Commission working document on the planned Community patent jurisdiction
Date: 2002-08-30
Institutions: European Commission
Subjects: Court of Justice of the European Union, European patent, General Court (EU), Treaty of Nice, courts and tribunals, jurisdiction

COMMISSION OF THE EUROPEAN COMMUNITIES

Brussels, 30.08.2002
COM(2002) 480 final

COMMISSION WORKING DOCUMENT

ON THE PLANNED COMMUNITY PATENT JURISDICTION

Context

On  1  August  2000  the  Commission  put  forward  a  proposal  for  a  Regulation  on  the
Community patent. In their working paper of 7 May 2001 the Commission services advanced
a detailed approach on the necessary changes to the European Patent Convention in order to
empower the European Patent Office to grant Community patents and to prepare an accession
of  the  Community  to  the  European  Patent  Convention.  The  current  working  document
addresses  the  remaining  fundamental  feature  of  the  Community  patent  system:  the
Community patent jurisdiction.

The  Nice  Treaty  introduces  into  the  EC  Treaty  a  legal  basis  for  the  establishment  of  a
Community  patent  jurisdiction.  Article  229a  of  the  EC  Treaty  constitutes  a  legal  basis  to
confer jurisdiction on the Court of Justice in disputes relating to the application of acts which
create  Community  industrial  property  rights.  Article  225a  of  the  EC  Treaty  allows  for  the
establishment  of  judicial  panels  to  hear  and  determine  at  first  instance  certain  classes  of
actions or proceedings brought in specific areas with the possibility of an appeal to the Court
of First Instance. The Council agreed in its common approach adopted on 31 May 2001 that
these  provisions  should  be  used  as  the  legal  basis  for  the  establishment  of  a  Community
patent jurisdiction. This working document builds on that same approach.

This  working  document  contains  in  its  annex  detailed  suggestions  on  the  jurisdictional
arrangements  based  on  Commission’s  thinking  so  far,  pending  a  formal  proposal  by  the
Commission.  The  primary  purpose  of  this  working  document  at  this  stage  is  to  facilitate
discussions in the Council with a view to reaching an overall political agreement on the main
elements of the Community patent system. The working document is also being forwarded to
the  European  Parliament  and  the  European  Court  of  Justice  since  both  will  be  consulted  in
due  course  on  any  Commission  proposal.  The  Commission  reserves  the  right  to  modify  or
complement  the  suggestions  made  in  this  working  document  should  this  appear  to  be
appropriate  at  the  time  when  it  may  be  in  a  position  to  make  a  formal  legislative  proposal
which will then be subject to scrutiny in accordance with the usual legislative procedures.

Jurisdiction

As explained in  the  proposed  Community  patent  regulation,  the  Commission  is  of  the  view
that a centralised Community jurisdiction specialised in patent matters will best ensure unity
of  law  and  consistency  of  case  law  regarding  the  unitary  Community  patent.  It  should  not
only be delivered according to the uniform standards of the European Patent Convention but it
should  also be  effectively  enforceable  before  a  Community  jurisdiction  guaranteeing  a  high
quality  decision  in  a  quick,  inexpensive  and  uniform  procedure.  Such  a  uniform  procedure
before  a  single  Community  jurisdiction  would  bring  legal  certainty  to  businesses  across
Europe  doing  away  with  the  necessity  of  parallel  costly  and  time  consuming  procedures  in
different Member States.

The litigation with which the specialised Community jurisdiction will deal, litigation between
private parties, does not currently fall within the jurisdiction of the European Court of Justice.
It will therefore be necessary to expressly confer this jurisdiction on the Court of Justice by a
separate Council decision and subsequent adoption by the Member States according to their
own constitutional requirements, as foreseen by Article 229a EC Treaty (Nice).

It is suggested that, in parallel, use be made of Article 225a EC Treaty (Nice) which allows
the setting up of first instance judicial panels. Such a panel, Community Patent Court, would
be attached to the Court of First Instance which would examine the appeals.

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The  specialised  Community  jurisdiction  would  hear  certain  categories  of  actions.  It  is
essential that it can deal at the same time with disputes  relating  to the  infringement and the
validity  of  the  patent.  Separating  jurisdictions  for  these  two  types  of  actions  would  not  be
conducive  either  to  the  sound  administration  of  justice  or  the  efficient  functioning  of  the
Community patent system aimed for in the Regulation, given that the factors which the Judge
has to examine are largely the same in both types of action. Some other, limited categories of
disputes  and  claims  should  also  be  brought  under  the  specialised  jurisdiction.  In  all  cases
where  the  specialised  Community  jurisdiction  has  competence,  including  provisional
measures, its competence should be exclusive.

In  contrast,  decisions  of  the  European  Patent  Office,  which  are  subject  to  a  specific  review
mechanism within the European Patent Convention, would not be reviewed by the specialised
Community  jurisdiction.  Nor  would  it  be  competent  to  review  decisions  taken  by  the
Commission  on  compulsory  licences  pursuant  to  the  Community  patent  Regulation.  Such
decisions shall be subject to review in accordance with existing treaty  provisions before the
Court of First Instance.

Composition

The  Judges  of  the  specialised  Community  patent  jurisdiction  should  be  sufficiently
experienced  in  the  field  of  patents.  The  jurisdiction  should  comprise  both  “legal”  and
“technical”  members.  A case  would  consequently  normally  be  heard  by  two  legal  members
and  one  technical  member.  The  technical  members  are  expected  to  cover  the  three  major
technical  fields  (physics,  chemistry,  mechanics)  and  would  consequently  not  possess  the
highest  expertise  in  each  and  every  field  of  technology.  Their  input  would  nevertheless  be
essential in helping to focus from the start of proceedings on the essential technical questions
involved. Their role would not be to make the use of experts entirely superfluous but rather to
enable  the  court  as  a  whole  to  understand  the  technical  aspects  of  the  case  quickly  and
accurately  which  is  relevant  for  an  efficient  handling  of  a  case  and  for  a  legally  sound
decision.

Another alternative means to make use of technical knowledge, although not pursued in this
document, could be to make use of “Assistant Rapporteurs” as foreseen in the Statute of the
Court  of  Justice.  Such  Assistant  Rapporteurs,  specialised  in  different  technical  fields,  could
actively participate  in the internal deliberations of the  jurisdiction  and  their  possible  reports
could  be  submitted  to  the  parties  before  the  hearing,  but  they  could  not  vote.  The  normal
composition  of  the  bench  would  in  such  cases  be  three  “legal  members”  which  would  be
assisted by an Assistant Rapporteur.

It is expected that, when the system becomes operational, in the first phase of operation only a
limited number of Judges will be required. The approach put forward opts for seven Judges,
including four legal members and three technical members, for the first instance. They could
form  two  sections,  each  sitting  with  two  legal  and  one  technical  member.  With  these
resources, the first instance could be expected to handle around 120 - 150 cases per year. In
the appeal instance, one chamber specialised in patent matters at the Court of  First  Instance
would suffice.

Structure

The  structure  of  the  first  instance  jurisdiction  has  been  the  subject  of  lengthy  discussions
within the Council. Principles of proximity, local presence and closeness to users have been
invoked as counter-arguments against a centralised Community jurisdiction.

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This document takes as a starting point that the first instance court to be put in place must at
the  very  least  in  an  initial  phase  be  completely  centralised.  In  the  beginning,  when  the
Community patent system first becomes operational, there will be relatively few Community
patents and even fewer litigated patents. Consequently, only a limited number of Judges will
be  needed.  It  is  essential  that  these  Judges  work  permanently  together  with  a  view  to
developing  a  common  line  for  proceedings  and  a  coherent  jurisprudence.  They  should  also
prepare the Rules of Procedure of the first instance.

The  use  of  best  available  modern  technologies  should  ensure  a  simple  and  direct
communication between the  court and the  parties.  In  order  to  achieve  this,  provision  would
have  to  be  made  for  facilities  that  allow  for  a  communication  with  the  court  in  electronic
form. The Community Patent Court should also be able to make use of video conferencing for
oral hearings, where appropriate. However, this should not  prevent the  court  from deciding,
on  a  case  by  case  basis,  to  hold  oral  hearings  in  a  Member  State,  should  this  be  more
appropriate than to organise them at its own seat or by video conferencing. Such a hearing in
a Member State  will nevertheless only be possible where the  Member State  in  question  has
put, at its own expense, the necessary infrastructure at the disposal of the court.

Over time, the volume of litigation and thereby the workload of the first instance jurisdiction
can be expected to grow. In such cases it could be justified, from an efficiency point of view,
to  set  up  one  or  more  regional  chambers  in  the  Member  States  to  which  the  litigation  has
proven to be most closely connected. Such regional chambers would be sections of the central
Community  Patent  Court  of  which  they  would  form  an  integral  part.  The  Commission
considers it appropriate, already at this stage, to envisage clear criteria for the launching of the
mechanism to set up regional chambers. In the interests of the users of the Community patent
system it is essential to ensure, on the one hand that the establishment of regional chambers
does not start before the central chamber is sufficiently well established and it has a workload
which  means  it  has  built  up  a  coherent  case  law  but  also,  on  the  other  hand,  that  its
functioning is not hampered by serious backlogs. For these reasons the Commission considers
it appropriate to link the mechanism to set up regional chambers to the number of cases before
the  central  chamber  of  the  Community  Patent  Court.  Of  course,  a  regional  chamber  should
only be established where such a chamber can be expected to have a significant case load, in
particular to ensure a high level of expertise and professionalism on the part of the chamber.
The  appropriate  locations  for  regional  chambers  should  be  determined  on  the  basis  of  the
domicile of parties involved in litigation before the central chamber.

The existence of one or several regional chambers in addition to a central chamber requires,
from  an  efficiency  point  of  view,  provisions  on  the  exercise  of  jurisdiction  between  the
central  chamber  and  regional  chambers.  The  basic  principle  would  be  that  jurisdiction  is
exercised by the central chamber unless there are special rules providing for its exercise by a
regional chamber. The special rules would build upon the principles of the so called Brussels
regulation (Council regulation 44/2001).

The Commission wishes nonetheless to underline that, even if there is a certain delocalisation
via  the  creation  of  regional  chambers,  these  should  possess  and  maintain  the  same  level  of
professionalism as the central chamber. More importantly, they must form an integral part of
the  same  central  Community  jurisdiction  ensuring  the  development  of  a  coherent  body  of
case-law  and  that  the  Community  patent  Regulation  is  interpreted  and  applied  in  the  same
manner throughout the Community.

4

The annex of this document contains three major elements:

I. Conferral of jurisdiction on the Court of Justice

II. Establishment of a judicial panel

III. Changes to the Statute of the Court of Justice relating to the Court of First Instance

5

Annex: Elements of a Community patent jurisdiction

6

TABLE OF CONTENTS

I.

II.

III.

Conferral of jurisdiction on the Court of Justice (Article 229a of the EC Treaty
(Nice)) .......................................................................................................................... 8

Establishment of a judicial panel (Article 225a of the EC Treaty-Nice) ................... 10

Changes to the Statute of the Court of Justice relating to the Court of First Instance37

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I.

CONFERRAL OF JURISDICTION ON THE COURT OF JUSTICE (ARTICLE 229A OF THE
EC TREATY (NICE))

Article  229a  of  the  EC  Treaty  (Nice)  contains  a  legal  basis  to  confer  jurisdiction  in
Community  patent  litigation  on  the  Court  of  Justice  by  way  of  a  Council  decision.  That
Article provides:

"Without  prejudice  to  the  other  provisions  of  this  Treaty,  the  Council,  acting
unanimously on a proposal from the Commission and after consulting the European
Parliament,  may  adopt  provisions  to  confer  jurisdiction  to  the  extent  that  it  shall
determine,  on  the  Court  of  Justice  in  disputes  relating  to  the  application  of  acts
adopted  on  the  basis  of  this  Treaty  which  create  Community  industrial  property
rights.  The  Council  shall  recommend  those  provisions  to  the  Member  States  for
adoption in accordance with their respective constitutional requirements."

The following provisions could form the contents of the Council decision:

Article 1

Conferral of jurisdiction in Community patent litigation

The  Court  of  Justice  shall  have  exclusive  jurisdiction  in  actions  and  claims  referred  to  in
Article  30  (1)  of  Regulation  (…/…)  on  the  Community  Patent,  including  requests  for
provisional measures.

Notes:

On  the  basis  of  Article  229a  of  the  EC  Treaty  (Nice)  this  Article  confers  on  the  Court  of
Justice  jurisdiction  relating  to  the  Community  Patent.  It  also  determines  the  extent  of  such
conferral referring to Article 30 (1) of the Community patent regulation. Such a reference is
the  simplest  way  to  ensure  coherence  between  the  Community  patent  regulation  and  the
Decision.

According to the proposed approach, the Court of Justice shall have exclusive jurisdiction in
proceedings  concerning  the  invalidity  and  the  infringement  of  a  Community  patent,  a
declaration  of  non  infringement,  the  use  of  the  invention  after  the  publication  of  the
Community patent application, the right based on prior use of the invention and an application
for  a  declaration  of  lapse.  With  regard  to  invalidity  proceedings  this  includes  claims  in
separate invalidity proceedings as well as counterclaims. The jurisdiction also covers actions
and claims for damages.

Finally, the provision expressly states that exclusive jurisdiction is also conferred with regard
to provisional measures concerning the conferred subject matter. This seems necessary, since
provisional  measures are not  expressly  mentioned  in  Article  30  (1)  of  the  draft  Community
patent  regulation.  This  approach  is  in  line  with  the  view  taken  by  the  Commission  in  the
proposed Community patent regulation that the Community court should have straightforward
and rapid procedures. Enforcement of decisions in Member States will take place according to
Articles 244, 256 of the EC Treaty. By contrast, it is appropriate not to endow Member States'
courts  with  concurrent  power  to  order  provisional  measures  in  cases  where  the  Community
court would have jurisdiction to decide on the substance of the case. It is important, as far as

8

possible,  to  prevent  any  inconsistency  arising  between  the  provisional  measures  ordered  by
national courts and those ordered by the Community court.

Article 2

Structure of Community jurisdiction

The litigation of Community patents shall at first instance take place before a judicial panel
established  by  a  Council  decision  according  to  Article  225a  of  the  EC  Treaty.  The  appeal
shall lie with the Court of First Instance.

Notes:

This provision refers to the fundamental structure of a Community jurisdiction before which
disputes  over  Community  patents  shall  be  brought.  The  Community  patent  litigation  shall
take place before a judicial panel in the sense of Article 225a of  the EC Treaty (Nice).  The
appeal will be to the Court of First Instance. The reference to Article 225a of the EC Treaty
(Nice) seems appropriate in order to allow Member States to give their consent in accordance
with their respective constitutional requirements to a Community jurisdiction in this field.

Article 3

Adoption by Member States and entry into force of Council decision

The Council recommends the provisions contained in Articles 1 and 2 of this decision to the
Member States  for  adoption  in  accordance with their  respective  constitutional requirements.
The decision shall enter into force on the day of the notification by the last Member State of
its acceptance of these provisions.

Notes:

The entry into force of this decision will depend on the notification by all the Member States
of their acceptance of this decision. The entry into force of this decision is not dependent on
the  decision  establishing  the  Community  patent  judiciary  because  it  only  contains  the
conferral of  competence of jurisdiction to the Community as well as general elements of its
character.  This  competence  will  have  to  be  exercised  by  the  Community  with  the  decision
establishing the Community patent judiciary. That decision will have to ensure that it does not
enter into force before Member States have notified their acceptance of the Council decision
based on Article 229a of the EC Treaty (Nice).

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II.

ESTABLISHMENT  OF  A  JUDICIAL  PANEL  (ARTICLE  225A  OF  THE  EC  TREATY
(NICE))

Article 225a of the EC Treaty (Nice) shall serve as legal basis for the establishment of a first
instance Community patent jurisdiction. That Article provides:

"The  Council,  acting  unanimously  on  a  proposal  from  the  Commission  and  after
consulting the European Parliament and the Court of Justice or at the request of the
Court of Justice and after consulting the European Parliament and the Commission,
may  create  judicial  panels  to  hear  and  determine  at  first  instance  certain  classes  of
action or proceeding brought in specific areas.

The decision establishing a judicial panel shall lay down the rules on the organisation
of the panel and the extent of jurisdiction conferred upon it.

Decisions given by judicial panels  may  be subject to a right of  appeal on points of
law  only  or,  when  provided  for  in  the  decision  establishing  the  panel,  a  right  of
appeal also on matters of fact, before the Court of First Instance.

The  members  of  the  judicial  panels  shall  be  chosen  from  persons  whose
independence is beyond doubt and who possess the ability required for appointment
to judicial office. They shall be appointed by the Council, acting unanimously.

The  judicial  panels  shall  establish  their  Rules  of  Procedure  in  agreement  with  the
Court of Justice. Those Rules shall require the approval of the Council, acting by a
qualified majority.

Unless the decision establishing the judicial panel provides otherwise, the provisions
of this Treaty relating to the Court of Justice and the provisions of the Statute of the
Court of Justice shall apply to the judicial panels."

A Council decision pursuant to Article 225a of the EC Treaty (Nice) would contain provisions
on

(cid:1)  the  establishment,  the  structure  and  the  jurisdiction  of  the  Community  Patent  Court

(Articles 1 to 10),

(cid:1)  the EC Treaty provisions relating to the Court of Justice which shall be applicable to the

Community Patent Court (Article 11),

(cid:1)  the Statute of the Community Patent Court (Articles 12 to 27),

(cid:1)  its entry into force (Article 28).

Article 1

Establishment of a Community Patent Court

(1)

A  judicial  panel,  to  be  called  "Community  Patent  Court  ",  shall  be  attached  to  the
Court of First Instance of the European Communities. Its seat shall be at the Court of
First Instance.

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(2)

The Community Patent Court is composed of a  central chamber  and may comprise
one or more regional chambers set up in accordance with Article 5.

Notes:

The legal basis for the establishment of the Community Patent Court (CPC) is Article 225a of
the EC Treaty (Nice). Article 220(2) of the EC Treaty (Nice) provides that judicial panels are
"attached to the Court of First Instance" following the same approach used for the creation of
the  Court  of  First  Instance  which  is  attached  to  the  Court  of  Justice.  The  provision
corresponds to Article 1 of Council decision 88/591 ECSC, EEC, EAEC of 24 October 1988
establishing a Court of First Instance of the European Communities.

The second paragraph sets out the structure of the CPC. It contains a central chamber (Article
4)  and  may  comprise  one  or  more  regional  chambers  (Article  5).  The  chambers  will  sit  in
sections which hear and decide a case (Article 13).

Article 2

Judges and President of the Community Patent Court

The Community Patent Court shall consist of legal and technical members who are
appointed for a period of 6 years. The membership shall be partially renewed every 3
years.  Retiring  members  shall  be  eligible  for  reappointment.  Immediately  after  all
members  of  the  Community  Patent  Court  have  taken  oath,  the  President  of  the
Council shall proceed to choose by lot the Judges whose terms of office are to expire
at the end of the first 3 years.

The legal members must have a high level of experience in patent law. The technical
members must have a high level of experience in the relevant technical fields and an
appropriate  experience  of  patent  law.  The  members  shall  be  appointed  by  a
unanimous decision of the Council on the basis of a list of candidates produced by an
independent selection committee established by the Council.

The judges shall elect the president of the Community Patent Panel from among their
legal members for a term of 3 years. He may be re-elected. The first president shall
be appointed for a term of 3 years in the same manner as its members. However, the
Governments  of  the  Member  States  may,  by  common  accord,  decide  that  the
procedure laid down in the first sentence of this paragraph shall apply.

(1)

(2)

(3)

Notes:

The  provision  is  modelled  upon  Article  2  of  Council  decision  88/591  establishing  the  CFI.
According  to  the  approach  taken  at  Nice  with  respect  to  the  CFI  such  a  provision  which
concerns the establishment of the panel is not to be incorporated into its Statute.

The  rules  providing  for  the  possibility  to  call  upon  a  judge  to  perform  the  task  of  the
Advocate General as foreseen for the CFI in Article 2(3) of Council decision 88/591 do not
seem to be appropriate for the CPC. On the one hand even at the CFI these provisions have
only rarely been used in its existence, while on the other hand there hardly seems to be any
room  for  the  function  of  the  Advocate  General  before  the  CPC  since  the  panel  will  be
composed of specialised judges.

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Article 2(5) of Council decision 88/591 on privileges and immunities of the members of the
CFI will be dealt with by Article 12 declaring Article 3 of the ECJ Statute (Nice) applicable
for the CPC.

It remains to be seen if a reference to article 6 of the Treaty establishing a single Council and
a Single Commission of the  European Communities will be  necessary which is the  case  for
the CFI in article 2(5) of Council decision 88/591.

Paragraph  1  sets  out  the  specific  nature  of  the  CPC  containing  legal  and  technical  judges.
Apart from legal members, technical members are required on the bench. The approach taken
foresees technical members in the basic three divisions of technology: chemistry, physics and
mechanics (see Article 4 for the central chamber). The technical members could not of course
be expected to possess the highest expertise in every existing subdivision of technology. Their
role would not be to make the use of an expert entirely superfluous but rather  to enable the
Court as a whole to understand the technical aspects of a case more quickly and accurately,
which is relevant for the efficient handling of a case and for a legally  sound decision.  With
their  input  the  Court  will  be  better  equipped  to  prepare  the  oral  hearing  and  ask  relevant
questions  to  parties  or  experts.  As  term  of  office,  a  six  year  term  as  is  the  case  with  CFI
Judges in Article 225(3) of the EC treaty seems appropriate.

A partial renewal of membership shall ensure that the expertise built up by the panel can be
passed  on  from  experienced  judges  to  the  judges  newly  appointed  and  thus  contribute  to
stable  jurisprudence  and  legal  certainty.  The  same  concept  is  foreseen  for  the  ECJ,  Article
223(2)  of  the  EC  Treaty  (Nice),  and  CFI,  Article  224(2)  of  the  EC  Treaty  (Nice)  in
combination  with  Article  12  of  Council  decision  88/591.  Since  such  a  provision  is  not
included  in  Article  225a  of  the  EC  Treaty  (Nice)  for  the  panels,  it  must  be  inserted  in  the
decision  establishing  the  panel.  Since  it  directly  relates  to  the  cornerstones  of  the  CPC  it
seems  appropriate  to  include  it  in  the  part  actually  establishing  the  CPC  rather  than  the
Statute. Retiring judges can be re-appointed as is the case with CFI Judges.

In order to get into a cycle where the CPC is only partially re-staffed at any one time, some
members must have a shorter term of office in the beginning. Such a provision is included in
Article 12 of Council decision 88/591 for the CFI.

Paragraph 2  addresses the qualification of the  members of the  CPC . Article  225a(4)  of  the
EC Treaty (Nice), which prescribes as eligible "persons whose independence is beyond doubt
and who possess the ability required for appointment to judicial office", can be characterised
as a general provision meant to address all the different kinds of possible panels. Paragraph 2
specifies this general requirement for the case of the CPC which is of a special character with
a view on the one hand to the legal subject matter and on the other hand to the necessity to
have  technical  members  on  the  bench.  The  legal  members  must  have  a  high  standard  of
experience in  patent  law.  This  is  particularly  important  because  the  special  nature  of  patent
law  requires  much  experience  in  order  to  reach  well  balanced  decisions.  The  technical
members must have a high standard of experience in the relevant technical fields. At the same
time they must also have a thorough experience in patent law.  The technical members must
have a good understanding of what technical aspects are relevant for a legally sound decision
of the CPC.

The  appointment  of  the  Judges  on  the  basis  of  a  proposal  by  a  selection  committee  shall
ensure that  the  criteria  that  the  Judges  must  fulfil  are  duly  respected.  Since  the  selection  of
candidates  shall  not  be  a  political  decision  but  to  a  large  extent  is  a  technical  question  of

12

finding the best qualified Judges, it seems appropriate to entrust a committee with the task of
producing a list of possible candidates.

Paragraph  3  concerns the  President of  the  CPC. Since only a  legal member  would  have  the
required qualifications to run a court it would seem necessary to restrict the eligibility to legal
members. The term  of  office  of  the  president  of  the  panel  would  be  equal  to  half  a  Judge's
term of office. Sentence 3 and 4 correspond to Article 11(1) of Council decision 88/591.

Article 3

Special functions of the President of the Community Patent Court

The  President  shall  direct  the  judicial  business  and  the  administration  of  the  Community
Patent Court.

Notes:

This provision is inspired by Articles 8 of the ECJ and  CFI Rules of Procedure underlining
the special functions of the President of the CPC. The President shall direct the judicial and
administrative business of the CPC.

Apart from these special functions of the President, he will preside over one of the sections of
the central chamber according to Article 13 (1).

Article 4

Central chamber

The central chamber of the Community Patent Court at the seat of the Court of First Instance
shall consist of seven Judges, four legal and three technical members.

Notes:

At the seat of the CFI in Luxembourg a central chamber of the CPC is established with seven
judges.  In  a  first  phase  the  entire  litigation  is  handled  by  this  central  chamber  of  the  CPC.
Only in  a  second  phase  with  increasing  caseload  are  regional  chambers  established  (Article
5). Once the first regional chamber is established, the central and regional chamber will hear
the cases according to the rules on the exercise of jurisdiction (Article 8 ).

The following considerations have led to a number of four legal and three technical members
for the central chamber: Since the  chamber will sit in sections  with  two  legal  members  and
one  technical  member,  four  legal  members  will  be  necessary  to  form  two  sections.  Each
section will deal with cases of a number of neighbouring fields of technology so that each of
the  section  will,  depending  on  the  technology  concerned,  always  sit  with  one  of  the  three
technical  members.  The  three  technical  members  are  required  to  cover  the  basic  fields  of
technology  in  such  a  way  as  to  equip  the  bench  with  the  necessary  technical  expertise
covering the fields of chemistry, physics and mechanics. The number of two sections for the
central  chamber  seems  appropriate  to  deal  with  the  caseload  of  the  central  chamber  which
would be a maximum of 150 cases according to Article 5.  Each section would thus have to
hear up to 75 cases a year.

13

Article 5

Establishment of regional chambers in Member States

If  the  number  of  cases  introduced  before  the  central  chamber  in  one  calendar  year
exceeds 150  proceedings, a regional chamber of the  Community  Patent  Court shall
be established in the Member State in which the greatest number of parties involved
in litigation before the central chamber were domiciled.

A  further  regional  chamber  shall  be  established  in  another  Member  State  to  be
determined  according  to  the  criteria  set  forth  in  the  previous  paragraph  each  time
that,  after  the  establishment  of  a  new  regional  chamber,  the  number  of  cases
introduced  before  the  central  chamber  in  a  full  calendar  year  again  exceeds  150
proceedings.  For  this  purpose  only  the  parties  to  the  proceedings  which  were
introduced  after  the  relevant  calendar  year  which  led  to  the  establishment  of  the
previous regional chamber will be counted.

Two  or  more  Member  States  can  notify  to  the  Council  that  for  the  purpose  of  the
establishment  of  a  regional  chamber  those  Member  States  would  be  considered
jointly.  For  the  establishment  of  a  regional  chamber  only  those  notifications  are
considered  that  are  effected  before  the  end  of  the  relevant  calendar  year.  The
notification shall contain an agreement of the Member States concerned as to where
the regional chamber common to those Member States shall be established.

Decisions to implement paragraphs 1 to 3 shall be taken by the Council, acting by a
qualified majority at the request of the Community Patent Court made in agreement
with  the  Court  of  Justice  and  after  consulting  the  European  Parliament  and  the
Commission.

When a regional chamber has been constituted in accordance with law, the Court of
Justice shall publish in the Official Journal of the European Communities a notice to
that effect and the date on which the regional chamber will take up its function.

(1)

(2)

(3)

(4)

(5)

Notes:

It  should  be  noted  that  Article  24  provides  for  the  possibility  of  the  central  chamber
conducting proceedings or a part thereof in a Member State. However, where a considerable
amount  of  litigation  is  concentrated  in  a  certain  area  of  the  Community,  litigation  is  most
efficiently dealt with by a chamber that is permanently located in that area. Therefore,  for a
later phase, with an increasing level of Community patent litigation, this Article provides for a
mechanism  to  set  up  one  or  several  regional  chambers  of  the  CPC  for  first  instance  patent
litigation. The criterion chosen to decide the point in time when a first regional chamber will
be  opened  is  the  number  of  cases  newly  introduced  before  the  CPC  in  one  calendar  year
exceeding 150 proceedings. After the establishment of the first regional chamber that chamber
will  draw  a  considerable  number  of  cases  itself,  decreasing  the  caseload  before  the  central
chamber in the following years. The question where the regional chamber will be situated is
decided with a view to  patent  litigation  activity and  hence  the  need  for a  regional chamber.
The  regional  chamber  shall  be  established  in  the  Member  State  to  which  the  highest
proportion of Community patent litigation can be linked on the basis of the parties involved in
litigation before the central chamber. For this purpose the total number of parties of litigation
will be calculated and attributed to Member States with regard to the domicile of these parties.
Where  there  are  multiple  parties  involved  in  a  single  piece  of  litigation,  the  domicile  of  all

14

those parties will be counted. The regional chamber will be established in the Member State
with the highest total of parties at the end of the relevant calendar year.

Paragraph 2 provides for the opening of further  regional chambers each time  the number of
cases  introduced  before  the  central  chamber  again  exceeds  150  in  one  calendar  year.
Subsequent  regional  chambers  will  be  established  in  "another  Member  State"  which  means
that  no  more  than  one  regional  chamber  can  be  established  in  one  Member  State.  The
determination of a Member State in which a subsequent regional chamber shall be established
is again related the domicile of the parties involved in litigation before the central chamber.
With  the  establishment  of  a  regional  chamber  the  calculation  of  the  number  of  parties  will
start  again.  Only  the  number  of  parties  to  the  proceedings  will  be  calculated  which  were
introduced  after  the  relevant  calendar  year  which  led  to  the  establishment  of  the  previous
regional chamber. The question of where further need for decentralisation is felt can only be
determined with reference to those cases that are still heard centrally after the criteria for the
establishment of the previous regional chamber have been met.

Paragraph  3  offers  the  possibility  that  two  or  more  Member  States  group  together  for  the
purpose  of  the  establishment  of  a  regional  chamber.  One  country  alone  might  not  meet  the
requirements  justifying  the  establishment  of  a  regional  chamber  whereas  two  or  three
countries combined would.

Paragraph  4  contains  the  procedure  for  the  establishment  of  regional  chambers.  Whereas
paragraphs  1  to  3  of  this  Article  contain  all  the  relevant  criteria  for  the  establishment  of
regional  chambers,  this  paragraph  provides  for  further  Council  decisions  for  their  concrete
implementation.  The  measures  to  be  adopted  by  the  Council  will  in  particular  concern  the
appointment  of  Judges  and  Registrars  as  well  as  other  questions  relating  to  the  EU  budget,
such as acquisition of buildings and equipment.

Paragraph 5 provides for the publication of a notice by the Court of Justice of the date from
which on a regional chamber will take up its work.

Article 6

Judges of regional chambers

Legal and technical members will be assigned to a regional chamber of the Community Patent
Court by the President of the Community Patent Court for the  entire term of their mandate.
The number of Judges assigned to a regional chamber will depend on  the level of litigation
before it.

Notes:

Regional  chambers  are  only  established  where  a  considerable  demand  justifies  such  a  step.
Where  that  is  the  case  the  regional  chamber  shall,  of  course,  have  the  means  to  work
efficiently. In order to ensure this, it is essential that the Judges permanently  work together.
Legal and technical members shall be assigned to it for the entire term of their mandate.

The regional chambers will deal with all the cases that are brought before them according to
the relevant rules on the exercise of jurisdiction. Each regional chamber will need to have at
least two legal members and three technical members covering the three fields of technology
(chemistry, physics, mechanics). However it is not possible to predict the extent of litigation
before  regional  chambers.  That  is  why  no  exact  number  of  Judges  is  laid  down  and  the

15

provision  limits itself to the principle  that the  number  of Judges  of  a  regional  chamber  will
depend on the level of litigation before it.

Article 7

Jurisdiction

The  Community  Patent  Court  shall  have  at  first  instance  exclusive  jurisdiction  in  disputes
relating to the application of the Community patent regulation to the extent that jurisdiction is
conferred on the  Court  of Justice  by Article 1 of the  decision  conferring  jurisdiction  on  the
Court of Justice.

Notes:

This Article attributes exclusive jurisdiction in  first  instance  Community  patent  litigation  to
the  CPC.  The  extent  of  jurisdiction  is  determined  by  way  of  reference  to  Article  1  of  the
decision conferring jurisdiction on the Court of Justice (Article 229a of the EC Treaty (Nice)).
The  CPC  will  thus  have  jurisdiction  including  provisional  measures  relating  to  the  validity
and the infringement of a Community patent, the use of the invention after the publication of
the Community patent application, the right based on prior use of the invention as well as the
requests for limitation and the declaration of the expiry of the Community patent.

Article 8

Exercise of jurisdiction

(1)

(2)

(3)

(4)

The  central  chamber  of  the  Community  Patent  Court  shall  exercise  jurisdiction,
subject to the following paragraphs.

A regional chamber of the Community Patent Court shall exercise jurisdiction over
actions  against  a  defendant  domiciled  in  the  Member  State  where  it  is  established.
However  an  action  directed  against  two  or  more  defendants  domiciled  in  different
Member States shall be brought before the central chamber of the Community Patent
Court.

Infringement  proceedings  can  also  be  brought  before  the  regional  chamber
established in the Member State where the harmful event occurred. In such a case the
regional  chamber  shall  also  be  competent  to  determine  between  the  same  parties
parallel acts of alleged infringement that occurred in other Member States.

A  chamber  that  would  not  be  competent  to  exercise  jurisdiction  according  to  the
provisions of this Article shall become competent if

(a)

(b)

the action is brought as a counter claim arising on the same facts as those  on
which the original claim was based and the original claim is before it, or,

the defendant enters an appearance before that chamber unless the appearance
was entered to contest the exercise of jurisdiction by that chamber.

(5)

Upon a request by a Member State in which no regional chamber is established, and
a  corresponding  proposal  made  by  the  Community  Patent  Court  in  agreement  with

16

the  Court  of  Justice  and  after  consulting  the  European  Parliament  and  the
Commission,  the  Council,  acting  by  a  qualified  majority,  shall  decide  that  for  the
purpose  of  this  Article  the  exercise  of  jurisdiction  by  an  existing  regional  chamber
shall be extended to that Member State.

Notes:

First  instance  Community  patent  jurisdiction  lies  with  the  CPC  whether  or  not  the  central
chamber or a regional chamber delivers judgement. Nevertheless, some rules are necessary to
attribute the exercise of jurisdiction to either the  central or a regional chamber. This Article
starts from the idea that actions are filed directly at the central or at a regional chamber. The
efficiency  of  proceedings  in  general  and  the  necessary  speed  for  provisional  measures  in
particular  exclude  rules  which  would  make  it  compulsory  to  submit  the  application  to  the
central chamber, which then would allocate the case to one of the regional chambers on a case
by case basis. Also the trust of right-holders in the system can only be assured if the parties to
a case can rely on a clear set of rules on the exercise of jurisdiction to bring their actions and
prepare their defences.

Paragraph 1 states the principle that the central chamber of the CPC will exercise jurisdiction
unless the following paragraphs provide otherwise.

If  a  regional  chamber  is  established,  jurisdiction  with  regard  to  defendants  having  their
domicile  in  that  Member  State  will  according  to  paragraph  2  not  be  exercised  by  the  CPC
centrally  but  by  the  regional  chamber  concerned  (Principle  from  Article  2  of  the  regulation
EC 44/2001).  If a regional  chamber  is established  in  Member  State  X,  infringement  actions
against  alleged  infringers  domiciled  in  X  as  well  as  invalidity  actions  against  right-holders
domiciled  in  that  Member  State  would  have  to  be  brought  before  that  regional  chamber.
However, where  one  action  is  directed  against  more  than  one  defendant  and  the  defendants
are domiciled in different Member States jurisdiction is exercised by the central chamber.

Paragraph 3 provides a further ground for the exercise of jurisdiction by a regional chamber.
In  case of infringement,  the  plaintiff  may  also  bring  his  action  before  the  regional  chamber
where  the  harmful  event  occurred.  The  same  principle  is  contained  in  Article  5  (3)  of  the
Regulation EC 44/2001. Whereas the provision of that regulation not only refers to the place
where  the  harmful  event  "occurred"  but  also  to  the  place  where  the  harmful  event  "may
occur" that reference has not been retained since actions in respect of threatened infringement
of a Community patent are excluded by Art. 30 (2) of the draft Community patent regulation.

When the regional chamber exercises jurisdiction on the  ground that infringement has taken
place  in  the  Member  State  where  it  is  located,  it  shall  not  be  limited  to  examining  that
infringement  only.  It  should  also  be  competent  to  decide  between  the  same  parties  parallel
acts of infringement that occurred in other Member States if the plaintiff files a corresponding
action.  This  seems  necessary  with  respect  to  the  nature  of  unitary  title  of  the  Community
patent and to ensure efficient proceedings avoiding the need for duplicate proceedings.

Paragraph 4 contains two further grounds for the exercise of competence.

Subparagraph  (a)  provides  that  a  chamber  that  is  not  already  competent  to  exercise
jurisdiction on the ground of the preceding paragraphs becomes competent for counter claims
brought to an action of which the chamber in question is lawfully seized. The aim is to decide
a  case  comprehensively  between  the  parties  as  quickly  as  possible  without  jeopardising  the
safeguards  of  a  party  that  lie  in  the  rules  of  the  exercise  of  competence.  If  one  chamber  is

17

already hearing a particular case it should also decide other claims which relate to that case
even if the chamber would not have been competent to decide that claim if it were brought as
an isolated claim. Parties  have to appear  before  the  chamber  to  state  their  case  anyway  and
that chamber then should decide on all claims relating to it. A corresponding provision exists
in  Article  6(3)  of  Council  regulation  EC  44/2001.  In  the  context  of  patent  litigation  this
provision has a  particular relevance  for invalidity  actions brought  as  a counter  claim  by  the
defendant in infringement  proceedings.  While  a  separate  invalidity  action  would  have  to  be
brought  centrally  or  -  if  it  exists  -  before  the  regional  chamber  of  the  domicile  of  the
rightholder, a regional chamber in the Member State of domicile of an alleged infringer would
become competent to hear the invalidity action brought as a counter claim.

Subparagraph  (b)  provides  that  a  chamber  becomes  competent  if  the  defendant  enters  an
appearance before it, a provision that is also foreseen in Article 24 of Council regulation EC
44/2001. If the exercise of competence has not been contested that chamber shall be able to
examine  the  case  and  the  rules  on  competence  shall  not  serve  as  valid  objection  at  a  later
stage.

Paragraph  5  provides  for  the  possibility  that  an  existing  regional  chamber  may  exercise
jurisdiction  with  regard  to  another  Member  State  if  that  Member  State  so  wishes.  This
mechanism shall ensure that Member States in which no regional chamber is established can
have access to a nearby existing regional chamber.

Further provisions governing the exercise of jurisdiction of the CPC by either the central or
regional  chambers  which  might  prove  to  be  necessary  could  be  dealt  with  by  the  Rules  of
Procedure.

Article 9

Agreement on exercise of jurisdiction

Notwithstanding Article 8 of this part of the working paper, a specific chamber shall exercise
jurisdiction  if  the  parties  in  accordance  with  the  provisions  of  the  Rules  of  Procedure  have
agreed  that  jurisdiction  to  settle  any  disputes  that  have  arisen  or  which  may  arise  in
connection with a particular legal relationship be exercised by that chamber; such exercise of
jurisdiction shall be exclusive unless parties have agreed otherwise.

Notes:

Like the case in Article 23 ff. of Council regulation 44/2001, parties shall be able to agree on
jurisdiction under certain circumstances. The rules on jurisdiction take into consideration the
legitimate interests of parties to Community patent litigation and shall be applied unless the
parties validly agree on a different location for litigation which better suits both their interests.
Agreements on the exercise of jurisdiction shall only be possible with regard to disputes that
have already arisen or which may arise in connection with a particular legal relationship. This
is  to  ensure  that  both  parties  can  asses  the  consequences  of  the  agreement.  Further
requirements for a valid agreement such as for example the form of such an agreement may
be laid down in the Rules of Procedure.

18

Article 10

Lis pendens and related actions

Where proceedings involving the same cause of action and between the same parties
are  brought  before  more  than  one  chamber  of  the  Community  Patent  Court  any
chamber  other  than  the  chamber  first  seised  shall  of  its  own  motion  stay  its
proceedings until such time as the exercise of jurisdiction of the chamber first seised
is  established.  Where  that  is  the  case,  any  chamber  other  than  the  chamber  first
seised shall decline the exercise of jurisdiction in favour of that chamber.

Where related actions are pending before more than one chamber any chamber other
than the chamber first seised may stay its proceedings until that other action has been
decided  or  may  refer  with  binding  effect  the  action  to  the  chamber  first  seised.
Actions  are  deemed  to  be  related  where  they  are  so  closely  connected  that  it  is
expedient  to  hear  and  determine  them  together  to  avoid  the  risk  of  irreconcilable
judgements relating from separate proceedings.

(1)

(2)

Notes:

This Article corresponds to Articles 27 and 28 of Council regulation EC 44/2001 and provides
for the treatment of cases where more than one chamber is seised.

Paragraph 1 concerns the situation where two more chambers are seised by the same parties
concerning the same cause of action. In this case the latter seised shall stay proceedings and
await the chamber first seised to confirm its competence to exercise jurisdiction. Where that is
the case the chamber other than the chamber first seised declines competence.

Paragraph  2  concerns  the  situation  where  related  actions  are  pending  before  different
chambers  and  where  they  are  so  closely  connected  that  in  order  to  avoid  contradictory
judgements  they  should  not  be  treated  irrespectively  of  each  other.  In  this  case  a  chamber
other than the chamber first seised can stay proceedings and await the decision of the chamber
first seised or it can refer the case to that chamber.

Article 11

Application of EC Treaty provisions

Save as hereinafter provided Articles 241, 243, 244 and 256 of the EC Treaty shall
apply to the Community Patent Court.

The competence of the Community Patent Court to prescribe any necessary interim
measures  shall  not  be  conditional  upon  main  proceedings  having  already  been
instituted before it.

(1)

(2)

Notes:

Article 225a(6) of the EC Treaty (Nice) declares the provisions of the EC Treaty relating to
the ECJ applicable to the panels unless the decision establishing the panel provides otherwise.
The same is the case for the CFI in Article 225(2) EC Treaty.

19

The  provision  corresponds  to  Article  4  of  Council  decision  88/591  which  enumerate  those
Articles of the EC Treaty which shall apply to the CFI. It should be noted that the applicable
Articles of the EC Treaty do not have the same importance in the framework of private party
patent  litigation  compared  to  the  cases  handled  by  the  ECJ  or  the  CFI  today.  Nevertheless
some of them contain provisions setting  out some basic  rules  and  powers  also  applicable to
the patent judiciary. Unlike the case with the CFI only the relevant Articles of the EC Treaty
and not the ECSC and the EAEC Treaties have been cited. This seems to be sufficient since
the  CPC  will  only  exercise  jurisdiction  in  patent  litigation  and  thus  under  the  EC  Treaty
whereas the CFI can be attributed jurisdiction under all three treaties.

Article 229 of the EC Treaty

This reference included in Article 4 of Council decision 88/591 has not been included in the
corresponding  list  for  the  CPC.  It  deals  with  the  possibility  to  charge  the  ECJ  and  the  CFI
with  the  power  to  control  discretion  exercised  by  the  Council  and  the  European  Parliament
with a view to coercive measures. There seems to be no need for such a provision in patent
litigation.

Article 231 of the EC Treaty

Article 231(1) of the EC Treaty deals with nullification  of an  act of the  Communities.  This
provision  will  not  apply  to  patent  litigation  which  is  private  party  litigation  and  does  not
concern  such  acts.  An  act  of  the  Commission  granting  or  refusing  to  grant  a  compulsory
licence will not fall under the jurisdiction of the of the CPC. Article 231(2) of the EC Treaty
concerns  the  nullification  of  a  regulation  by  the  Court  of  Justice.  The  CPC  shall  not  itself
have the power to nullify provisions of the Community patent regulation. However it should
be noted that parties before the CPC have the possibility to plead for the non-application of a
regulation according to Article 241.

Article 233 of the EC Treaty

puts the obligation on the organs  of the Community  whose  acts  have  been  nullified  or  who
contrary to EC law have not taken all necessary measures that follow from the judgement. For
patent litigation this provision does not apply.

Article 241 of the EC Treaty

allows private parties to plead for the non-application of a regulation on the grounds stated by
Article 230(2) EC Treaty. This provision shall apply in patent litigation as it allows the parties
in patent litigation to indirectly attack the validity of relevant patent provisions.

Article 242 of the EC Treaty

which states the principle that actions have no suspensory effect but that the Court may stop
the  execution  of  a  measure  does  not  apply  since  no  such  acts  are  the  subject  of  patent
litigation.

Article 243 of the EC Treaty

states  the  principle  that  the  Court  can  order  necessary  interim  measures.  Such  provision  is
also valid for private party litigation and should thus apply to the CPC.

20

Articles  244  and  256  of  the  EC  Treaty  concern  the  execution  of  a  judgement  which  occurs
according to the law of the Member State in which execution is sought. This provision must
also apply to the CPC judgements.

Article 243 of the EC Treaty allows interim measures only to be taken if main proceedings are
already  pending.  In  patent  litigation  interim  measures  are  often  essential  even  before  main
proceedings are introduced. This would be the case for example where the right holder would
suffer  considerable  damages  if  he  were  to  wait  with  the  application  for  an  interim  measure
until  he  had  initiated  main  proceedings.  In  such  a  case  the  CPC  must  be  able  to  grant  the
necessary interim measures. Therefore paragraph  2  of  this  provision enlarges the  possibility
of ordering interim measures accordingly.

Article 12

Judges and Registrar

Articles 2 to 7, Articles 13 to 15, the first, second, and fifth paragraph of Article 17
and  Article  18  of  the  Statute  of  the  Court  of  Justice  shall  apply  to  the  Community
Patent Court and its members. The oath referred to in Article 2 shall be taken before
the  Court  of  Justice  and  the  decisions  referred  to  in  Articles  3,  4  and  6  shall  be
adopted by that Court after hearing the Court of First  Instance  and the Community
Patent Court.

The  Community  Patent  Court  shall  appoint  its  Registrars  for  the  central  and  each
regional  chamber  and  lay  down  the  rules  governing  their  service.  The  fourth
paragraph of Article 3 and Articles 10, 11 and 14 shall apply to the Registrars of the
Community Patent Court mutatis mutandis.

(1)

(2)

Notes:

The  provision  corresponds  to  Article  47  of  the  Statute  that  declares  provisions  on  the  ECJ
applicable to the CFI. As regards the CPC the following changes are necessary:

The  reference  to  Article  8  of  the  Statute  which  declares  Articles  2  to  7  of  the  Statute
applicable to the Advocates General has not been taken aboard for the CPC. The CPC will not
have  an  Advocate  General.  In  patent  litigation  only  the  first  Advocate  General  will  play  a
role. He can propose under Article 62 of the Statute a review of the decision taken by the CFI
on an appeal against a CPC decision. The first Advocate General is covered by the provisions
concerning the CFI (Articles 47, 62).

Article  13  of  the  Statute  is  declared  applicable  which  contains  an  enabling  clause  for  the
Council to provide for the appointment of Assistant Rapporteurs. This provision might be put
to  use  to  help  chambers  cope  with  work  and  for  the  training  of  not  yet  sufficiently
experienced Judges which is especially important in patent law whose nature requires practice
to a much greater extent than other fields of law.

Article  17  of  the  Statute  is  only  referred  to  with  regard  to  paragraphs  1,  2  and  5.  Grand
chamber (Article 17(3) of the Statute) and full Court (Article 17(4) of the Statute) decisions
are not foreseen for the CPC.  If the rules of procedure prescribe  according to Article 13 (2)
that the panel is sitting in an enlarged composition  it  will have  to include provisions on the
quorum.

21

The first sentence of paragraph 2 provides for a Registrar independent from the  CFI  for the
central  and  each  regional  chamber  of  the  CPC.  This  seems  appropriate  since  the  CPC  will
deal with an entirely different type of litigation, the caseload will justify such a measure and
regional  chambers  by  nature  will  be  at  such  a  distance  that  a  central  Registrar  could  not
effectively  administer  the  cases.  A  legal  basis  for  the  appointment  of  the  Registrar  and  the
rules  governing  the  service  seems  necessary.  Unlike  for  the  ECJ  (Article  223(5)  of  the  EC
Treaty  (Nice))  and  the  CFI  (Article  224(4)  of  the  EC  Treaty  (Nice))  no  such  provision  is
included in the EC Treaty for the panel.

The second sentence of paragraph 2 declares provisions of the ECJ Statute applicable to the
Registrars of the CPC as is the case for the Registrar of the CFI in Article 47(2) of the Statute.

Article 13

Composition of the chambers and assignment of cases

(1)

(2)

The  chambers  of  the  Community  Patent  Court  shall  sit  in  sections  of  three  judges
with  two  legal  and  one  technical  member.  The  President  of  the  Community  Patent
Court shall preside over one of the sections of the central chamber. The Presidents of
the  remaining  sections  shall  be  elected  by  the  Judges  of  the  chamber  to  which  the
section belongs from among their legal members for a term of three years. They may
be re-elected.

For  certain  cases  the  Rules  of  Procedure  may  provide  that  the  Community  Patent
Court  sits  in  an  enlarged  or  a  reduced  composition.  It  shall  contain  provisions
concerning the quorum.

(3)

The assignment of cases to the sections shall be governed by the Rules of Procedure.

Notes:

The  changes  agreed  upon  at  Nice  have  moved  the  composition  of  the  chambers  of  the  CFI
from Council decision 88/591 to article 50 of the Statute (Nice). The parallel approach should
be taken for the CPC.

The  actual  cases  are  heard  by  subdivisions  of  the  chambers  of  the  CPC,  the  so  called
"sections". For patent litigation a normal composition for a section of three judges, two legal
members  and  one  technical  member  seems  appropriate.  The  president  of  the  section  must
always  be  a  legal  member  of  the  panel  who  has  the  required  skills  to  conduct  the  legal
proceedings. As a rule, the second legal member would be the reporting Judge aided by the
technical  member  in  technical  questions.  In  cases  where  the  dispute  centres  on  technical
points  the  reporting  judge  could  be  the  technical  member  aided  by  the  legal  member.  The
President  of  the  section  would  have  to  determine  this  question  on  a  case  by  case  basis.
Always one of the three technical members would sit in on a case. They would be chosen on a
case by case basis according to the technical field concerned.

The President of the CPC will automatically be President of one of the sections of the central
chamber. The remaining Presidents of sections will be elected by the Judges assigned to the
chamber  to  which  that  section  belongs  from  among  their  legal  members.  Taking  into
consideration that the term of office of President of a section is half the term of office of the
Judges a practice might develop according to which the experienced Judge in the second half

22

of his term would be the president of the section whereas the legal member serving the first
half of his term would sit as the second legal member of the section.

For certain cases there will be a need to deviate from the standard composition of the section.
An enlarged composition might be appropriate in, for instance, cases that involve fundamental
points of law or where one section has a different view from another section on a legal matter.
A  reduced  composition  might  be  considered  for  provisional  measures  or  simple  cases.  The
requirements  for  such  a  special  composition  shall  be  laid  out  in  the  Rules  of  Procedure  to
allow for the necessary flexibility. See also the parallel provision for the CFI, Article 50 of the
Statute.

The  Rules  of  Procedure  would  need  to  address  the  quorum  for  a  decision  of  a  reduced  or
enlarged  section.  The  standard  provision  of  Article  17  (3)  (grand  chamber)  and  (4)  of  the
Statute (full court) do not apply to the CPC.

Like  the  case  in  article  50(2)  of  the  Statute  for  the  chambers  of  the  CFI,  the  Rules  of
Procedure  will  attribute  the  cases  to  each  of  the  sections.  It  opens  the  possibility  of  largely
attributing the cases on the basis of the field of technology to the different section. This would
enhance  the  expertise  of  the  section  since  the  members  of  the  sections  would  build  up  a
certain experience in the technical fields concerned.

Article 14

Agreement on services of support staff

The President of the Court of Justice or the President  of  the Court  of  First  Instance  and the
President of the Community Patent Court shall determine, by common accord, the conditions
under  which  officials  and  other  servants  attached  to  the  Court  of  Justice  shall  render  their
services  to  the  Community  Patent  Court  to  enable  it  to  function.  Certain  officials  or  other
servants  shall  be  responsible  to  the  Registrars  of  the  Community  Patent  Court  under  the
authority of the President of the Community Patent Court.

Notes:

The Article corresponds to Article 52 of the Statute.

Article 15

Procedure before Community Patent Court

(1)

(2)

Subject to Articles 16 to 27 the procedure before the Community Patent Court shall
be governed by Title III of the Statute of the Court of Justice.

Such further and more detailed provisions as may be necessary shall be laid down in
its  Rules  of  Procedure.  The  Rules  of  Procedure  may  derogate  from  the  fourth
paragraph of Article 40 and from Article 41 of the Statute of the Court of Justice in
order to take account of the specific features of litigation in the field of patents.

Notes on this Article:

This provision corresponds to Article 53 of the Statute relating to the CFI.

23

Some of the most fundamental aspects of procedure are laid down in Title III of the Statute.
By way of reference these provisions are applicable to the CFI and shall also be applicable to
the CPC with some necessary modifications. The approach taken tries to limit changes to the
Statute provisions of Title III to those absolutely necessary which are dictated by the special
character of patent litigation.

A  necessity  to  derogate  from  Article  40(4)  of  the  Statute  on  the  scope  of  third  party
intervention  cannot  be  identified  at  the  moment;  nevertheless  the  enabling  provision  has
remained unchanged.

Article 41 of the Statute on the main elements of a judgement by default needs the following
adaptations but it was felt that they could be done in the Rules of Procedure which is made
possible by this enabling clause. A judgement by default should for example also be possible
against the plaintiff who does not appear at the hearing, against the defendant if he does not
appear  at  the  hearing  and  always  only  in  the  case  where  the  statement  of  facts  of  the  other
party justifies the judgement.

Paragraph 3 of Article 53 of the Statute which concerns the Advocate General has not been
included in this Article since there will be no Advocate General in CPC proceedings.

Notes on the provisions of Title III of the Statute of the Court of Justice:

Article 19 on representation is drafted for ECJ proceedings and accordingly puts the emphasis
on the type of litigation before it but nevertheless can be used for patent litigation purposes.
The first two paragraphs concerning the representation of Member States and the Community
will play a marginal role in patent litigation i.e. in the few cases where Member States would
hold a patent and in invalidity proceedings.

The central provision is Article 19(3) stating the requirement of an obligatory representation
by a lawyer. A necessary change for patent litigation concerns the role of patent attorneys in
CPC proceedings (see Article 17 of this decision).

Article  20  concerns  the  two  parts  of  proceedings,  written  and  oral,  as  well  as  their  main
contents. For minor adjustments see Article 18 of this decision.

Article 21

Article 21(1) concerns the contents of the written application. Changes do not seem necessary
even though the term "written application" does not seem to be the most appropriate one for
private party litigation. Missing elements of the contents of an application such as the address
of the defendant could be introduced in the Rules of Procedure.

Article 21(2) referring to the annulment of a measure taken by a Community institution seems
obsolete for patent litigation. Litigation concerning a compulsory licence as a possible object
for  the  application  of  this  provisions  is  not  brought  before  the  CPC.  Consequently  this
provision should not apply ( see Article 16 of this decision).

Articles  22  and  23  concerning  an  appeal  against  EAEC  arbitration  awards  and  preliminary
rulings before the ECJ shall not apply (see Article 16 of this decision ).

Article 24 contains the obligation of the parties to produce documents and supply information
(paragraph  1)  as  well  as  the  institutions  to  supply  information  (paragraph  2)  considered
necessary by the court. The former is in  principle also  applicable  in private  party  litigation,

24

the  latter  constitutes  a  general  obligation  of  Member  States  and  the  institutions  of  the
Communities to provide necessary information. Both should apply to patent litigation.

Articles 25 - 30 contain provisions on evidence, the expert opinion and witnesses that can also
apply in patent proceedings.

Article 31 states the principle of a public hearing and  the power  of  the  court to exclude the
public for serious reasons.

Article 32 states that in the hearing the court may examine experts, witnesses and parties.

The  second  sentence  "...  [the  parties]  may  address  the  Court  only  through  their
representatives" is  somewhat unclear.  If it means  that not even the  court  if it so  wishes can
converse  directly  with  the  parties  then  the  provision  would  be  unsuitable  for  trial  court
proceedings where in some instances there is a need for direct questions to the parties. On the
other  hand  it  can  also  be  interpreted  in  a  manner  compatible  with  private  party  litigation
meaning that the parties cannot by their own initiative directly address the court. If interpreted
in the latter sense no changes are required with a view to CPC proceedings.

Article 33 provides for the establishment of the minutes of the hearing which shall be signed
by  the  President  and  the  Registrar  and  is  a  provision  which  should  also  apply  to  patent
proceedings.

Article 34 Establishment of the case list by the President.

Article 35 Secret deliberations of the court.

Article 36 contains two  fundamental elements of a judgement,  the names  of the Judges and
the reasons for the judgement.

Article 37 states that the judgement shall be signed by the President and the Registrar.

This  provision  could  be  left  untouched  with  a  view  to  the  general  approach  that  only  the
changes  strictly  necessary  should  be  carried  out.  However  it  could  be  considered  that  the
judgement should be signed by all the Judges who heard the case and assume responsibility
for  the  decision.  Their  signature  would  be  the  proof  that  indeed  the  final  drafting  of  the
judgement  reflects  the  decision  of  the  court.  The  Registrar  instead  of  signing  the  original
judgement could be left to sign the certified copies of the original judgement.

Article 38 lays down the principle that the court shall adjudicate upon costs.

Article 39 concerns suspensory and interim measures  and  can  in  principle  be  used  for  CPC
proceedings. However it would not be the President of the CPC who would make such orders
but the competent judge as determined by the Rules of Procedure. Moreover the CPC does not
take  any  suspensory  measures  with  a  view  to  Articles  242  of  the  EC  Treaty  or  157  of  the
EAEC Treaty. Unlike Article 4 of Council decision 88/591 establishing the CFI, Article 11 of
this  decision  makes  no  reference  to  those  Treaty  provisions  since  the  object  of  patent
litigation could not be the demand for suspension of a Community measure. For amendments
to Article 39 see Article 19 of this decision.

Article 40 concerns the intervention of Members States, Communities, EEA and EFTA States
and other third parties having an interest in the result of a case.

25

There  will  be  little  need  for  States  and  the  Community  (paragraph  1  and  3)  to  intervene  in
private party litigation. However such an interest might for instance arise in the context of an
infringement  case  where  the  right-holder  argues  that  the  terms  of  a  granted  compulsory
licence have not been observed and consequently the licensee is alleged to infringe.

The  intervention  of  private  third  parties  (paragraph  2)  does  have  some  relevance  in  patent
litigation.

Article 41 concerns elements of the judgement by default. Changes seem necessary in order to
be suitable for patent litigation. However these can be done in the Rules of Procedure which
Article 15 (2) expressly allows for.

Article  42  provides  for  third  party  proceedings  to  contest  a  judgement  prejudicial  to  their
rights and where in the course of proceedings they had not been heard.  For patent litigation
there  is  to  be  no  room  for  such  a  type  of  third  party  proceedings,  see  Article  16  of  this
decision.

Article 43 states that in case of doubt the court decides the meaning and scope of a judgement.

Article  44  concerns  special  proceedings  for  the  revision  of  a  judgement.  For  necessary
changes see Article 20 of this decision.

Article 45 concerns time limits.

Paragraph  1,  which  states  that  the  Rules  of  Procedure  shall  determine  grace  periods  on  the
consideration of distance, might be problematic. That would mean in effect that a party from a
remote place in Europe would be accorded a longer time span to comply with certain duties
than  a party domiciled  closer  to  the Court.  In  times  of  modern  communication  systems  this
seems  more  and  more  difficult  to  justify  and  it  might  constitute  an  inequality  which  could
bring the provisions in the scope of Article 6 of the European Convention on Human Rights.

Paragraph 2  provides  that a  right shall not  be prejudiced by  the  expiry of  a  time  limit  if  its
non-observation is due to unforeseeable circumstances or force majeure.

Article  46  states  that  liability  claims  against  the  Commission  are  barred  after  a  period  of  5
years and it contains circumstance which interrupt the period limitation.

Article 16

Inapplicable provisions

Articles 21 (2), 22, 23, and 42 of the Statute of the Court of Justice shall not apply.

Notes:

Article 21 (2) of the Statute referring to the annulment of a measure taken by  a Community
institution seems obsolete for patent litigation. Litigation concerning a compulsory licence as
a  possible  object  for  the  application  of  this  provisions  is  not  brought  before  the  CPC.
Consequently this provision should not apply.

Article 22 of the Statute concerns an appeal against the EAEC arbitration Committee.

26

Article 23 of the Statute deals with preliminary rulings before the ECJ.

Article  42  of  the  Statute  provides  for  third  party  proceedings  to  contest  a  judgement
prejudicial to their rights and where in the course of proceedings they had not been heard.

For patent litigation there is no room for such a type of third party proceedings, the principle
in  civil  proceedings  being  that  only  the  losing  party  in  a  given  case  can  challenge  the
judgement. Correspondingly a judgement only has inter partes effect. As far as such an inter
partes  judgement  has  an  impact  on  third  parties  in  the  sense  of  a  precedent  the  judgement
cannot be contested. This is the case in infringement proceedings, for instance.

This  may  be  different  in  validity  proceedings  where  the  judgement  produces  effect  erga
omnes and thus also may affect a holder of a licence, for instance. However in this case too
the  principle  of  legal  certainty  which  speaks  against  third  party  proceedings  and  outweighs
the advantages given to a third party by such proceedings. In such a case it is the obligation of
the  right  holder  and  the  holder  of  the  licence  in  their  contractual  relation  to  safeguard  the
interests of the latter in case of an invalidity action.

An intervention in the sense of Article 40 of the Statute which is directed to support the form
of order sought by one of the parties remains at the disposal of a third party.

Consequently Article 42 of the Statute should not apply in patent litigation.

Article 17

Technical adviser

With  regard  to  Article  19  of  the  Statute  of  the  Court  of  Justice  the  lawyer  may  be
assisted  by  a  technical  adviser  who  is  a  professional  representative  whose  name
appears on the list maintained by the European Patent Office. The technical adviser
shall be allowed to speak at hearings under the conditions laid down in the Rules of
Procedure.

Such technical advisers shall enjoy rights and immunities set forth in Article 19(5) of
the  Statute  of  the  Court  of  Justice  under  the  conditions  laid  down  by  the  Rules  of
Procedure.

(1)

(2)

Notes:

This addition to Article 19 of the Statute is inspired by Article 12(2) and (3) of the Protocol
on  the  Statute  of  the  Common  Appeal  Court  in  the  framework  of  the  Luxembourg
Convention.

With a view to the special nature of patent litigation Article 19 of the Statute  governing the
representation  before  the  ECJ  needs  adaptation  for  CPC  proceedings.  In  patent  litigation,
questions  of  technology  play  an  important  part  in  order  to  reach  a  legally  sound  decision.
Technical expertise is required not only on the bench but also on the side of the parties giving
technically  qualified  advisers  an  appropriate  role  to  play  within  the  legal  proceedings.  The
lawyer  representing  a  party  before  the  CPC  may  consequently  be  assisted  by  a  technical
adviser who shall have the possibility to speak before the CPC. This will particularly apply to
technically  complex  questions.  As  technical  advisers  with  the  capacity  to  address  the  CPC
those professional representatives shall qualify whose name appears on the list maintained by

27

the European Patent office to ensure the appropriate standard which must be met for efficient
proceedings.

Article 18

Oral and written procedure

Article  20  of  the  Statute  of  the  Court  of  Justice  shall  be  applied  subject  to  the  following
modifications:

Paragraph 4 shall  read:  "The  oral  procedure  shall  consist  of  the  presentation  of  the
main  features  of  the  case  by  the  Judge  acting  as  Rapporteur,  the  hearing  by  the
Community Patent Court of the parties and the examination of evidence."

Paragraph  5 shall  read:  "The  Community  Patent  Court  may  in  accordance  with  the
Rules  of  Procedure  and  after  having  heard  the  parties  dispense  with  the  oral
procedure."

A  new  paragraph  6  shall  be  inserted  which  reads:  "The  Rules  of  Procedure  may
provide that all or part of the procedure may be conducted in electronic form and the
conditions for doing so."

(a)

(b)

(c)

Notes:

Article  20  of  the  Statute  concerns  the  two  parts  of  the  procedure,  written  and  oral.
Modifications are necessary to paragraphs 4 and 5.

Article 20(4) of the Statute was rephrased since the current wording leaves no room to hear
patent attorneys.  The  language  chosen instead  "the parties are  heard" uses more appropriate
language for trial court proceedings. The question who actually addresses the court does not
have to be spelled out in this provision but is a question of proper representation according to
Article  19  of  the  Statute.  In  addition  Article  20(4)  of  the  Statute  insists  that  the  reporting
Judge reads a written report of the case which seems too rigid for daily trial court litigation
and was thus replaced by the duty of a presentation of the main features of the case. Finally
the limitation of the oral procedure to the "hearing of witnesses and experts" seems to narrow
and was thus replaced by the "examination of evidence".

The reference to the Advocate General in Article 20(5) of the Statute had to be deleted since
there  is  none  in  CPC  proceedings.  Instead  the  possibility  for  a  CPC  decision  in  a  written
procedure has been introduced.

Finally an enabling clause should be introduced which allows for the employment of technical
means in the written and oral procedure. This could, for example, apply to the submission of
documents in the written procedure or video conferencing at the oral stage. The specification
of the parts of the procedure which can be conducted by electronic means and the conditions
of doing so should be left to the Rules of Procedure. Practice will show where, to what extent
and  under  what  conditions  electronic  means  should  be  employed.  Moreover  technology  is
developing  constantly  and the Rules of Procedure would be best suited to keep track of  the
widening technological possibilities by introducing necessary changes into the procedure.

28

Article 19

Special orders

Article  39  of  the  Statute  of  the  Court  of  Justice  shall  apply  on  condition  that  the  Rules  of
Procedure shall determine who is competent to make the orders prescribed in that Article. The
Community Patent Court shall not make orders provided for by Article 242 of the EC Treaty
and Article 157 of the EAEC Treaty.

Notes:

Article  39  of  the  Statute  attributes  the  competence  to  suspend  enforcement  and  to  make
interim measures to the President of the Court. This does not seem to be the right approach in
patent litigation. The question whether enforcement of a title should be suspended is closely
linked to the individual case and should consequently be handled by the Judge or the section
familiar  with  the  case.  Interim  measures  will  be  a  quite  common  procedure  in  patent
litigation.  They  could  be  handled  by  the  same  section  that  is  competent  for  the  main
proceedings (efficiency) or by a different Judge (impartiality). The Rules of Procedure have
the necessary flexibility to provide for the most suitable solution.

The  second  sentence  clarifies  that  the  CPC  does  not  take  any  suspensory  measures  with  a
view to Articles 242 of the EC Treaty or 157 of the EAEC Treaty as mentioned in Article 39
of the  Statute.  Unlike  Article  4  of  Council  decision  88/591  establishing  the  CFI,  Article  11
makes no reference to those Treaty provisions since the object of patent litigation could not be
the demand for suspension of a Community measure.

Article 20

Revision of a judgement

Article  44  paragraphs  1  and  2  of  the  Statute  of  the  Court  of  Justice  shall  be  construed  as
follows:

"An application for a revision of a judgement by the party adversely affected by the decision
may be made on the grounds of

(a)

(b)

a fundamental procedural defect which may have had an impact on the decision or

an act which is of such nature to be a decisive factor and which was held by a final
court decision to constitute a criminal offence.

The  revision  shall  be  opened  by  a  judgement  expressly  recording  the  existence  of  the
requirements of paragraph 1."

Notes:

Article  44  Statute  contains  revision  proceedings  unsuitable  for  private  party  litigation  in
allowing a revision of a judgement on the grounds that a decisive factor was unknown when
the  judgement  was  given.  With  a  view  to  legal  certainty  such  grounds  are  insufficient  to
reopen a case in private party litigation.

29

The reopening of a case must remain very exceptional. In order to justify the reopening of a
case  there  must  be  a  fundamental  procedural  defect  which  may  have  had  a  bearing  on  the
decision  or  a  criminal  offence  concerning  a  decisive  factor  such  as  forged  documents  or  a
witness  deliberately  giving  wrong  evidence.  Article  112a  of  the  EPC,  included  in  the  2000
EPC  Revision  Act,  and  Article  157  of  the  third  EPLP  draft  proposal  both  adopt  a  similar
approach.

Paragraph  3  of  Article  44  of  the  Statute  would  remain  as  it  stands  and  would  exclude
applications for revision after 10 years from the date of the judgement.

Article 21

Wrongly addressed Community Court

Article 54(1) and (2) of the Statute of the Court of Justice shall apply mutatis mutandis.

Notes:

54(1) of the Statute concerns the obligation of the Registrars of the ECJ and CFI to forward
documents  addressed  to  one  of  them  but  accidentally  lodged  with  the  other.  The  same
obligation shall apply mutatis mutandis in patent proceedings between ECJ, CFI and CPC.

54(2) of the Statute governs the situation that either the ECJ or the CFI is seised whereas the
other Court is the competent court. In this case the court first seised can refer the action with
binding effect. Also this provision shall apply mutatis mutandis between ECJ, CFI and CPC.

Article 54(3) of the Statute providing for the possibility to stay proceedings and wait for the
ruling of the ECJ necessitates some changes and is separately treated in the following Article.

Article 22

Stay of proceedings

Where  the  Court  of  Justice  or,  by  way  of  preliminary  ruling,  the  Court  of  First  Instance  is
seized of a case in which the same issue of interpretation is raised, or where the validity of the
same act is called in question, the Community Patent Court may, after hearing the parties, stay
proceedings before it until such time as the Court of Justice or the Court of First Instance shall
have delivered judgement.

Notes:

This  Article  corresponds  to  Article  54(3)  of  the  Statute  with  the  necessary  amendments  to
patent litigation.

The only cases that would justify staying proceedings before the CPC would be waiting for a
judgement of the ECJ in cases where it was seised by the First Attorney General under Article
62  of  the  Statute  considering  that  there  is  a  serious  risk  of  the  unity  and  consistency  of
Community law being affected or a preliminary ruling of the CFI on a patent law provision
(to be established according to Article 225(3) of the EC Treaty (Nice)) and if such case would
raise  the  same  issue  as  the  one  before  the  CPC  or  where  the  validity  of  the  same  act  is  in
question (validity of the same patent).

30

Other  situations  addressed  in  Article  54(3)  of  the  Statute,  such  as  the  same  relief  being
sought, do not apply to patent litigation. Nor do the second and third sentence apply in patent
litigation  because  they  start  from  the  idea  that  the  same  subject  matter  could  belong  to  the
competence  of  either  ECJ  or  CFI  and  that  accordingly  the  CFI  could  decline  competence.
This  is  not  the  case  for  patent  litigation  where  the  CPC  is  competent  for  all  first  instance
proceedings.

Article 23

Transmittal of decisions

Article 55  of  the  Statute  of  the  Court  of  Justice  shall  apply  subject  to  the  modification  that
Member States as well as the institutions of the Communities which have neither intervened
nor  been  a  party  to  the  case  will  only  be  transmitted  the  final  decision  of  the  Community
Patent Court.

Notes:

This Article limits the obligation for the Registrar to formally notify decisions to the parties of
the proceedings. Unless they have been a party to a case Member States and institutions of the
Communities  will  only  informally  receive  a  copy  of  the  final  decision  for  information
purposes.

Article 24

Proceedings in Member States

Where  the  nature  of  the  cases  so  justifies  the  central  chamber  of  the  Community
Patent Court may in accordance with the Rules of Procedure conduct the proceedings
or  a  part  thereof  in  a  Member  State.  It  shall  in  particular  take  into  consideration
elements such as the domicile of the parties and the need for an efficient examination
of evidence.

Each Member States that wishes the central chamber of the Community Patent Court
to  conduct  proceedings  on  its  territory  shall  provide  for  this  purpose  adequate
facilities the costs of which are borne by that Member State.

(1)

(2)

Notes:

This provision ensures from the start that the central chamber of the CPC will not only hear
cases  at  its  seat  in  Luxembourg  but  that  under  certain  conditions  it  will  travel  to  Member
States to conduct part of a proceeding or even hear the entire case. The requirement for such
local  hearing  of  a  case  is  that  the  nature  of  the  case  justifies  it.  Criteria  that  might  initiate
proceedings in Member States would in particular be the domicile of the parties and witnesses
as well as the examination of evidence that could only with difficulties be produced in front of
the  CPC  (heavy  machinery,  laboratory  testing  etc.).  The  CPC  will  have  to  weigh  the
characteristics of the case taking into consideration the practicality for its own efficient case
management and will have to decide whether or not and if so where it hears the case.

31

Since the decision to effect local hearings very much depends on the individual case it seems
appropriate that more specific criteria will be inserted in the Rules of Procedure. This ensures
sufficient flexibility to take account of the practice to be developed by the CPC.

Member States would have to provide at their charge adequate facilities for the CPC to hear a
case.  This  would  in  particular  mean  court  rooms  and  technical  facilities  for  interpretation,
video conferencing, e mail, fax etc.. If a Member State does not provide such  facilities then
decentralised proceedings in that Member State will not  be possible and  cases  consequently
will be heard at the central seat of the CPC.

Article 25

Language of proceedings

The Community Patent Court will conduct the proceedings in the official language of
the Member State where the defendant is domiciled.

If the Community Patent Court finds that the use of that language would not enable
all parties to follow the proceedings and defend their interests and that only the use
of  another  official  EU  language  makes  it  possible  to  remedy  that  situation,  it  may
designate  that  other  language  as  language  of  proceedings.  At  the  request  of  the
parties with the consent of the Community Patent Panel any official EU language can
be chosen as language of proceedings.

The Community Patent Court may in  accordance  with  the  Rules  of  Procedure  hear
parties in person and witnesses in a language other than the language of proceedings.
In that case the Registrar shall cause everything said during the oral procedure to be
translated  into  the  language  of  the  case  and  at  the  request  of  any  party  into  the
language used by that party.

The Community Patent Court may in accordance with the Rules of Procedure allow
the  submission of  accompanying  documents drawn up in a language  other than  the
language of proceedings. It can at any time order that party to produce a translation
of such documents into the language of proceedings.

(1)

(2)

(3)

(4)

Notes:

The  language  of  proceedings  before  the  Community  Patent  Court  would  be  the  official
language of the Member State in which the defendant is domiciled. This regime aims at the
protection of the defendant and starts from the idea that in the majority of cases the defendant
has at least a sufficient knowledge of the language of the Member State in which he has his
domicile.

Paragraphs  2  to  4  contain  number  of  provisions  which  would  allow  derogations  in  order  to
adapt the language regime to the needs of a specific case.

If the CPC finds that  a given language  of proceedings  does not enable the  parties to  follow
and  defend  their  interests  but  another  official  EU  language  would,  it  can  designate  that
language as language of proceedings. Such a possibility is also laid down in Article 131 of the
CFI Rules of Procedure  concerning proceedings against the Office for Harmonisation in the
Internal Market.

32

If  the  parties  agree  to  use  any  other  official  EU  language  as  language  of  proceedings  they
should be  able  to  do  so  with  the  consent  of  the  CPC.  The  CPC  would  agree  if  a  change  to
another language would not endanger the objective of efficient proceedings.

Parties in person or witnesses would be heard in their language and the Registrar of the CPC
would ensure the necessary translations.

Finally  the  CPC  could  dispense  with  regard  to  accompanying  documents  from  the
requirement to produce written submissions in the language of proceedings. Such documents
that  are  drawn  up  in  a  language  other  than  the  language  of  proceedings  need  thus  not  be
translated where such costly translation would not seem necessary in the particular case.

Article 26

Appeal against decisions of the Community Patent Court

An appeal  against a final decision  of  the Community  Patent  Court  may  be  brought
before  the  Court  of  First  Instance  within  two  months  of  the  notification  of  the
decision appealed against.

An  appeal  against  a  decision  of  the  Community  Patent  Court  made  pursuant  to
Article 243 or the fourth paragraph of Article 256 of the EC Treaty may be brought
before the Court of First Instance within two months of its notification. However if
an  interim  measure  has  been  ordered  without  prior  hearing  of  the  party  adversely
affected that party may file an opposition before the Community Patent Court whose
decision shall be subject to an appeal to the Court of First Instance.

An  appeal  against  a  decision  of  the  Community  Patent  Court  dismissing  an
application to intervene may be brought within two weeks of its notification.

An appeal may also be brought against such other decisions of the Community Patent
Court as provided for and under the conditions laid down by the Rules of Procedure

An  appeal  as  provided  for  in  paragraphs  one  to  four  may  be  brought  by  any  party
which has been unsuccessful, in whole or in part, in its submissions. The procedures
referred  to  in  paragraphs  two  and  three  shall  be  heard  and  determined  under  the
procedure referred to in Article 39 of the Statute of the Court of Justice.

(1)

(2)

(3)

(4)

(5)

Notes:

Paragraph 1 of this provision corresponds to Article 56(1) of the Statute with some changes.
Paragraph  1  addresses  the  possibility  of  an  appeal  against  a  final  decision  of  the  CPC.  The
wording of Article 56(1) "[appeal against] decisions ... disposing of substantive issues in part
only  or  disposing  of  a  procedural  issue  concerning  a  plea  of  lack  of  competence  or
inadmissibility" has not been incorporated. A decision disposing of substantive issues in part
would be a judgement of the CPC and could thus be appealed against. The same can be said
for a decision declining of the CPC declining its competence. The possibility to appeal against
every  decision  disposing  of  procedural  issues  seems  too  wide  and  would  paralyse  the
proceedings. Those procedural decisions that shall be subject to a review will be discerned in
the Rules of Procedure according to paragraph 4 of this Article.

33

Paragraph  2  contains  a  second  type  of  decision  that  can  be  appealed  against  which  covers
decisions  of  the  CPC  made  pursuant  to  Articles  243  and  256(4)  EC  Treaty.  The  decisions
concerned  are  those  on  interim  measures  and  the  suspension  of  the  enforcement  of
judgements. This provision corresponds to Article 57(2) in as far as EC Treaty provisions are
applicable to the CPC.

If  an  interim  measure  had  been  ordered  by  the  CPC  without  prior  hearing  of  the  opposite
party  the  legal  remedy  shall  not  consist  of  a  direct  appeal  to  the  Court  of  First  Instance.
Instead an opposition may be filed  with the CPC which then can, with due consideration of
the  arguments  brought  forward  by  the  party  adversely  affected  by  the  measures,  either
confirm  or  quash  the  order.  That  decision  of  the  CPC  can  be  appealed  to  the  CFI.  This
procedure  ensures  that  an  appeal  is  reserved  as  legal  remedy  against  a  true  decision  of  the
CPC handed down after an inter partes procedure before it.

Paragraph 3 contains a provision taken from Article 57(1) of the Statute.

According  to  paragraph  4  other  possible  appeals  against  decisions  taken  by  the  CPC  in  the
course  of  proceedings  should  be  regulated  by  the  Rules  of  Procedure  (i.e.  order  on  costs  if
case is closed without judgement). Where not explicitly stated by the Rules of Procedure an
appeal against procedural orders would not be possible. Any mistake in the procedure would
have to be dealt with within the framework  of  the  appeal  against  the  judgement  itself.  This
ensures swift first instance proceedings while leaving sufficient safeguards for the parties.

Paragraph  5  states  that,  in  the  case  of  an  appeal  according  to  paragraphs  1  to  4,  the  appeal
may  only  be  brought  by  the  party  adversely  affected  by  the  decision.  This  is  an  identical
provision to the first sentence of Article 56(2) of the Statute.

The  procedures  mentioned  in  paragraphs  2  and  3  can  be  dealt  with  under  a  summary
procedure. Again, this is an identical provision to Article 57(3) of the Statute.

The  second  sentence  of  Article  56  (2)  of  the  Statute,  which  concerns  the  right  of  the
intervener  to  appeal  against  a  decision  which  directly  affects  the  intervener,  has  not  been
incorporate  as  this  does  not  seem  appropriate  for  CPC  proceedings.  In  patent  litigation  an
intervention to support one of the parties is possible if a corresponding interest in the result of
the case exists (Article 40 of the Statute). The intervener may also support a party in appeal
proceedings if that interest continues to exist and he may consequently joint the party in filing
an  appeal  without  having  to  establish  that  he  is  directly  affected  by  the  CPC  decision.
However he shall not have an independent right to appeal.

Finally, there is  no  need in patent proceedings to  grant a right to a Member State to file an
appeal even in cases that they have not been a party to or intervened in first instance like the
right provided for by Article 56(3) of the Statute.

Article 27

Suspensory effect of appeal

The appeal shall have suspensory effect. However the Community Patent Court may declare
its  decisions  enforceable  while,  if  necessary,  subjecting  enforcement  to  the  provision  of
security.

34

Notes:

This  provision  so  far  included  in  Article  39(5)  of  the  draft  Community  patent  regulation
seems necessary for private party litigation in order to ensure that a party adversely affected
by a first instance judgement does not suffer damage if the decision is not upheld in second
instance. The CPC may declare its decisions enforceable, if necessary subject to the provision
of  a  security.  This  possibility  allows  a  plaintiff  to  whom,  for  example,  a  judgement  awards
damages to enforce the judgement which would lead to the payment of the required sum by
the defendant. However if  the  defendant  appeals the  first  instance decision  successfully  and
the  plaintiff  in  the  meantime  has  fallen  into  insolvency  the  defendant  would  not  able  to
recover  the  paid  sum  even  though  the  final  decision  rules  that  the  plaintiff  had  no  claim
whatsoever. Such a situation is guarded against if the CPC orders that the judgement can only
be enforced if a security is provided.

The possibility to order suspensory measures against the execution of judgements according
to Articles 244 and 256 of the EC Treaty in combination with Article 11 is neither sufficient
nor superfluous.  It  is  not sufficient because  under  those  provisions  the  rule  would  be  that  a
decision of the CPC could be enforced unless the CPC would decide otherwise at a later stage
which  would  not  meet  with  the  required  features  for  private  party  litigation.  It  is  not
superfluous  because,  in  cases  where  initially  the  CPC  in  the  judgement  allowed  the
enforcement without security, special circumstances might necessitate suspensory measure at
a later stage.

Article 28

Entry into force

Following its publication in the Official Journal of the  European Communities this  decision
shall  enter  into  force  on  the  day  following  the  notification  of  the  last  Member  State  of  its
acceptance  of  the  Council  decision  taken  pursuant  to  Article  229a  of  the  EC  Treaty  and
conferring jurisdiction on the Court of Justice in relation to the Community Patent, with the
exception  of  Article  7  which  shall  only  enter  into  force  on  the  date  of  the  publication  of  a
notice  by  the  Court  of  Justice  that  the  Community  Patent  Court  and  the  appeal  chamber
within the Court of First Instance have been constituted in accordance with law.

Notes:

This provision corresponds to Article 13 of Council decision 88/591 establishing the CFI with
necessary changes.

The entry into force of the decision is dependant on a) its publication in the Official Journal
and b) the notification of  all Member States  that the conferral of  competence  is  accepted,  a
necessity  provided  for  by  Article  229a  of  the  EC  Treaty  (Nice)  and  the  Council  decision
implementing  that  Article.  On  the  day  following  the  notification  of  the  acceptance  the
preparation  for  the  establishment  of  the  Community  patent  judiciary  can  proceed,  i.e.
recruitment of staff, establishment of necessary infrastructure and so on.

The entry into  force of Article 7 which  contains  the  provision  attributing  jurisdiction  to  the
CPC,  is  dependant  on  a  declaration  of  the  Court  of  Justice  that  the  CPC  and  the  appeal
chamber  have  been  constituted  in  accordance  with  law.  This  ensures  that  the  jurisdiction  is
attributed at a point in time where  a functioning Community patent judiciary is successfully
installed. Unlike Council decision 88/591 it seems necessary to make the transfer dependent

35

on  the  constitution  not  only  of  the  first  instance  jurisdiction  but  also  of  the  appeal  instance
because  at  the  CFI  level  too  necessary  preparations  have  to  be  completed  before  the
Community  patent  judiciary  can  take  up  its  work,  such  as  the  constitution  of  the  appeal
chamber,  recruitment  of  patent  Judges  and  adoption  of  special  Rules  of  Procedure  for  trial
court appeal proceedings.

36

III.

CHANGES TO THE STATUTE OF THE COURT  OF JUSTICE RELATING TO THE COURT
OF FIRST INSTANCE.

On  the  basis  of  Articles  225(2)  and  225a(3)  of  the  EC  Treaty  (Nice),  the  Court  of  First
Instance will hear appeals against decisions of the Community Patent Court. For that purpose
a  special  patent  appeal  chamber  should  be  established  within  the  Court  of  First  Instance.
Statute  provisions  have  to  be  adapted  to  ensure  that  proceedings  before  the  patent  appeal
chamber  take  account  of  the  special  nature  of  private  party  litigation  and  to  establish  a
uniform  procedure  before  both  the  Community  Patent  Court  and  the  patent  chamber  of  the
Court of First Instance.

Article  225(3)  of  the  EC  Treaty  (Nice)  allows  for  the  possibility  of  entrusting  preliminary
rulings  in  specific  areas  to  the  Court  of  First  Instance  by  Statute  provision.  Use  of  this
provision should be made for patent law.

Article 1

Number of judges of the Court of First Instance

Article  48  of  the  Statute  of  the  Court  of  Justice  is  replaced  by  the  provision  "The  Court  of
First Instance shall consist of 20 Judges."

Notes:

With the establishment of a patent appeal chamber within the CFI (see Article 3) with 2 legal
and  3  technical  members  the  total  number  of  judges  rises  from  15  to  20.  Three  technical
members are required  to  cover  the  basic  fields  of technology  in  such  a  way  as  to  equip  the
bench  with  the  necessary  technical  expertise  covering  the  fields  of  chemistry,  physics  and
mechanics.

Article 2

Election of Presidents of the chambers

For the chamber of the Court of First Instance hearing patent appeal proceedings the second
sentence of Article 50(1) of the Statute of the Court of Justice shall be construed as follows:
"The Judges shall elect the President of the chamber from among their legal members."

Notes:

This wording would have the effect that all the Judges of the patent chamber of the CFI would
elect their President from among their legal members, identical approach to Article 13 (1) of
the decision establishing the CPC.

37

Article 3

Patent appeal chamber of the Court of First Instance

A specialised patent chamber of the Court of First Instance shall hear appeals against
decisions of the Community Patent Court. The legal members shall have a high level
of  experience  in  patent  law.  The  technical  members  shall  have  a  high  degree  of
experience  in  the  relevant  technical  fields  and  an  appropriate  experience  in  patent
law.

The patent chamber shall sit with two legal members and one technical member. For
certain  cases  the  Rules  of  Procedure  may  provide  that  a  patent  chamber  sits  in  an
enlarged  or  a  reduced  composition.  It  shall  contain  provisions  concerning  the
quorum.

Immediately after the members of the Community patent appeal chamber have taken
oath, the President of the Council shall proceed to choose by lot  one  legal member
and one technical member whose terms of office are to expire at the end of the first
three years.

(1)

(2)

(3)

Notes:

The appeal shall be heard by a specialised chamber of the CFI whose members have to fulfil
the same requirements as those of the CPC. One chamber for patent appeal proceedings with
two  legal  and  three  technical  members  should  be  established  within  the  CFI.  As  at  first
instance the three technical members shall cover the technical fields of chemistry, physics and
mechanics.

With regard to the composition of the patent chambers this Article is lex specialis to Article
50 of the Statute. The ordinary composition of a patent chamber would be two legal and one
technical Judge. The Rules of Procedure may contain provisions derogating from this rule as
well as laying down further practical details.

It  shall  be  ensured  that  the  patent  chamber  will  not  be  replaced  entirely  at  the  end  of  its
members terms of office but that from the beginning the possibility to enter into a cycle where
some of the Judges will already have experience in the patent appeal proceedings when new
Judges enter that function. Without this provision the patent chamber could enter into a cycle
of replacement of Judges where all the members of the patent chambers would serve the entire
term of office and all of them would be replaced at the same time.

According to Article 224(2) of the EC treaty (Nice) the term of office for the CFI Judges and
consequently of the patent judges will be 6 years with the possibility of their reappointment.

Article 4

Grounds for appeal

(1)

The appeal may be  based  on  points  of  law and matters of  fact.  New  facts  and  new
evidence  may  only  be  introduced  if  their  submission  by  the  party  concerned  could
not reasonably have been expected during proceedings before the Community Patent
Court.

38

An  appeal  on  points  of  law  shall  lie  on  the  grounds  of  lack  of  competence  of  the
Community Patent Court, a breach of procedure before it which adversely affects the
interests  of  the  appellant  as  well  as  the  infringement  of  Community  law  by  the
Community Patent Court.

No appeal shall lie regarding only the amount of the costs or the party ordered to pay
them.

(2)

(3)

Notes:

This  provision  makes  use  of  the  enabling  clause  of  Article  225a(3)  of  the  EC  Treaty  that
restricts the appeal to points of law unless otherwise provided for in the decision establishing
a panel allows the basis of an appeal also to be matters of fact. This Article does not open up
an unlimited possibility to submit new facts and evidence in the second instance which would
risk  reducing  the  CPC  proceedings  to  a  warm  up  exercise  and  postpone  the  serious  trial  to
second  instance  proceedings.  Only  those  new  facts  and  evidence  that  the  party  could  not
reasonably be expected to submit in first instance can be submitted. This could be the case if a
fact was unknown and could applying due diligence not have been known by the party or if
the CPC took a different view of the case that suggested known facts to be irrelevant.

Paragraphs 2 and 3 correspond to Article 58 of the Statute.

Article 5

Decision by the Court of First Instance and referral back to the Community Patent
Court

If the appeal is well founded, the Court of First Instance shall quash the decision of
the Community Patent  Court and  give  final judgement.  The  Court  of First  Instance
may  in  exceptional  circumstances  and  in  accordance  with  the  Rules  of  Procedure
refer the case back to the Community Patent Court for judgement.

Where a case is referred back to the Community Patent Court, it shall be bound by
the decision of the Court of First Instance on points of law.

(1)

(2)

Notes:

This provision corresponds to Article 61 of the Statute with necessary changes.

The  CFI  shall  have  the  power  to  quash  the  decision  of  the  CPC.  Unlike  Article  61,  which
addresses the appeal against CFI decisions to the ECJ on points of law and which states that
the  ECJ  may  give  final  judgement  where  the  state  of  proceedings  so  permits  or  otherwise
refer the case back to the CFI, this Article states the rule that the CFI in patent proceedings
shall  decide  the  case.  This  already  follows  from  the  different  nature  of  patent  appeal
proceedings which also carry on facts. The CFI can establish those facts that are missing in its
view and then decide. This is different from an appeal against a CFI decision to the ECJ on
points of law only. In such a case the  appeal  court can only use the established facts of  the
first instance which makes a referral back to first instance necessary if further facts need to be
established.  Furthermore  it  is  essential  for  efficient  and  swift  patent  proceedings  to  avoid
unnecessary referring back and forth of a case between the instances which is excluded if the
CFI has to take the decision itself.

39

However,  there  are  cases  where  a  referral  back  to  the  CPC  could  be  appropriate  for  two
reasons:

One is that the case was not heard in substance before the CPC and a direct decision of the
CFI  would  take  away  the  entire  first  instance  for  the  parties.  Also  the  superior  quality  of
appeal  court  proceedings  is  partly  do  to  the  fact  that  the  first  instance  has  already  worked
through the case very thoroughly which would be missing if the CFI directly took the decision
without  the  CPC  having  decided  on  substantive  issues.  Examples  for  a  referral  back  to  the
CPC  would  be  cases  where  an  appeal  was  brought  forward  against  a  CPC  judgement
declining competence, a judgement deciding only on the liability as such but not the amount
of damages or a judgement by default.

The  second  case  where  a  referral  back  could  be  considered  is  where  the  CPC  committed  a
fundamental procedural mistake that had an effect on the judgement which can be the case i.e.
with a violation of the right to be heard. In such a case the first instance proceedings cannot
be considered to be an effective legal remedy.

This provision takes the approach that the Statute only contains the general rule that the CFI
decides  the  case  and  that  possible  exceptions  will  be  included  in  the  Rules  of  Procedure.  It
seems more  flexible than  a corresponding list  in the Statute. Moreover the exact exceptions
would depend on the type of possible procedures before the CPC.

Article 61(3) of the Statute has not been retained. It does not apply in patent proceedings.

Article 6

Language of appeal proceedings

The appeal proceedings will be conducted in the language of proceedings in which the  case
was conducted before the Community Patent Court.

Notes:

It would seem most efficient to have as language of appeal proceedings the language that first
instance  proceedings  had  been  conducted  in.  That  way  the  documents  such  as  written
contributions  of  the  parties,  testimonies  of  witnesses,  expert  opinions  etc.  could  be  directly
considered  without  translation.  Also  the  representative  of  a  party  who  was  at  first  instance
among  other  criteria  chosen  with  a  view  to  his  ability  to  represent  in  the  language  of  first
instance proceedings and who is familiar with the parties' case can take the case to appeal.

Article 7

Review

Without prejudice to Article 62 of the Statute of the Court of Justice, the decision of the Court
of First Instance is subject to no further review.

Notes:

This provision seems necessary to clarify that unlike other decisions of the CFI its decisions
taken in appeal patent cases cannot be appealed further to the ECJ. The only exception being

40

the review by the ECJ on the application of the First Advocate General in cases where there is
a serious risk for the unity and consistency of Community law according to Article 62 of the
Statute.

Article 8

Advocate General

Article 49 of the Statute of the Court of Justice shall not apply to appeal proceedings before
the patent chamber of the Court of First Instance.

Notes:

For the purpose of proceedings before the patent chamber of the CFI this Article declares not
applicable provisions which attribute a role to the Advocate General before the CFI.

The  Advocate  General  should  not  participate  in  patent  litigation  since  the  nature  of  private
party litigation and the principle of  equality  of  arms leaves no room  for the  participation of
the  Advocate  General.  Also  there  is  no  need  for  an  Advocate  General  because  Judges
experienced in the specific subject matter will be hearing the case.

Article 9

Application of provisions governing proceedings before the Community Patent Court

Articles 16 to 23 of the decision establishing the Community Patent Court shall apply to the
appeal procedure before the patent chamber of the Court of First Instance.

Notes:

In order to ensure  a uniform patent judiciary, a number of provisions that shall apply to  the
procedure before the  CPC, deviating  from the  current Statute of the Court of Justice  with  a
view  to  the  specific  nature  of  private  party  patent  litigation,  shall  also  apply  to  the  appeal
procedure  before  the  patent  chambers  of  the  CFI.  The  Articles  would  refer  to  those  special
Statute provisions for the CPC contained in Articles 16 to 23 of the decision establishing the
CPC.  For  further  comments  on  the  substance  of  those  Articles  see  the  notes  to  the  Articles
concerned.

Article 10

Preliminary rulings in patent law

The Court of First Instance shall have jurisdiction to hear and determine questions referred for
a preliminary ruling under Article 234 of the EC Treaty in patent law. Article 23 of the Statute
of the Court of Justice shall apply.

Notes:

Preliminary rulings in patent law should be heard by the patent chamber of the CFI which is
the most suitable body to determine such questions. The CFI would on the one  hand be  the
appeal instance in Community patent litigation and on the other hand give preliminary rulings

41

to questions referred to it by national courts asking for the interpretation of EU patent law i.e.
the Community patent regulation, the biotech directive or possibly a future software directive.
Such a step would reduce the workload of the ECJ while at the same time it would guarantee
coherent interpretation of EU patent law.

If  the  ECJ  would  keep  the  competence  for  such  preliminary  rulings,  either  the  ECJ  would
only answer to questions referred to it  by  national courts whereas the CFI  would separately
handle Community patent cases with the danger of diverging decisions or the possibility for
the  CFI  to  ask  the  ECJ  for  a  preliminary  ruling  would  have  to  be  installed  which  might
unnecessarily  prolong  Community  patent  litigation.  This  problem  arises  because  the  same
substantive rules apply to national patent litigation as well as to Community patent litigation.

Even if the CFI is entrusted with preliminary rulings on patent law the ECJ would retain some
competence to pronounce itself with regard to patent law. According to Article 225(2) of the
EC  Treaty  (Nice)  in  combination  with  Article  62  of  the  Statute  the  ECJ  could  review  a
decision taken by the CFI in appeal Community patent proceedings at the application of the
First Advocate General if there is a serious risk of the unity or consistency of Community law
being  affected.  Under  the  same  circumstances  a  preliminary  ruling  of  the  CFI  would  be
subject to an extraordinary review by the ECJ, according to Article 225(3) of the EC Treaty
and Article 62 of the ECJ Statute (both Nice).

Article  23  of  the  Statute  governs  the  procedure  in  case  of  a  referral  of  a  question  for
preliminary ruling.

42