Proposal for a Council Decision conferring jurisdiction on the Court of Justice in disputes relating to the Community patent
Date: 2003-12-23
Institutions: European Commission
Subjects: Court of Justice of the European Union, European patent, civil proceedings, jurisdiction

COMMISSION OF THE EUROPEAN COMMUNITIES

Brussels, 23.12.2003
COM(2003) 827 final

2003/0326 (CNS)

Proposal for a

COUNCIL DECISION

conferring jurisdiction on the Court of Justice in disputes relating to the Community
patent

(presented by the Commission)

EN

  EN

Table of Contents

EXPLANATORY MEMORANDUM ....................................................................................... 4

1.

2.

3.

4.

5.

6.

Background .................................................................................................................. 4

The Community patent................................................................................................. 4

The Community patent jurisdiction ............................................................................. 5

Transitional period ....................................................................................................... 5

Need for a Community intervention ............................................................................ 6

Proposed Provisions ..................................................................................................... 6

COUNCIL DECISION conferring jurisdiction on the Court of Justice in disputes relating to

the Community patent .................................................................................................. 9

LEGISLATIVE FINANCIAL STATEMENT......................................................................... 12

Title of action: Proposal for a Council decision conferring jurisdiction on the Court of Justice
in disputes relating to the Community patent ............................................................ 12

1.

2.

3.

4.

5.

BUDGET LINE(S) + HEADING(S) ......................................................................... 12

OVERALL FIGURES ............................................................................................... 12

BUDGET CHARACTERISTICS .............................................................................. 12

LEGAL BASIS .......................................................................................................... 12

DESCRIPTION AND GROUNDS............................................................................ 13

5.1.

Need for Community intervention ............................................................................. 13

5.1.1. Objectives pursued ..................................................................................................... 13

5.1.2. Measures taken in connection with ex ante evaluation.............................................. 13

5.2.

5.3.

6.

7.

8.

8.1.

8.2.

9.

Action envisaged and budget intervention arrangements .......................................... 14

Methods of implementation ....................................................................................... 14

FINANCIAL IMPACT .............................................................................................. 14

IMPACT ON STAFF AND ADMINISTRATIVE EXPENDITURE ....................... 14

FOLLOW-UP AND EVALUATION ........................................................................ 14

Follow-up arrangements............................................................................................. 14

Arrangements and schedule for the planned evaluation ............................................ 14

ANTI-FRAUD MEASURES ..................................................................................... 14

IMPACT ASSESSMENT FORM  THE IMPACT OF THE PROPOSAL ON BUSINESS
WITH SPECIAL REFERENCE TO SMALL AND MEDIUM-SIZED
ENTERPRISES( SMEs) ............................................................................................ 15

2

 
Title of proposal ....................................................................................................................... 15

Document reference number .................................................................................................... 15

The proposal ............................................................................................................................. 15

The impact on business ............................................................................................................ 15

Consultation ............................................................................................................................. 17

3

 
EXPLANATORY MEMORANDUM

1.

BACKGROUND

In the Community, patent protection has long been provided for in two ways, neither
of  which  is  based  on  a  Community  instrument:  National  patents  are  granted  by
national patent offices on the basis of legislation of the respective Member State. The
protection  conferred  is  limited  to  the  territory  of  that  Member  State  and  in  case  of
dispute  the  patent  right  has  to  be  enforced  before  the  competent  national  courts.
European  patents  are  granted  by  the  European  Patent  Office  established  by  the
Convention  on  the  Grant  of  European  Patents  (European  Patent  Convention)  of
5 October 1973 providing for substantive patent law and a single procedure of grant.
Once  granted,  the  European  patent  confers  protection  on  the  territory  of  those
Contracting States which are designated by the right holder. Whereas the harmonised
patent law of the European Patent Convention is essentially limited to the phase up to
the  grant  of  the  European  patent,  its  effects  are  determined  according  to  the
respective  national  patent  law  of  each  designated  Contracting  State.  In  case  of
dispute,  litigation  must  also  take  place  before  the  competent  national  courts.  This
situation,  where  the  patent  right  is  only  granted  in  or  with  effect  for  individual
Member  States  of  the  European  Union  including  for  the  right  holder  the  risk  to  be
forced  to  enter  into  multiple  litigation  in  a  number  of  Member  States  on  the  same
patent  issue  with  possibly  even  variable  results  has  long  been  criticised  as
inappropriate and unsuitable for the needs of the European industry operating within
the common market. Member States have already in the past undertaken great efforts
to redress this situation in a Community context. The Community Patent Convention
title  was  signed  on
intending 
15 December 1975  in  Luxembourg  followed  by  the  15  December  1989  agreement
relating to the Community patent including a protocol on the settlement of litigation
concerning  the  infringement  and  validity  of  Community  patents.  However  these
agreements never entered into force.

to  create  a  unitary  Community  patent 

2.

THE COMMUNITY PATENT

The European Council held in Lisbon in March 2000 launched a general programme
to increase the competitiveness of the Union's economy and took up the issue again.
As one concrete measure  for improvement, the Council called for  the  creation  of  a
Community patent system to address existing shortcomings in the legal protection for
inventions thus giving an incentive for investments in research and development and
contributing to  the  competitiveness  of  the  economy  as  a  whole.  In  the  wake  of  the
Lisbon European Council, the Commission put forward on 1 August 2000 a proposal
for a Council regulation on the Community patent [COM(2000) 412 final] containing
the relevant  provisions applying  to Community  patents, in  particular  the  provisions
for the creation of a unitary Community patent title including the rights conferred by
it, the possible actions for the enforcement of these rights, the grounds for invalidity
as well as the mechanisms for the administration of granted Community patents such
as  their  yearly  renewal.  It  is  foreseen  that  the  grant  of  Community  patents  will  be
carried  out  by  the  European  Patent  Office.  For  this  purpose  the  Community  must
accede  to  the  European  Patent  Convention  thereby  charging  the  European  Patent
Office  with  the  task  of  granting  Community  patents.  Thus  the  European  Patent
Office will grant European and Community patents according to the same standards

4

 
of the European Patent Convention ensuring uniformity and legal security of patent
law in Europe. At the same time the European Patent  Office’s high  expertise as an
examining patent office can be put to use for the Community patent.

3.

THE COMMUNITY PATENT JURISDICTION

The  establishment  of  a  Community  patent  jurisdiction  is  a  key  element  of  the
Community patent system.  The Community  patent title  covering  the  territory  of  all
Member States will not only be governed by the uniform provisions of Community
law contained in the regulation of the Council on the  Community patent.  It  will, at
the latest by 2010, after a transitional period during which national courts will retain
jurisdiction  for  the  subject  matter,  also  be  enforceable  before  a  Community
jurisdiction whose decisions enjoy Community wide effect.

The legal basis to be used for the establishment of a Community patent jurisdiction
was  introduced  into  the  EC  Treaty  by  Article  2  (26  ff.)  of  the  Treaty  of  Nice
amending  the  Treaty  on  European  Union,  the  Treaties  establishing  the  European
Communities and certain related acts which entered into force on 1 February 2003,
inserting  Article  229a  and  Article  225a  into  the  EC  Treaty.  It  is  proposed  that  the
Community patent jurisdiction will be established by two Council decisions based on
those Articles.

In order for the Court of Justice to assume jurisdictional responsibilities with regard
to the Community  patent,  that  jurisdiction  must  be  conferred  on  it.  Article  229a  of
the  EC  Treaty  allows  the  Council  to  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 the EC Treaty which create Community
industrial property rights. The present decision sets out that conferral of jurisdiction
with regard to the Community patent and at the  same time  specifying  the  extent of
the conferral (Articles 1 and 2). As provided for by Article 229a of the EC Treaty the
Council shall recommend the provisions  conferring jurisdiction on the basis of  that
Article  to  the  Member  States  for  adoption  in  accordance  with  their  respective
constitutional requirements (Article 3).

The Commission put before the Council a separate proposal for a decision based on
Articles 225a, 245 of the EC Treaty proposing the establishment of a judicial panel to
be  called  "Community  Patent  Court"  which  would,  within  the  Court  of  Justice,
exercise at first instance the jurisdiction in disputes relating to the Community patent.
That decision also contains the necessary provisions with a view to accommodating
the  new  function  of  the  Court  of  First  Instance  as  appeal  instance  according  to
Article 225(2) of the EC Treaty against decisions of the Community Patent Court.

4.

TRANSITIONAL PERIOD

As  agreed  by  the  Council  in  its  3  March  2003  common  political  approach,  the
Community jurisdiction shall be established at the latest by the year 2010. Until that
time national courts of Member States will have jurisdiction. This would be relevant
for those Community patents which come into effect before the establishment of the
Community  patent  jurisdiction.  The  Community  patent  regulation  will  contain
special provisions governing this transitional period. It is foreseen that each Member

5

 
State designates for this purpose a limited number of national courts to exercise the
jurisdiction which will at the end of the transitional period be conferred on the Court
of  Justice.  According  to  Article  2  of  the  present  decision,  legal  actions  of  which
national courts have been seised at the time when the conferral of jurisdiction on the
Court of Justice will take effect will be decided by the competent national courts.

5.

NEED FOR A COMMUNITY INTERVENTION

The  present  decision  relating  to  jurisdictional  aspects  of  the  Community  patent
system intends to redress the existing shortcomings of the current situation of patent
protection  in  the  Union.  The  objective  is  to  establish  Community  wide  patent
protection  which  can  be  enforced  before  one  single  court  operating  to  uniform
standards. This objective can only be achieved at a Community level.

6.

PROPOSED PROVISIONS

Article 1 – Conferral of jurisdiction on the Court of Justice

This Article contains the subject matter for which exclusive jurisdiction is conferred
on the Court of Justice.

Under point (a), the Court of Justice shall have jurisdiction in disputes relating to the
infringement  and  the  validity  of  the  Community  patent.  Which  actions  relating  to
those  disputes  are  allowed  will  be  governed  by  the  Community  patent  regulation.
The  draft  Community  patent  regulation  foresees  in  this  respect  an  action  to  stop
infringement  (Articles  33,  43)  as  well  as  an  action  for  the  declaration  of
non-infringement  (Article  34).  The  Court  may  also  order  the  confiscation  of
infringing items or other  appropriate  penalties (Article 43).  Concerning the  validity
of  a  Community  patent,  the  draft  regulation  provides  for  an  invalidity  action
(Article 31) and a counter claim for invalidity (Article 32).

Where  a  Community  supplementary  protection  certificate  extending  the  period  of
protection  of  an  invention  protected  by  a  Community  patent  has  been  granted,
disputes relating to its infringement or validity shall also come under the jurisdiction
of the Court of Justice. In this regard, the Commission intends to come forward with
a  proposal  for  the  creation  of  a  Community  supplementary  protection  certificate
extending the protection conferred by Community patents in  the way  as is the case
for  national  patents  under  Council  regulation  (EEC)  No  1768/92  of  18  June  1992
concerning  the  creation  of  a  supplementary  protection  certificate  for  medicinal
products  [OJ  L  182,  2.7.1992,  pp.  1-5]  and  regulation  (EC)  No  1610/96  of  the
European Parliament and the Council of 23 July  1996  concerning  the  creation  of  a
supplementary  protection  certificate  for  plant  protection  products  [OJ  L  198,
8.8.1996, pp. 30-35].

Under  point  (b),  jurisdiction  is  conferred  for  disputes  relating  to  the  use  of  the
invention  after  the  publication  of  the  Community  patent  application  and  the  right
based  on  prior  use  of  the  invention.  In  that  respect,  the  draft  Community  patent
regulation allows a claim for reasonable compensation against any person who, in the
period between the publication of the Community patent application and the grant of
the Community patent, has made such use of the invention that would be prohibited
by  virtue  of  the  granted Community  patent  (Articles  11, 35).  Furthermore  the  draft

6

 
Community  patent  regulation  provides  for  a  right  based  on  the  prior  use  of  the
invention (Articles 12, 36). Where the invention was used before the filing date of a
Community patent, the prior user has the right to continue use of the invention for his
business  purposes  and  may  invoke  this  right  against  the  Community  patent  or  a
Community supplementary protection certificate.

Under point (c), jurisdiction is also conferred with regard to interim measures in the
subject  matter  conferred.  To  the  extent  that  the  Court  of  Justice  has  jurisdiction
relating  to  the  Community  patent,  circumstances  may  require  appropriate  interim
measures to be ordered under Article 243 of the EC Treaty before a decision in main
proceedings  can  be  made.  The  conferral  of  jurisdiction  for  interim  measures  is  not
limited to orders of interim measures in pending cases making such orders possible
even  before  main  proceedings  are  brought.  Also,  the  Court  of  Justice  shall  have
jurisdiction  for  evidence-protection  measures  which  will  be  provided  for  in  the
context  of  the  Commission  proposal  for  a  Council  decision  establishing  the
Community Patent Court and concerning appeals before the Court of First Instance.

Under point (d), jurisdiction is conferred to award damages or compensation in the
situations  for  which  jurisdiction  is  conferred  under  number  one  to  three  of  this
Article.  Claims  falling  into  this  category  are  granted  in  Article  44  of  the  draft
Community patent regulation awarding e.g. claims for damages of the holder of the
Community patent in particular in the case of an infringement of a Community patent
but  also  claims  of  third  parties  against  the  right  holder  where  the  latter  has  unduly
exercised his rights and caused prejudice to those parties.  Finally, in the  context of
the Commission proposal for a Council decision establishing the Community Patent
Court  and  concerning  appeals  before  the  Court  of  First  Instance,  a  claim  for
compensation for  injuries caused by  provisional or  evidence-protection  measures  is
foreseen.

Under point (e), jurisdiction is conferred for orders of a penalty payment in case of
non-compliance with a decision or order of the Community Patent Court constituting
an  obligation  to  act  or  to  abstain  from  an  act.  The  Community  Patent  Court  itself
should be able to order such a penalty payment for non-compliance with its decisions
or  orders.  If  for  example  the  Community  Patent  Court  orders  a  defendant  to  stop
infringement, it should at the same time be able to make an order whereby the non-
compliance would be sanctioned by an obligation to pay a certain sum of money. If
such  an  order  necessitated  a  separate  application  to  the  courts  of  Member  States,
valuable  time  could  be  lost  in  ensuring  that  the  decision  of  the  Community  Patent
Court is respected.

In so far as this decision does not confer jurisdiction on the Court of Justice, national
courts retain their jurisdiction.  Article  46  of  the  draft  Community  patent  regulation
clarifies in this regard that national courts remain competent for any action for which
exclusive jurisdiction is not conferred on the Court of Justice which for example is
the case in disputes concerning the ownership of a Community patent.

Article 2 – Transitional provision

Article  2  contains  a  transitional  provision  relating  to  the  extent  of  the  conferral  of
jurisdiction. The Community jurisdiction will only be established after a transitional
period  in  which  national  court  shall  have  jurisdiction.  The  question  arises  to  what
extent the conferral of jurisdiction on the Court of Justice will apply with regard to

7

 
disputes  already  existing  at  the  time  when  the  conferral  takes  effect.  Article  2
provides  for  a  clear  cut  rule  that  those  disputes  of  which  a  national  court  has  been
seised prior to the conferral of jurisdiction on the Court of Justice will not be affected
by the conferral. Consequently they will be decided by the respective national court
before which the case is already pending.

Article 3 – Adoption by Member States

In  Article  3,  the  Council  recommends  the  provisions  conferring  jurisdiction  as
contained  in  Articles  1  and  2  of  this  decision  to  Member  States  for  adoption  in
accordance  with  their  respective  constitutional  requirements  as  foreseen 
in
Article 229a  of  the  EC  Treaty.  For  reasons  of  transparency  and  in  order  for  the
Council to monitor developments, Member States shall notify the Council as soon as
possible of necessary measures to be taken and of their adoption.

Article 4 – Entry into force

This Article governs the entry into force of this decision and with it the conferral of
jurisdiction on the Court of Justice as laid down by it. The entry into force is made
dependent on two events. The first condition is the notification by Member States of
their  acceptance  of  the  conferral  after  adoption  in  accordance  with  their  respective
constitutional  requirements  as  foreseen  in  Article  229a  of  the  EC  Treaty  and
Article 3  of  the  present  decision.  However,  once  Member  States  have  effected  that
notification,  the  decision  cannot  automatically  enter  into  force  conferring  the
jurisdiction from Member States on the Court of Justice. The Council has agreed in
its  3  March  2003  common  political  approach  that  national  courts  shall  have
jurisdiction in a transitional period where Community patents will already be granted
but where the Community jurisdiction to be established at the latest by 2010 has not
yet  been  created.  In  order  to  avoid  a  situation  where  there  are  granted  Community
patents  but  no  competent  jurisdiction  before  which  rights  can  be  enforced,  the
conferral  of  jurisdiction  must  not  happen  at  a  point  in  time  where  the  Community
jurisdiction is not yet operational. Hence, the entry into force of the present decision
should secondly depend on a ruling published by the President of the Court of Justice
in  the  Official  Journal  of  the  European  Communities  that  the  Community  Patent
Court  and  the  patent  appeal  chamber  within  the  Court  of  First  Instance  have  been
constituted in accordance with law.

8

 
2003/0326 (CNS)

Proposal for a

COUNCIL DECISION

conferring jurisdiction on the Court of Justice in disputes relating to the Community
patent

THE COUNCIL OF THE EUROPEAN UNION,

Having  regard  to  the  Treaty  establishing  the  European  Community,  and  in  particular
Article 229a thereof,

Having regard to the proposal from the Commission1,

Having regard to the opinion of the European Parliament2,

Having regard to the opinion of the European Economic and Social Committee3,

Whereas:

(1)

(2)

(3)

(4)

The European Council held in Lisbon in March 2000 called for the necessary steps to
be  taken  to  increase  the  competitiveness  of  the  European  Union  in  a  modern
knowledge based economy  underlining the  importance of  effective  Community-wide
patent protection.

The system of patent protection has been characterised by patents granted either by a
national patent office in a Member State or by the European Patent Office with effect
in a Member State, and by enforcement of those patents before the national courts of
the Member State concerned.

Innovative European industry relies on effective Community-wide legal protection for
its  inventions.  The  creation  of  a  Community  patent  system  comprising  a  unitary
Community  patent  title  and  the  possibility  of  enforcing  such  a  right  before  a
Community  jurisdiction  to  be  established  at  the  latest  by  2010  after  a  transitional
period in which national courts retain competence  will  provide the  missing  elements
for the system of patent protection in the Union.

Council Regulation (EC) No …/2003 of … 2003 on the Community patent4 creates a
Community patent  title.  Holders of such a title  enjoy  Community-wide protection of
an invention according to the uniform standards of that Regulation.

1

2

3

4

OJ C
OJ C
OJ C
OJ L

9

 
                                                
(5)

(6)

(7)

The Court of Justice should be vested with jurisdiction in certain disputes relating to
Community patents.

The jurisdiction conferred on the Court of Justice is to be exercised by the Community
Patent  Court  by  virtue  of  Council  Decision  No  …/20035,  adopted  on  the  basis  of
Articles  225a  and  245  of  the  Treaty.  Those  Articles  allow  for  the  establishment  of
judicial  panels  attached  to  the  Court  of  First  Instance  to  hear  and  determine  at  first
instance certain classes of action brought in specific areas.

By virtue of Article 225(2) of the Treaty, the Court of First Instance has jurisdiction to
hear and determine  actions and proceedings  brought  against  decisions of  the  judicial
panels set up under Article 225a of the Treaty. Decisions given by the Court of First
Instance  on  appeal  against  decisions  of  the  Community  Patent  Court  may,
exceptionally,  pursuant  to  Article  225(2)  of  the  Treaty,  be  subject  to  review  by  the
Court  of  Justice,  where  there  is  a  serious  risk  to  the  unity  or  consistency  of
Community law,

HAS DECIDED AS FOLLOWS:

Article 1

Conferral of jurisdiction on the Court of Justice

The Court of Justice shall have exclusive jurisdiction over the following:

(a)

(b)

(c)

(d)

(e)

infringement  or  validity  of  a  Community  patent  and  a  Community  supplementary
protection certificate;

the use of the invention after the publication of the Community patent application or
the right based on prior use of the invention;

interim  and  evidence-protection  measures  in  connection  with  the  subject  matters
conferred;

damages or compensation in the circumstances set out in points (a), (b), and (c);

the ordering of a penalty payment in case of non-compliance with a decision or order
constituting an obligation to act or to abstain from an act.

Article 2

Transitional provision

The Court of Justice shall not have jurisdiction over those disputes of which a national court
is already seised on the date at which this Decision enters into force.

5

OJ L

10

 
                                                
Article 3

Adoption by Member States

The Council recommends the provision contained in Articles 1 and 2 of this Decision to the
Member States  for  adoption  in  accordance with their  respective  constitutional  requirements.
Members States shall notify the Council as soon as possible of the measures to be taken and
their adoption.

Article 4

Entry into force

This Decision shall enter into force after the notification to the  Council by the  last Member
State of its acceptance of this Decision on the date of the publication in the Official Journal of
the European Union of the ruling by the President of the Court of Justice that the Community
Patent  Court  and  the  patent  appeal  chamber  within  the  Court  of  First  Instance  have  been
constituted in accordance with law.

Done at Brussels, […]

For the Council
The President
[…]

11

 
LEGISLATIVE FINANCIAL STATEMENT

Policy area(s): Industrial property

Activity: Creation of the Community patent jurisdiction

TITLE  OF  ACTION: PROPOSAL  FOR  A COUNCIL  DECISION  CONFERRING  JURISDICTION  ON  THE

COURT OF JUSTICE IN DISPUTES RELATING TO THE COMMUNITY PATENT

1.

BUDGET LINE(S) + HEADING(S)

The Community patent jurisdiction is created by two Council decisions. The present
decision, based on Article 229a of the EC Treaty, confers jurisdiction relating to the
Community  patent  on  the  Court  of  Justice.  The  second  decision,  based  on
Articles 225a, 245 of the EC Treaty and for which the Commission tables a separate
proposal,  will  contain  the  necessary  provisions  establishing  the  Community  Patent
Court  and  concerning  appeals  before  the  Court  of  First  Instance.  The  budgetary
consequences  will  follow  from  that  second  decision  causing  human  resources  and
other  administrative  expenditures.  Judges,  the  registrar,  assistant  rapporteurs  and
other  staff  have  to  be  appointed,  court  rooms,  office  space  and  equipment  must  be
provided for. The present proposal, however, exclusively deals with the conferral of
jurisdiction  on  the  Court  of  Justice  and  does  not  itself  engage  the  budget  of  the
Community.  It  will  only  enter  into  force  once  the  court  system  has  been  set  up,
i.e. on the date of the publication of the ruling of the President of the Court of Justice
that the Community Patent Court and the patent appeal chamber of the Court of First
Instance have been constituted in accordance with law.

Consequently,  the  present  proposal  does  not  contain  any  figures  on  the  financial
implications  of  the  Community  patent  jurisdiction.  These  detailed  figures  are
contained  in  the  legislative  financial  statement  in  the  annex  to  the  Commission
proposal  for  a  Council  decision  establishing  the  Community  Patent  Court  and
concerning appeals before the Court of First Instance.

2.

OVERALL FIGURES

Not applicable (see no 1).

3.

BUDGET CHARACTERISTICS

Not applicable (See no 1).

4.

LEGAL BASIS

Article 229a of the EC Treaty.

12

 
5.

DESCRIPTION AND GROUNDS

5.1.

Need for Community intervention

5.1.1. Objectives pursued

The  proposed  Council  Decision  is  part  of  the  overall  project  to  establish  the
Community patent system. By way of a revision of the European Patent Convention
and  an  accession  of  the  Community  to  it,  the  European  Patent  Office  shall  be
empowered  to  grant  Community  patents  which  will  confer  rights  on  their  holders
according  to  the  Regulation  of  the  Council  on  the  Community  patent.  Disputes
concerning in particular the infringement and the validity of these rights shall, after a
transitional  period,  be  brought  before  a  Community  jurisdiction.  These  measures
shall reform the system of patent protection in Europe which has been characterised
by national patent titles to be enforced before national courts and make the necessary
adaptations  for  the  needs  of  the  European  industry  which  increasingly  operates
trans-nationally  within  the  common  market.  The  measures  are  designed  to  increase
the  competitiveness  of 
industries  by  creating  a
Community-wide  uniform  patent  protection  which  can  be  enforced  before  a  single
Community jurisdiction rendering decisions with Community-wide effect.

the  Union's 

innovative 

Within this overall project, the Community patent jurisdiction shall be created by two
Council  decisions.  The  Commission  presented  a  separate  proposal  for  the
establishment of a Community Patent Court and concerning appeals before the Court
of  First  Instance.  The  objective  of  the  present  proposal  is  to  confer  jurisdiction
relating  to  the  Community  patent  on  the  Court  of  Justice  which  then  will  be
exercised at first instance by the newly established Community Patent Court and by
the Court of First Instance on appeal.

5.1.2. Measures taken in connection with ex ante evaluation

The necessity to create a patent system covering the Community as a whole has been
recognised  for  decades.  The  first  initiative  to  create  such  a  system  resulted  in  the
European  Patent  Convention  of 5 October  1973  which  harmonised  the  grant  of  the
European patent by the European Patent Office but did neither include provisions on
the  rights  conferred  by  such  a  patent  nor  create  a  single  jurisdiction  to  deal  with
disputes.  This  was  still  left  to  national  legislation  and  national  jurisdiction  of  the
Contracting  States.  In  a  second  initiative,  EC  Member  States  tried  to  create  a
Community patent on the basis of an international agreement including an integrated
jurisdiction. The Community Patent Convention was signed on 15 December 1975 in
Luxembourg  followed  by  the  15  December  1989  agreement  relating  to  the
Community  patent  which  included  a  protocol  on  the  settlement  of  litigation
concerning  the  infringement  and  validity  of  Community  patents.  The  Convention,
however,  never  entered  into  force.  In  the  context  of  the  Amsterdam  European
Council of June 1997 (action plan for the single market), the Commission published
a Green Paper on the promotion of innovation by patents. The  consultations on the
Green Paper including  the  comments made in  the hearing  on  25  and  26  November
1997 showed a clear support for the creation of a Community patent system. Finally,
the  Lisbon  European  Council  in  March  2000  took  up  the  issue  and  called  for  the
creation of a Community patent system. The Council in its 3 March 2003  common
political approach reached agreement on a number of key issues of the Community

13

 
patent system including the jurisdictional aspects calling for the establishment of the
Community Patent Court on the basis of Article 225a of the EC Treaty.

5.2.

Action envisaged and budget intervention arrangements

Not applicable (see no 1).

5.3.

Methods of implementation

Not applicable (see no 1).

6.

FINANCIAL IMPACT

Not applicable (see no 1).

7.

IMPACT ON STAFF AND ADMINISTRATIVE EXPENDITURE

Not applicable (see no 1).

8.

FOLLOW-UP AND EVALUATION

8.1.

Follow-up arrangements

The  Council  in  its  3  March  2003  common  political  approach  (point  5)  foresees  a
review  mechanism  of  the  Community  patent  system  including  the  jurisdictional
arrangements.  Regarding  the  present  Decision,  the  jurisdiction  conferred  on  the
Court  of  Justice  would  have  to  be  reviewed  as  to  the  subject  matter  in  the  light  of
experience gathered. The Commission will need to consult the Court of Justice and
interested  circles  to  collect  data  on  the  functioning  of  the  Community  patent
jurisdiction  and  will  have  to  evaluate  the  collected  data  and,  where  appropriate,
suggest changes to the current decision.

8.2.

Arrangements and schedule for the planned evaluation

On  the  basis  of  the  common  political  approach  adopted  by  the  Council  on
3 March 2003, the Commission will present a report on the functioning of all aspects
of  the  Community  patent  including  the  jurisdictional  arrangements  five  years  after
the grant of the first Community patent. Further reviews will be made periodically.

9.

ANTI-FRAUD MEASURES

This  does  not  apply.  The  proposal  deals  with  the  conferral  of  jurisdiction  on  the
Court of Justice relating to the Community patent and does not cover a policy  area
with a risk of fraud.

14

 
IMPACT ASSESSMENT FORM

THE IMPACT OF THE PROPOSAL ON BUSINESS WITH SPECIAL REFERENCE
TO SMALL AND MEDIUM-SIZED ENTERPRISES( SMEs)

TITLE OF PROPOSAL

Proposal for a Council decision conferring jurisdiction on the Court of Justice relating to the
Community patent.

DOCUMENT REFERENCE NUMBER

[…]

THE PROPOSAL

1.

Taking  account  of  the  principle  of  subsidiarity,  why  is  Community  legislation
necessary in this area and what are its main aims?

The object of the Community patent system is to provide a Community wide patent
protection  which  can  be  enforced  before  one  single  court  operating  to  uniform
standards  and  whose  decisions  enjoy  Community  wide  effect.  This  objective  can
only be achieved at a Community level.

THE IMPACT ON BUSINESS

2.

Who will be affected by the proposal?

– 

which sectors of business

All  sectors  of  business  that  deal  with  technical  inventions  which  can  be  subject  to
patent protection are concerned by the Community patent system. They can in case
of conflict be  party  to  litigation  before  the Community  Patent  Court  and  on  appeal
before  the  Court  of  First Instance  to  the  extent  that  jurisdiction  is  conferred  on  the
Court of Justice.

– 

which sizes of business (what is the concentration of small and medium-sized
firms)

Potentially  every  size  of  business  can  be  a  party  to  Community  patent  litigation
before the Community patent jurisdiction. For example, the holder of a Community
patent  may,  as  a  plaintiff,  wish  to  enforce  his  rights  flowing  from  the  Community
patent  title  before  the  Community  Patent  Court.  A  third  person  may  as  a  plaintiff
wish to attack the validity  of such a Community patent granting exclusive rights to
its holder that he considers to be invalid. As defendant the right holder may wish to
defend the validity of his patent or as a third person defend himself against an alleged
infringement of a Community patent.

15

 
The  Community  patent  system  intends  to  make  patenting  of  inventions  more
attractive  especially  for  SMEs  which  will  particularly  increase  the  significance  for
this  group.  So  far  patenting  is  done  in  or  with  effect  for  individual  Member  States
and  the  enforcement  must  take  place  before  the  national  courts  of  the  respective
Member  States  their  national  patent  law  and  their  national  legislation  on  the  court
procedure  which  is  particularly  cumbersome  for  SMEs.  The  Community  patent
jurisdiction will allow to enforce a unitary patent right valid in the entire Community
in one single court procedure operating to common standards.

3.

What will business have to do to comply with the proposal?

The  effect  for  businesses  will  be  felt  only  in  cases  of  litigation  over  a  Community
patent. In that case they have to familiarise themselves with the proceedings before
the Community patent jurisdiction.

4.

What economic effects is the proposal likely to have?

The proposal will only have an economic effect in combination with the other legal
instruments creating a Community patent system. The Community patent system as a
whole will have a positive economic impact. In particular:

– 

on investment and the creation of new businesses

The Community patent system will have a  positive  impact on  investments  due to a
better Community wide legal protection of inventions. The return on investments in
innovative  technologies  will  be  more  secure  serving  as  an  incentive  for  more
investment.  Moreover,  since  better  legal  protection  will  be  rendered  less  costly,
businesses  will  be  able  to  make  more  efficient  use  of  their  existing  budget  for
research  and  development  which  will  lead  to  more  inventions  which  in  turn  will
stimulate  investments  to  economically  exploit  these  inventions.  Since  effective
patent  protection  often  serves  as  the  legal  basis  for  an  economically  successfully
operating  business,  a  more  comprehensive,  easier  and  less  costly  patent  protection
will promote the creation of new businesses.

– 

on the competitiveness of businesses

The Community patent system will make patent protection more effective, easier and
less costly not only  for those businesses  that already make use  of patent  protection
but also make patenting more easily accessible for other businesses and in particular
for  SMEs.  The  possibility  to  protect  an  invention  and  with  it  the  associated
investment  into  it  with  Community  wide  effect  will  increase  the  ability  of  all
businesses  that  make  use  of  this  possibility  to  compete  in  the  common  market.
Moreover,  the  competitiveness  of  European  industry  will  be  increased  on  a  global
scale  compared  to  the  major  trading  partners  and  competitors.  Today  patent
protection for example in the United States or Japan is considerably less costly than
in Europe under the national and the European patent system. Consequently US and
Japan based companies can develop patented products at a considerably lower price
which  later  are  marketed  world  wide.  The  Community  patent  system  intends  to
eliminate this obstacle for the competitiveness of the European industry.

16

 
– 

on employment

in 

increased 

investment 

An 
strengthened
competitiveness of the European industry will lead to the creation of new jobs. The
creation  of  new  jobs  can  be  expected  across  the  full  range  of  technical  fields  and
their related industries.  In particular the modern,  innovative  technologies  which  are
playing a steadily increasing role in a knowledge based global economy will benefit.

technologies  and  a 

inventive 

5.

Does the proposal contain measures to take account of the specific situation of small
and medium-sized firms (reduced or different requirements etc)?

This does not apply. No distinction according to the size of companies can be made
with regard the subject matter of jurisdiction conferred on the Court of Justice.

CONSULTATION

6.

List the organisations which have been consulted about the proposal and outline their
main views:

The necessity to create a patent system covering the Community as a whole has been
recognised  for  decades.  The  first  initiative  to  create  such  a  system  resulted  in  the
European  Patent  Convention  of 5 October  1973  which  harmonised  the  grant  of  the
European patent by the European Patent Office but did neither include provisions on
the  rights  conferred  by  such  a  patent  nor  create  a  single  jurisdiction  to  deal  with
disputes.  This  was  still  left  to  national  legislation  and  national  jurisdiction  of  the
Contracting  States.  In  a  second  initiative,  EC  Member  States  tried  to  create  a
Community patent on the basis of an international agreement including an integrated
jurisdiction. The Community Patent Convention was signed on 15 December 1975 in
Luxembourg  followed  by  the  15  December  1989  agreement  relating  to  the
Community  patent  which  included  a  protocol  on  the  settlement  of  litigation
concerning  the  infringement  and  validity  of  Community  patents.  The  Convention
however never entered into force. In the context of the Amsterdam European Council
of June 1997 (action plan for the single market), the Commission published a green
paper  on  the  promotion  of  innovation  by  patents.  The  consultations  on  the  green
paper  including  the  comments  made  in  the  hearing  on  25  and  26  November  1997
showed a clear support for the creation of  a Community patent system. Finally, the
Lisbon European Council in March 2000 took up the issue and called for the creation
of a Community patent system. The Council in its 3 March 2003 common political
approach  reached  agreement  on  a  number  of  key  issues  of  the  Community  patent
system  including  the  jurisdictional  aspects  calling  for  the  establishment  of  the
Community Patent Court on the basis of Article 225a of the EC Treaty.

17