising, inter alia, in patent matters. Only with a central-
ised system, the Commission argues, will there be an assurance
of Community-wide application of the law and the develop-
ment of consistent jurisdiction.

6.2.7.2.
In other respects, the Community patent would
fall within the remit of national courts (e.g. law of unfair
inventor’s compensation, employee invention
competition,
law).

6.2.7.3.
These proposals differ dramatically from those
outlined in the Luxembourg Convention which envisaged a
mixture of competencies for purely national courts and rules
to delineate the involvement of the European Court. The
responses to the earlier consultation have persuaded the
Commission that the concepts in the Luxembourg Convention
risked becoming impracticable. The new proposal is more
radical but clearer in its remit and operations.

6.2.7.4.
Because this is a particularly specialized area of
law, because there is a need for cases to be handled within a
short time-scale, and because of the existing demands on the
European Court of First Instance and the Court of Justice, the
proposal is to establish a system which, in some institutional
respects, parallels those of the European Court. In support of
this suggestion, the Commission quotes the ruling by the
Court of Justice that Community intellectual property rights
cannot be created by harmonising national legislation (1).

6.2.7.5.
National courts may need to refer to the Com-
munity Court when a case raises wider issues of the validity of
a patent. However, national courts will be competent to
request preliminary rulings on the intellectual property of a
Community patent.

The Community Intellectual Property Court would
6.2.7.6.
consider cases of infringement and cases claiming invalidity. It
would also consider cases arising during the period of ‘tempor-
ary protection’, i.e. between the time of filing and the actual
granting of a patent. The Community Court would not have a
remit to consider issues falling to national courts such as the
right to a patent, transfer of a patent, or contractual licences.

6.2.7.7. Whilst the Committee acknowledges and accepts
the need for a Community Intellectual Property Court, because
of the language problems and the need to bring the legal
process closer to the interested parties, the Committee rec-
ommends that the Court of First Instance should, where
appropriate, hear cases in the national language of the country
in which the case is heard.

6.2.7.8.
The summit at Nice, December 2000, has intro-
duced in the EC Treaty a declaration on Article 229 a TEC
which allows the creation of the necessary legal institutions.

6.2.7.9.
The relationship of the Community Intellectual
Property Court, the Court of First Instance and the European
Court of Justice raises some difficult issues in determining
competence of the various institutions and the relationships
with the Commission and national authorities.

6.2.7.10.
In the filing and registration of a Community
patent, the proposal is to accept the existing, or amended,
procedures of the European Patent Office and its administrative
appeal mechanism. There would be no further appeal from the

(1) Opinion 1/94 of the CJ, 15 November 1994.

C 155/88

EN

Official Journal of the European Communities

29.5.2001

European Patent Office on these issues to any other agency.
When a Community patent
is registered, disputes about
validity and/or infringement would be within the remit of the
Community Intellectual Property Court. For administrative
actions by the Commission, under the proposed Regulation,
the normal reference to challenge the Commission competence
or actions would be to the Court of First Instance.

6.2.7.11.
For the effective operation of a Community patent
it is important that the legal mechanisms at each stage should
be clearly defined and widely understood. The Committee
expects further consultation on these issues to test their
acceptability to those who have the main professional interest
in their functioning.

The Committee considers that, if a Community
6.2.7.12.
patent is to operate effectively and efficiently, a Community-
wide form of legal jurisdiction should be established and would
support the proposal to establish a Community Intellectual
Property Court on the lines proposed by the Commission with
the proviso that the functions of First Instance are carried out
in national specialist tribunals operating in the capacity of a
Community Court of First Instance (in the country where the
defendant is domiciled or where the breach has taken place)
using rules of procedure devised by, and common to all aspects
of, the Community Intellectual Property Court.

6.2.7.13.
should make proposals, at

The Committee believes that the Commission
to ensure that a
this stage,

Brussels, 29 March 2001.

Community Intellectual Property Court would be accessible
and affordable to smaller businesses. It would be unacceptable
if the Community Court was, in reality, because of cost, access
and ‘right of audience’, effectively not available to SMEs or
small research organisations.

6.2.7.14.
The operational proposals for the Community
Intellectual Property Court will presumably be outlined in a
further consultative process. The arrangements should allow
proceedings in the Court of First Instance to be conducted in
more than one location. The Court should have regard to the
merits of offering a degree of proximity to users, particularly
SMEs. Also, the arrangements should make provision for
intermediary, or professional and business organisations, to be
permitted to represent their members.

6.2.7.15.
The Commission has suggested (point 2.4.5.4 of
the Draft) that there should be no provision for references to
the Court of Justice for preliminary interpretation of difficult
issues. This seems to be undesirably restrictive when a new
parallel legal framework is being introduced.

6.2.7.16. When the Commission publishes proposals for
the functioning of the Community Court, the Committee
expects that they will be designed to ensure that judgements
are applied uniformly across the Community and avoid
the potential inconsistencies of the present national patent
procedures which are part of the framework for European
patents.

The President

of the Economic and Social Committee

Göke FRERICHS

29.5.2001

EN

Official Journal of the European Communities

C 155/89

APPENDIX

to the Opinion of the Economic and Social Committee

The following Members, present or represented, voted for the Opinion:

Mr/Mrs/Miss: PAULO ANDRADE, EDOARDO BAGLIANO, JEAN-PAUL BASTIAN, GIANNINO BERNABEI,
LUCIAN BOUIS, UMBERTO BURANI, CLAUDE CAMBUS, GIACOMINA CASSINA, EDUARDO CHAGAS,
CAMPBELL CHRISTIE, ALFREDO CORREIA, GE´ RARD DANTIN, JOHN DONNELLY, ROY DONOVAN, ERNST
EHNMARK, SOSCHA ZU EULENBURG, DAVID EVANS, C. FAKAS, DAVID FEICKERT, RAINER FRANZ,
GO¨ KE FRERICHS, LUCIA FUSCO, P. GERAADS, FILIP HAMRO-DROTZ, RENATE HORNUNG-DRAUS, A.M.
HUNTJENS, SEPPO I. KALLIO, TUULIKKI KANNISTO, SØREN KARGAARD, DETHMER H. KIELMAN, ENRICO
KIRSCHEN, JONANNES KLEEMANN, JOHANN KO¨ LTRINGER, URSULA KONITZER, JORMA U. KONTIO,
CHRISTOFOROS KORYFIDIS, BERND KRO¨ GER, ARTHUR LADRILLE, GORAN LAGERHOLM, PHILIPPE
LEVAUX, MALCOLM LEVITT, STURE ERIK LINDMARK, GEORGES LINSSEN,
JOHN LITTLE, ANDERS
LUNDSTRO¨ M, BERNARD MALABIRADE, HENRI MALOSSE, TED MATHGEN, HELEN MCGRATH, VITOR
MELI´CIAS, DARIO MENGOZZI, LEIF NIELSEN, STAFFAN NILSSON, YIANNIS PAPAMICHAI¨L, ROBERT
PELLETIER, INGER PERSSON, ANTONELLO PEZZINI, JEAN-CLAUDE QUENTIN, GUIDO RAVOET, GIACO-
MO REGALDO, AINA MARGARETA REGNELL, MARTTI OLAVI REUNA, JEAN-CLAUDE SABIN, FRANZ
SCHOSER, VICTOR HUGO SEQUEIRA, JOHN SIMPSON, ULLA SIRKEINEN, MA´ RIO DAVID SOARES, KLAUS
STO¨ LLNBERGER, RUDOLF STRASSER, PAUL VERHAEGHE, BRUNO VEVER, GIANNI VINAY, HEINZ
VOGLER, KENNETH WALKER, CLIVE WILKINSON, GUSTAV ZO¨ HRER.

The following Members, present or represented, voted against the Opinion:

Mr/Mrs/Miss: MANUEL ATAI´DE FERREIRA, RAMON BAEZA SANJUAN, PEDRO BARATO TRIGUERO, JOSE´
BENTO GONÇALVES, MARJOLIJN BULK, MIGUEL CABRA DE LUNA, JOSE´ MARIA ESPUNY MOYANO, JOSE´
IGNACIO GAFO FERNA´ NDEZ, GABRIEL GARCI´A ALONSO, LAURA GONZALEZ DE TXABARRI, JOSE´ DE
LAS HERAS CABAN˜ AS, BERNARDO HERNA´ NDEZ BATALLER, JOHANNES JASCHICK, KOMMER DE KNEGT,
MARGARITA LOPEZ ALMENDARIZ, JUAN MENDOZA CASTRO, FERNANDO MORALEDA QUILEZ, JESU´ S
MUN˜ IZ GUARDADO, LUIS MIGUEL PARIZA CASTAN˜ OS, JOSE´ RODRI´GUEZ GARCI´A CARO, SERGIO
SANTILLA´ N CABEZA, JOSE´ MARIA ZUFIAUR NARVAIZA.

The following Members, present or represented, abstained:

Mr/Mrs/Miss: LISBETH BAASTRUP SØRENSEN, ANN DAVISON, MANFRED DIMPER, AN LE NOUAIL,
DANIEL RETUREAU, CARLOS RIBEIRO, JOHN SVENNINGSEN, ALMA WILLIAMS.