Proposal for a Council Decision establishing the Community Patent Court and concerning appeals before the Court of First Instance
Date: 2003-12-23
Institutions: European Commission
Subjects: European patent, General Court (EU), appeal, courts and tribunals, jurisdiction

COMMISSION OF THE EUROPEAN COMMUNITIES

Brussels, 23.12.2003
COM(2003) 828 final

2003/0324 (CNS)

Proposal for a

COUNCIL DECISION

establishing the Community Patent Court
and concerning appeals before the Court of First Instance

(presented by the Commission)

EN

  EN

TABLE OF CONTENTS

EXPLANATORY MEMORANDUM ....................................................................................... 5

1.

2.

3.

4.

5.

6.

7.

8.

Background .................................................................................................................. 5

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

The Community patent jurisdiction ............................................................................. 6

The Community Patent Court ...................................................................................... 6

The Appeal to the Court of First Instance.................................................................... 9

Transitional period ..................................................................................................... 10

Need for a Community intervention .......................................................................... 10

Proposed Provisions ................................................................................................... 10

Proposal for a COUNCIL DECISION establishing the Community Patent Court and
concerning appeals before the Court of First Instance ............................................................. 37

Chapter I The Community Patent Court................................................................................... 39

Article 1 – Establishment of Community Patent Court

Article 2 – Application of EC Treaty provisions

Article 3 – Statute provisions for judicial panels

Article 4 – Annex to the Protocol on the Statute of the Court of Justice

Chapter II Appeal proceedings before the Court of First Instance........................................... 46

Article 5 – Number of Judges at the Court of First Instance

Article 6 – Community patent appeal proceedings

Chapter III Transitional and final provisions ........................................................................... 47

Article 7 –Transitional provisions

Article 8 – Entry into force

LEGISLATIVE FINANCIAL STATEMENT......................................................................... 49

Title of action: Proposal for a Council Decision establishing the Community Patent Court and
concerning appeals before the Court of First Instance............................................... 49

1.

2.

BUDGET LINE(S) + HEADING(S) ......................................................................... 49

OVERALL FIGURES ............................................................................................... 49

2

 
2.1.

2.2.

2.3.

2.4.

2.5.

3.

4.

5.

Total allocation for action (Part B): € million for commitment................................. 52

Period of application: ................................................................................................. 52

Overall multiannual estimate of expenditure: ............................................................ 52

Compatibility with financial programming and financial perspective....................... 53

Financial impact on revenue: ..................................................................................... 53

BUDGET CHARACTERISTICS .............................................................................. 54

LEGAL BASIS .......................................................................................................... 54

DESCRIPTION AND GROUNDS............................................................................ 54

5.1.

Need for Community intervention ............................................................................. 54

5.1.1. Objectives pursued ..................................................................................................... 54

5.1.2. Measures taken in connection with ex ante evaluation .............................................. 54

5.2.

5.3.

6.

6.1.

6.2.

7.

7.1

Action envisaged and budget intervention arrangements .......................................... 55

Methods of implementation ....................................................................................... 55

FINANCIAL IMPACT .............................................................................................. 55

Total financial impact on Part B - (over the entire programming period) ................. 55

Calculation of costs by measure envisaged in Part B (over the entire programming
period) ........................................................................................................................ 55

IMPACT ON STAFF AND ADMINISTRATIVE EXPENDITURE ....................... 55

The year before the Community patent jurisdiction becomes operational (2009)..... 55

7.1.1.

Impact on human resources........................................................................................ 56

7.1.2. Overall financial impact of human resources............................................................. 56

7.1.3. Other administrative expenditure deriving from action in 2009................................ 56

7.2.

First two years of operational Community patent jurisdiction (2010-2011).............. 57

7.2.1.

Impact on human resources........................................................................................ 57

7.2.2. Overall financial impact of human resources............................................................. 58

7.2.2.1. Overall financial impact on human resources in 2010............................................... 58

7.2.2.2. Overall financial impact on human resources in 2011............................................... 58

7.2.3. Other administrative expenditure deriving from the action ....................................... 59

7.2.3.1. Other administrative expenditure deriving from action in 2010................................ 59

7.2.3.2. Other administrative expenditure deriving from action in 2011................................ 59

7.3.

Third and fourth year of operation of the Community patent jurisdiction (2012 –
 2013) ......................................................................................................................... 60

3

 
7.3.1.

Impact on human resources........................................................................................ 60

7.3.2. Overall financial impact on human resources ............................................................ 61

7.3.2.1. Overall financial impact on human resources in 2012............................................... 61

7.3.2.2. Overall financial impact on human resources in 2013............................................... 61

7.3.3. Other administrative expenditure deriving from action in each of the years 2012 and

in 2013........................................................................................................................ 62

7.4.

End of the initial phase (2014) ................................................................................... 62

7.4.1.

Impact on human resources........................................................................................ 63

7.4.2. Overall financial impact of human resources............................................................. 64

7.4.3. Other administrative expenditure deriving from the action ....................................... 64

8.

8.1.

8.2.

9.

FOLLOW-UP AND EVALUATION ........................................................................ 65

Follow-up arrangements............................................................................................. 65

Arrangements and schedule for the planned evaluation ............................................ 65

ANTI-FRAUD MEASURES ..................................................................................... 65

IMPACT ASSESSMENT FORM THE IMPACT OF THE PROPOSAL ON BUSINESS
WITH SPECIAL REFERENCE TO SMALL AND MEDIUM-SIZED ENTERPRISES
(SMEs) ..................................................................................................................................... 66

Title of proposal ....................................................................................................................... 66

Document reference number .................................................................................................... 66

The proposal ............................................................................................................................. 66

The impact on business ............................................................................................................ 66

Consultation ............................................................................................................................. 68

4

 
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 entails for  the  right  holder  the  risk of  being
forced  to  enter  into  multiple  litigation  in  a  number  of  Member  States  on  the  same
patent  issue  with  possibly  variable  results  has  long  been  criticised  as  inappropriate
and  unsuitable  for  the  needs  of  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 intending
to  create  a  unitary  Community  patent  title  was  signed  on  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.

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

5

 
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  Treaty  which  create  Community
industrial  property  rights.  To  that  effect,  the  Commission  put  before  the  Council  a
separate proposal for a Council Decision containing such a conferral of jurisdiction
with regard to the Community patent. The Court of Justice should have jurisdiction
in disputes relating to the infringement or the validity of a Community patent and a
Community  supplementary  protection  certificate,  the  use  of  the  invention  after  the
publication of the Community patent application, the right based on prior use of the
invention,  provisional  and  evidence-protection  measures  in  the  subject  matter
conferred, damages or compensation in the situations referred to above and orders 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.

The  present  Commission  proposal  for  a  Council  Decision  based  on  Articles  225a,
245  of  the  EC  Treaty  proposes  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. The Decision
also contains 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. 

THE COMMUNITY PATENT COURT

Article 225a of the EC Treaty provides for the possibility to create judicial panels to
hear and determine at first instance certain classes of action or proceeding brought in

6

 
specific  areas.  It  is  proposed  that  the  Community  Patent  Court  is  established  as  a
judicial panel in the sense of Article 225a of the EC Treaty. It would be competent
for first instance litigation relating to the Community patent for which jurisdiction is
conferred  on  the  Court  of  Justice  by  the  Decision  of  the  Council  based  on
Article 229a of the EC Treaty.

The  EC  Treaty  itself  already  contains  a  number  of  provisions  relevant  to  judicial
panels. Judicial panels are according to Article 220(2) of the EC Treaty attached to
the  Court  of  First  Instance.  Article  225a(4)  of  the  EC  Treaty  sets  out  the  required
qualifications for the judges of judicial panels and the appointment procedure. Judges
shall be chosen from persons whose independence is beyond doubt and who possess
the ability required for appointment to judicial office. Unlike the judges of the Court
of Justice and the Court First Instance who are appointed by common accord of the
governments of the Member States, the judges of a judicial panel are appointed by a
unanimous decision  of  the  Council.  Article  225a(5)  of  the  EC  Treaty  provides  that
the  Rules  of  Procedure  of  a  judicial  panel  are  established  by  the  panel  itself  in
agreement with the Court of Justice and subject to the approval by the Council acting
by a qualified majority. The EC Treaty provisions relating to the Court of Justice and
the  provisions  of  the  Statute  of  the  Court  of  Justice  apply  according  to
Article 225a(6)  of  the  EC  Treaty  also  to  judicial  panels  unless  the  decision
establishing  a  judicial  panel  provides  otherwise.  Appeals  against  decisions  of  the
Community Patent Court will, according to Articles 225(2), 225a(3) of the EC Treaty
be heard by the Court of First Instance. That appeal is limited to points of law unless
otherwise provided for in the decision establishing the judicial panel.

With regard to the structure of the Community Patent Court, the proposal contains a
centralised  and  specialised  Community  jurisdiction  which  will  best  ensure  legal
certainty  regarding  the  unitary  Community  patent.  The  Community  patent  title
covering the territory of all EU Member States should not only be granted according
to  the  uniform  standards  of  the  European  Patent  Convention  and  after  grant  be
governed by the uniform provisions of Community law contained in the Community
patent  regulation.  It  should  also  be  effectively  enforceable  before  a  Community
jurisdiction guaranteeing high quality decisions in a quick, inexpensive and uniform
procedure. The Community Patent Court with its judges coming from different legal
backgrounds within the Community would from its establishment develop a common
Community  patent  case  law  ensuring  legal  certainty  throughout  the  Community.
These arguments in favour of a completely centralised Community jurisdiction have
after a long and thorough discussion found the unanimous support of the Council as
expressed  in  the  common  political  approach  of  3  March  2003.  The  judges  of  the
Community  Patent  Court  as  a  specialised  Community  jurisdiction  should  be
sufficiently experienced in the field of patents. This has been expressly recognised by
the  Council  who  agreed  in  its  common  political  approach  that  candidates  for
appointment must have an established high level of legal expertise in patent law and
that judges shall be appointed on the basis of their expertise.

It  is  proposed  that  the  Community  Patent  Court  will  consist  of  seven  judges
including  the  president.  With  the  normal  composition  of  the  bench  being  three
judges, six judges would allow to form two chambers within the Community Patent
Court.  The  seventh  member  would  appear  necessary  for  the  reinforcement  of  a
chamber  where  needed,  e.g.  due  to  illness  of  a  judge  or  for  the  chamber  presided
over by the president of the Community Patent Court who also has to assume tasks
related to the administration and the representation of the Community Patent Court.

7

 
In  special  circumstances  provided  for  in  the  Rules  of  Procedure,  the  Community
Patent  Court  could  sit  in  an  enlarged  composition,  for  example  in  cases  where
fundamental  questions  of  patent  law  are  concerned  or  in  a  reduced  composition
which could be the case for interim measures or simple cases in main proceedings.

The judges should be assisted in their work throughout the handling of the case  by
technical  experts  as  agreed  upon  by  the  Council  in  its  3  March  2003  common
political  approach.  For  that  purpose,  use  of  “assistant  rapporteurs”  as  foreseen  in
Article  13  of  the  Protocol  on  Statute  of  the  Court  of  Justice  shall  be  made.  Such
assistant  rapporteurs,  specialised  in  different  technical  fields,  should  actively
participate  in  the  preparation,  the  hearing  and  the  deliberation  of  a  case.  However,
they  would  not  have  a  right  to  vote  on  the  decision  to  take.  Their  input  would  be
important in helping the judges 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  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.

The Community Patent Court, though attached to the Court of First Instance should
have its own registrar. With a view to an entirely different type of litigation and the
case  load  of  the  Community  Patent  Court,  a  separate  registrar  would  appear  to  be
necessary  to  ensure  swift  and  efficient  proceedings  before  the  Community  Patent
Court.

With  a  view  to  the  first  instance  proceedings  before  the  Community  Patent  Court,
Article 4 of the Decision creates Annex II to the Protocol on the Statute of the Court
of Justice including a number of provisions adapting the provisions of the Statute of
the Court Justice which are applied to judicial panels according to Article 225a(6) of
the EC Treaty. With a view to the special nature of litigation before the Community
Patent Court, i.e. private party patent litigation, some provisions of the Statute of the
Court  of  Justice  cannot  apply  e.g.  those  concerning  the  review  of  the  legality  of
Community  acts,  others  need  amendments  e.g.  those  concerning  the  procedure,  the
production  of  evidence  or  the  revision  of  a  judgment  and  finally  some  provisions
need  to  be  added  e.g.  those  concerning  the  enforcement  of  decisions  of  the
Community Patent Court or court fees.

Any official EU language can, depending on the circumstance, become the language
of proceedings before the Community Patent Court. The principle that will decide on
the language of proceedings in a particular case centres on the place of domicile of
the  defendant  in  the  Community.  The  Community  Patent  Court  conducts  the
proceedings in the official EU language of the Member State where the defendant is
domiciled, or in one of them to be chosen by the defendant, where in a Member State
there are two or more official languages. However, at the request of the parties and
with  the  consent  of  the  Community  Patent  Court,  any  official  EU  language  can  be
chosen  as  language  of  proceedings.  Where  the  defendant  is  not  domiciled  in  a
Member State, the language of proceedings would be determined by the official EU
language in which the Community Patent was granted.

The proposal provides that the proceedings before the Community Patent Court will
not  be  free  of  charge.  The  Community  Patent  Court  will  hear  litigation  in  which
parties  seek  to  enforce  their  private  rights  against  competitors  and  who  should
therefore  adequately  contribute  to  the  incurred  court  cost.  In  that  respect,  the

8

 
principle  contained  in  Article  72  of  the  Rules  of  Procedure  of  the  Court  of  Justice
and  Article  90  of  the  Rules  of  Procedure  of  the  Court  of  First  Instance  that
proceedings  are  free  of  charge  will  not  be  upheld  for  Community  patent  litigation.
However,  provisions  on  legal  aid  will  have  to  be  provided  for  in  the  Rules  of
Procedure of the Community Patent Court where a party is unable to meet the cost of
proceedings as is the case in the Rules of Procedure in Articles 76 for the Court of
Justice and 94. ff for the Court of First Instance.

5. 

THE APPEAL TO THE COURT OF FIRST INSTANCE

With the establishment of a Community Patent Court as a judicial panel in the sense
of  Article  225a  of  the  EC  Treaty  which  is  attached  to  the  Court  of  First  Instance
according to Article 220(2) of the EC Treaty, the latter will under Article 225(2) of
the  EC  Treaty  have  jurisdiction  to  hear  and  determine  appeals  against  decisions  of
the Community Patent Court.

For that purpose it is suggested to set up a special patent appeal chamber within the
Court  of  First  Instance  with  three  judges  having  a  high  level  of  legal  expertise  in
patent law providing the legal experience required for the highly specialised field of
patent litigation. This appears to be necessary not only in first instance on the level of
the  Community  Patent  Court  but  also  on  appeal  ensuring  swift  and  efficient
proceedings resulting in high quality decisions that merit the trust of the users from
the very beginning of the system. The judges hearing the appeal will also be assisted
by  technical  experts  throughout  the  handling  of  the  case.  These  "assistant
rapporteurs"  will  be  required  to  participate  in  the  preparation,  the  hearing  and  the
deliberation of the case.

The Community Patent Court in first instance and the patent appeal chamber of the
Court  of  First  Instance  in  patent  appeal  proceedings  must,  as  the  two  stages  of  a
uniform procedure, work to the same set of procedural rules. Therefore, those special
Statute  provisions  that  are  necessary  with  a  view  to  the  specific  nature  of  patent
litigation  which  deviate  from  the  Statute  provisions  of  the  Court  of  Justice  as  they
would  apply  the  Community  Patent  Court  according  to  Article  225a(6)  of  the
EC Treaty  are  also  made  applicable  for  the  appeal  proceedings  before  the  Court  of
First Instance.

In principle  Community  patent  disputes  are  heard  by  the  Court  of  First  Instance  in
second  and  last  resort.  A  further  appeal  of  a  case  to  the  Court  of  Justice  is  not
foreseen. However, in exceptional cases, the decision of the Court of  First Instance
can be reviewed by the Court of Justice at the request of the First Advocate General
according to Article 225(2) of the EC Treaty, Article 62 of the Statute of the Court of
Justice where there  is a  serious  risk  of  the  unity  or  consistency  of  Community  law
being  affected. The Court of Justice is  expected  to  come  forward  with  a  request  to
change  its  Statute  introducing  further  details  for  such  a  review  procedure  as  called
for in Declaration No 13 adopted by the Nice conference.

With a view to the enabling provision of Article 225(3) of the EC Treaty allowing,
by  way of  Statute  provision,  to  entrust  the  Court  of  First  Instance  in  specific  areas
with  jurisdiction  to  hear  and  determine  questions  referred  for  a  preliminary  ruling
under Article 234 of the EC Treaty, the present proposal does not foresee any such
competence  for  Community  patent  law  provisions.  While  this  question  has  been

9

 
considered and held to yield important potential synergies with a view to the Court of
First  Instance  deciding  on  parallel  material  issues  either  as  an  appeal  instance  in
Community  patent  litigation  or  at  the  request  of  national  courts  for  a  preliminary
ruling,  it  was  felt  that  for  the  time  being  this  competence  should  remain  with  the
Court  of  Justice.  The  establishment  of  the  Community  Patent  Court  dealing  with  a
new kind of litigation on a Community level constitutes itself a major innovation for
the Community legal order such that it would appear appropriate to gather sufficient
practical  experience  in  the  operation  of  the  new  jurisdictional  arrangements  before
taking further steps.

6. 

TRANSITIONAL PERIOD

As  agreed  by  the  Council  in  its  3  March  2003  common  political  approach,  the
Community Patent Court 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
State will designate 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. With regard to legal remedies against a decision of a national court
in  first  instance,  the  legal  remedies  allowed  in  the  respective  Member  State  are
applicable.  Except  where  the  jurisdiction  of  a  national  court  is  based  on  the  place
where an infringement was committed, in which case the jurisdiction is limited to the
acts committed in that Member State, the national courts will have Community wide
jurisdiction.  Before  the  national  courts,  the  Community  patent  will  enjoy  a
comprehensive presumption of validity excluding the simple plea for invalidity as a
defence  against  an  infringement  action.  According  to  Article  2  of  the  Commission
proposal  for  a  Council  Decision  conferring  jurisdiction  on  the  Court  of  Justice
relating  to  the Community  patent, 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.

7. 

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.

8. 

PROPOSED PROVISIONS

With regard to its structure, the present Decision contains three  chapters  relating to
the Community Patent Court (Chapter I), the appeal proceedings against decisions of
the  Community  Patent  Court  before  the  Court  First  Instance  (Chapter  II)  and  final
provisions (Chapter III).

10

 
Chapter I - The Community Patent Court

Chapter  I  on  the  Community  Patent  Court  contains  two  major  elements.  Articles  1
to 3  of  the  Decision  contain  provisions  which  set  up  the  Community  Patent  Court,
determine the EC Treaty provisions to be applied to the Community Patent Court and
provide  a  legal  basis  for  an  annex  to  the  Protocol  on  the  Statute  of  the  Court  of
Justice containing the Statute provisions as applied by the Community Patent Court.
Article  4  contains  the  special  provisions  relating  to  the  Community  Patent  Court
which  are  to  be  annexed  to  the  Protocol  on  the  Statute  of  the  Court  of  Justice
(hereinafter "Statute").

Article 1 - Establishment of the Community Patent Court

Article 1 establishes a judicial panel to be called "Community Patent Court" for first
instance  Community  patent  litigation.  The  establishment  of  the  Community  Patent
Court  is  based  on  Article  225a  of  the  EC  Treaty  which  allows  for  the  creation  of
judicial  panels  to  hear  and  determine  at  first  instance  certain  classes  of  action  or
proceeding brought in specific areas. Pursuant to Article 220(2) of the EC Treaty, the
Community Patent Court is attached to the Court of First Instance. The structure of
the Community Patent Court had been subject to intensive debate in the Council as to
the  proper  degree  of  centralisation.  The  Council,  in  its  common  political  approach
adopted  on  3  March  2003  unanimously  agreed  on  a  fully  centralised  first  instance.
The  proposal  for  the  establishment  of  a  Community  Patent  Court  is  built  on  this
approach.  Consequently,  the  Community  Patent  Court  should  have  its  seat  at  the
Court of First Instance without any of the possibilities that had been under discussion
in the Council allowing for the establishment of permanent regional divisions of the
Community Patent Court in Member States.

Article 2 – Application of EC Treaty provisions

In accordance with Article 225a(6) of the EC Treaty, the provisions of the EC Treaty
relating  to  the  Court  of  Justice  and  the  provisions  of  the  Statute  of  the  Court  of
Justice  will  apply  to  the  Community  Patent  Court  unless  the  Decision  establishing
the Community Patent Court provides otherwise. Article 2 contains a list of Articles
chosen  from  the  EC  Treaty  provisions  relating  to  the  Court  of  Justice  that  are
applicable  to  the  Community  Patent  Court  subject  to  the  subsequent  provisions  of
Chapter  I  of  this  Decision.  The  same  approach  had  been  employed  by  Article  4  of
Council Decision 88/591/ECSC, EEC, Euratom of 24 October 1988 establishing the
Court of First Instance.

The EC Treaty provisions relating to the Court of Justice do not seem in their entirety
to be suitable for the special litigation to be handled by the Community Patent Court.
Not  applicable  of  course  are  the  provisions  relating  to  the  Court  of  Justice  and  the
Court of First Instance themselves, or to special proceedings before them. Moreover,
among those provisions of a more  general nature, a number of Articles referring to
acts  of  the  Communities  and  in  particular  their  nullification,  such  as  Articles  231,
233,  242  of  the  EC  Treaty,  are  not  applicable  to  the  Community  Patent  Court
handling private party litigation not involving the annulment of Community acts.

Articles 241, 243, 244 and 256 of the EC Treaty will apply to the Community Patent
Court.  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)  of  the

11

 
EC Treaty.  The  EC  Treaty  in  allowing  this  plea  for  non-application  ensures  the
protection  against  the  application  of  illegal  regulation  provisions,  a  safeguard  that
should also apply  in patent litigation. Parties should be allowed to  attack indirectly
the  validity  of  relevant  patent  provisions.  Article  243  of  the  EC  Treaty  states  the
principle that the Court can order any necessary interim measures. Such provision is
also valid for private party litigation and should thus apply to the Community Patent
Court. Articles 244 and 256 of the EC Treaty concern the enforcement of a judgment
which is governed by the law of the Member State in which enforcement is sought.
This provision should also apply to the judgments of the Community Patent Court.

the  enforcement  mechanism  provided  for 

With  regard  to  interim  measures  (Article  14  of  Annex  II  to  the  Statute)  and  the
enforcement of decisions of the Community Patent Court (Article 22 of Annex II to
the Statute) the Decision takes particular account of the special nature of Community
patent litigation. The order of interim measures provided for in Article 243 of the EC
Treaty  should  not  be  conditional  upon  main  proceedings  having  already  been
instituted before the Community Patent Court; also, interim measures that have been
found unjustified may give rise to a claim for adequate compensation for the injury
thereby  caused.  Furthermore, 
in
Article 256  of  the  EC  Treaty  does  not  seem  to  be  entirely  suitable  for  the
enforcement  of  decisions  of  the  Community  Patent  Court,  and  in  particular  for
interim  measures,  in that it  requires  an  order  of  enforcement to be  appended  to  the
decision by the national authority designated for this purpose by the Member State in
which  the  enforcement  takes  place.  Although  the  national  authority  would  only
verify  the  authenticity  of  the  decision  to  be  enforced,  this  would  still  result  in
unjustified  delays.  Consequently  the  order  of  enforcement  should  be  appended
directly  to  the  decision  by  the  Community  Patent  Court.  Furthermore,  decisions  of
the  Community  Patent  Court  should  also  be  enforceable  against  Member  States  as
they  should  be  treated  on  an  equal  basis  with  other  parties  where  they  own  or
infringe a Community patent. Finally, the Community Patent Court should have the
power  to  ensure  the  enforcement  of  certain  decisions  by  an  order  of  a  penalty
payment.

Article 3 – Statute provisions for judicial panels

This Article contains a provision inserting a new Title VI "Judicial Panels" into the
Statute of the Court of Justice with a new Article 65 creating a legal basis to annex
provisions to the Statute of the Court Justice relating to judicial panels created under
Article  225a  of  the  EC  Treaty.  This  provision  of  a  general  character  and  applies
equally to any future judicial panel to be established. According to Article 225a(6) of
the  EC  Treaty,  unless  otherwise  provided  for  in  the  decisions  establishing  them,
judicial panels apply the provisions of the Statute of the Court of Justice. While the
majority of the provisions of the Statute of the Court of Justice will also be suitable
to apply to judicial panels, some special provisions are necessary in order to take the
individual  circumstances  of  the  judicial  panel  concerned  into  consideration,
e.g. concerning the organisation and composition of the panel and special procedural
elements. Therefore, for each judicial panel established in the future, a corresponding
annex will be created to deal with the Statute provisions to be applied by the judicial
panel  concerned.  Consequently  the  new  Article  65  of  the  Statute  of  the  Court  of
Justice  consequently  lays  down  that  the  provisions  relating  to  the  jurisdiction,  the
composition, and the organisation of judicial panels, and the procedure before them
are to be set out in an annex to the Statute of the Court of Justice.

12

 
Article 4 – Annex to the Protocol on the Statute of the Court of Justice

On the basis of the new Article 65 of the Statute of the Court of Justice which will be
inserted by virtue of Article 3 of the present Decision as explained above, Article 4
creates an Annex II to the Statute of the Court of Justice entitled "The Community
Patent Court" with the following elements:

Article  1  of  Annex  II  lays  down  the  jurisdiction  of  the  Community  Patent  Court.
Articles  2  and  3  of  Annex  II  concern  the  appointment  of  judges,  Article  4  the
election of the president of the Community Patent Court.

Article 5 of Annex II identifies the provisions from Title I and II of the Statute which
apply to the Community Patent Court followed by special provisions relating to the
organisation of the Community Patent Court (Articles 6 to 9 of Annex II). Article 10
of Annex II prescribes that the procedure before the Community Patent Court shall
be  governed  by  Title  III  of  the  Statute  followed  by  a  number  of  special  provisions
that are necessary in view of particular requirements of the special type of litigation
before it (Articles 11 to 25 of Annex II). Articles 47 ff and 53 ff. of Title IV of the
Statute of the Court of Justice contain a parallel structure with regard to the Court of
First Instance.

Finally,  Annex  II  contains  special  provisions  on  the  appeal  to  the  Court  of  First
Instance (Articles 26 to 28) and a legal basis to lay down in the Rules of Procedure
necessary provisions for applying and, where required, supplementing it.

Article 1 of Annex II to the Statute – Jurisdiction

Pursuant  to  Article  229a  of  the  EC  Treaty,  exclusive  jurisdiction  relating  to  the
Community  patent  is  conferred  on  the  Court  of  Justice  by  a  separate  Council
Decision allowing the Court of Justice to assume jurisdictional responsibilities in this
field.

The  present  Article  attributes  within  the  Court  of  Justice  the  exclusive  jurisdiction
for these disputes relating to the application of Council regulation (EC) No…/… of
…  on  the  Community  patent  and  Council  regulation  (EC)  No…/…  of  …  on  the
Community supplementary  protection certificate to be exercised at  first instance by
the  Community  Patent  Court.  The  jurisdiction  of  the  Community  Patent  Court  is
determined  by  way  of  reference  to  the  Council  Decision  conferring  jurisdiction  on
the Court of Justice relating to the Community patent for which the Commission has
put  forward  a  separate  proposal  for  a  Council  Decision.  The  Community  Patent
Court would thus have jurisdiction for the subject matter laid down in Article 1 of the
Commission  proposal  for  such  a  Council  Decision,  namely  for  disputes  relating  to
the  infringement  or  the  validity  of  a  Community  patent  and  a  Community
supplementary protection certificate, the use of the invention after the publication of
the  Community  patent  application,  the  right  based  on  prior  use  of  the  invention,
interim and evidence-protection measures in the subject matters conferred, damages
and compensation incurred in the situations referred to above and orders 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.

In a transitional period before the conferral of jurisdiction on the Court Justice takes
effect, disputes will be decided by national courts in accordance with the provisions

13

 
of  the  Community  patent  regulation.  As  provided  for  in  Article  2  of  the  proposed
Council  Decision  conferring  jurisdiction  on  the  Court  of  Justice  relating  to  the
Community patent, the Community Patent Court will not have jurisdiction for those
disputes  of  which  national  courts  have  already  been  seised  during  that  transitional
period, since the conferral of jurisdiction does not extend to those disputes.

Article 2 of Annex II to the Statute – Number, appointment and term of office of
judges of the Community Patent Court

Article 2 contains provisions relating to the judges of the Community Patent Court.

Paragraph 1 lays down the number of members of the Community Patent Court and
their term of office. As to the size of the Community Patent Court, a total of seven
judges  including  the  president  is  proposed.  The  Community  Patent  Court  will,
according to Article 8 of Annex II to the Statute of the Court of Justice normally sit
in chambers with three judges. Six judges would allow formation of two chambers.
The seventh member would seem appropriate to give special support to the chamber
presided over by the president of the Community Patent Court who will also have to
perform other tasks relating for example to the administration and representation of
the  Community  Patent  Court.  In  addition,  a  complement  of  seven  judges  would
enable all to sit and issue decisions together in accordance with Article 17(1) of the
Statute of the Court of Justice which provides that only an uneven number of judges
may sit. This number would also guarantee a smoothly operating jurisdiction in case
of leave or sickness of judges and in general seems to be the number appropriate to
the tasks to be carried out and the workload to be expected in the initial phase of the
Community  Patent  Court.  The  judges  will,  according  to  Article  225a(5)  of  the
EC Treaty, have to establish the Rules of Procedure of the Community Patent Court;
a common practice under the adopted Rules of Procedure will have to be developed,
and  necessary  adaptations  in  the  light  of  experience  be  considered.  The  expected
caseload  in  the  initial  phase  is  estimated  for  the  first  three  consecutive  years  at
around 50, 100 and 150 newly lodged cases which would mean a case load of 25, 50
and  75  new  cases  per  year  per  chamber.  This  assumption  is  based  on  an  expected
number of 100 000 patents granted by the European Patent office per year of which
around 50 000 would designate the Community and an annual litigation rate of 1 in
1 000 patents in force. When assessing the caseload that can reasonably be handled it
must also be borne in mind that the Community Patent Court will have to develop a
common  jurisprudence  necessitating  in  particular  in  the  initial  phase  a  number  of
fundamental decisions with corresponding need for intensive discussions.

As a term of office, a six year term with the possibility of renewal as is the case for
the Court of Justice in Article 223(1) and (4) of the EC Treaty and for the Court of
First  Instance  in  Article  224(2)  of  the  EC  Treaty  also  seems  appropriate  for  the
Community  Patent  Court.  The  membership  will  be  partially  renewed  every  three
years as foreseen for the Court of First Instance in Article 224(2) of the EC Treaty.
Such a partial renewal of membership will ensure that the expertise built up  by the
court can be passed on from experienced judges to newly appointed judges and thus
contribute to a stable jurisprudence and legal certainty. In order to establish this cycle
where the Community Patent Court is only partially re-staffed at any one time, some
members will  need to have a  shorter initial term of office. To that  end,  the  present
decision contains in  its Article 7(2)  a transitory provision whereby the  president  of
the  Council  is  to  proceed  to  choose  by  lot  the  judges  whose  terms  of  office  are  to
expire at the end of the first three years.

14

 
Paragraph  2  provides  that  judges  are  appointed  from  candidates  presented  by  the
Member  States,  and  addresses  the  particular  qualifications  of  members  of  the
Community  Patent  Court.  The  EC  Treaty  itself  prescribes  in  Article  225a(4)  that
eligible members of the judicial panels are "persons whose independence is beyond
doubt  and  who  possess  the  ability  required  for  appointment  to  judicial  office".
Paragraph  2  specifies  this  general  provision  which  is  meant  to  address  all  the
different  kinds  of  possible  panels  by  laying  down  specific  requirements  relating  to
the  necessary  professional  profile  of  possible  candidates  for  judges  of  the
Community Patent Court. As agreed by the Council in its common political approach
of 3 March 2003, the members must be appointed on the basis of their expertise from
candidates having an established high level of legal expertise in patent law. This is
particularly  important  because  the  special  nature  of  patent  law  requires  much
experience.  The  experience  of  the  judges  in  this  field  will  be  crucial  for  the
acceptance  of  the  system  by  users  by  guaranteeing  efficient  proceedings  and  high
quality decisions. The judges will be appointed after consultation of a committee to
be set up in accordance with Article 3.

Article 3 of Annex II to the Statute – Advisory committee

Paragraph 1 provides that the judges will be appointed following consultation of an
advisory committee to be set up for this purpose which is to give an opinion on the
adequateness of the profile of candidates for membership of the Community Patent
Court.  The  Council  will  be  aided  by  the  Committee's  opinion  in  the  appointment
process  in  finding  the  best  suited  candidates  for  membership  of  the  Community
Patent  Court.  In  the  light  of  the  specific  requirements  to  be  observed,  the  advisory
committee  may  also  provide  a  list  of  those  candidates  who  possess  the  most
appropriate high level of legal experience. In such a case the list must include twice
the number of candidates as the number of judges to be appointed, in order to guard
against  any  risk  of  a  predetermination  of  the  decision  of  the  Council  by  the
committee's opinion.

Paragraph  2  determines  that  the  advisory  committee  shall  be  composed  of  seven
members chosen from among former members of the Court of Justice, the Court of
First  Instance,  the  Community  Patent  Court  or  lawyers  of  recognised  competence.
The  appointment  of  members  of  the  committee  and  its  operating  rules  shall  be
decided  by  the  Council,  acting  by  a  qualified  majority,  on  a  proposal  from  the
president of the Court of Justice.

Article 4 of Annex II to the Statute - President of the Community Patent Court

This  Article  concerns  the  president  of  the  Community  Patent  Court  who  is  to  be
elected  by  the  judges  from  among  their  number  for  a  term  of  three  years  with  the
possibility  of  re-election.  The  same  principles  are  applied  to  the  Court  of  First
Instance  in  Article  224(3)  of  the  EC  Treaty.  However,  the  transitory  provision
contained in Article 7(1) of the present Decision provides that the first president of
the  Community  Patent  Court  exceptionally  appointed  in  the  same  manner  as  its
members, unless the Council decides that also the first president shall be elected by
the judges. This approach had also been followed for the Court  of  First  Instance in
Article 11(1) of Council Decision 88/591/ECSC, EEC, Euratom of 24 October 1988
establishing the Court of First Instance.

15

 
Article  5  of  Annex  II  to  the  Statute  –  Applicability  of  provisions from  Titles  I
and II of the Statute to the Community Patent Court and its judges

In the first sentence, this Article contains a reference to those Statute provisions from
Titles I and II of the Statute that shall also apply to the Community Patent Court. A
corresponding provision for the Court of First Instance is contained in Article 47(1)
of the Statute.

For the Community Patent Court are declared applicable from Title I of the Statute:
Article  2  (oath),  Article  3  (immunity),  Article  4  (other  occupation),  Article  5
(resignation), Article 6 (deprivation of office) and Article 7 (term of office in case of
replacement).  The  present  Article  does  not  contain  a  reference  to  Article  8  of  the
Statute  relating  to  the  Advocate  General  since  a  participation  of  the  Advocate
General in proceedings before the Community Patent Court is not foreseen.

From  Title  II  are  declared  applicable:  Article  13  (assistant  rapporteur),  Article  14
(requirement of residence), Article 15 (judicial vacations), the first, second and fifth
paragraphs  of  Article  17  (composition  and  quorum)  and  Article  18  (challenge  for
bias). The present Article does not contain a reference to Article 9 (number of judges
to  be  replaced),  Article  12  (staff  attached  to  the  Court  of  Justice),  Article  16
(chambers  of  the  Court  of  Justice),  the  third  and  fourth  paragraphs  of  Article  17
(quorum for grand chamber and full Court). These provisions relate to specificities of
the Court of Justice and should not apply to the Community Patent Court.

In  the  second  sentence,  the  present  Article  specifies  that  also  in  relation  to  the
Community Patent Court the oath of the judges is taken before the Court of Justice
who is also attributed the competence to take decisions concerning the immunity and
other occupations of judges and their deprivation of office.

Article 6 of Annex II to the Statute – Registrar

The first sentence provides for a registrar of the Community Patent Court. Although
the  Community  Patent  Court  is  attached  to  the  Court  of  First  Instance,  a  separate
registrar  seems  appropriate  since  the  Community  Patent  Court  will  deal  with  an
entirely different type of litigation and also the expected caseload will justify such a
measure.  A  legal basis  for the  appointment of the registrar  and  the  rules  governing
his  service  would  seem  necessary  in  the  Statute.  Unlike  for  the  Court  of  Justice
(Article 223(5) of the EC Treaty) and the Court of First Instance  (Article 224(4) of
the EC Treaty) no such provision is included  in the EC  Treaty  for  the panels  to be
created under Article 225a.

The second sentence declares the provisions of the Statute relating to the registrar of
the Court of Justice applicable to the registrar of the Community Patent Court as is
the case for the registrar of the Court of First Instance in Article 47(2) of the Statute.
The provisions concerned are Article 3(4)  (immunities), Article 10 (oath and duties
of the registrar), Article 11 (replacement of the registrar) and Article 14 (requirement
of residence).

Article 7 of Annex II to the Statute – Assistant rapporteurs

This Article deals with the question in which way technical expertise is incorporated
on  the  side  of  the  Community  Patent  Court.  An  appropriate  incorporation  of

16

 
technical  expertise  appears  to  be  of  particular  importance  for  the  efficiency  and
quality  of  the  proceedings  before  the  Community  Patent  Court.  The  judges  of  the
Community  Patent  Court  are  confronted  with  cases  involving  highly  complicated
technologies from a wide range of technical fields. In this context, technical expertise
can  be  considered  essential  in  helping  the  judges  to  focus  from  the  start  of
proceedings  on  the  essential  technical  questions  involved.  The  objective  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.  The
question  has  been  subject  to  thorough  discussions  in  the  Council  which  reached
agreement in its common political approach of 3 March 2003 that technical experts
should  assist  the  judges  throughout  the  handling  of  the  case.  The  present  Article
builds on this approach.

Paragraph  1  provides  for  technical  experts  of  the  Community  Patent  Court  and
specifies the framework within which they assume their function. Technical experts
will  assist  the  judges  throughout  the  handling  of  the  case  as  assistant  rapporteurs.
Article  13  of  the  Statute  is  applied  to  the  assistant  rapporteurs  of  the  Community
Patent Court. They are consequently appointed by the Council, acting unanimously,
on a  proposal from the Court  of Justice.  They shall be  chosen from persons  whose
independence is beyond doubt and who possess the necessary legal qualifications. In
this  context,  a  thorough  experience  in  patent  law  would  seem  necessary  since  the
assistant  rapporteur  must  have  a  good  understanding  of  what  technical  aspects  are
relevant  for  a  legally  sound  decision  of  the  Community  Patent  Court.  Assistant
rapporteurs  shall  take  an  oath  before  the  Court  of  Justice  to  perform  their  duties
impartially and conscientiously and to preserve the secrecy of deliberations.

Paragraph 2 adds on to these elements providing that assistant rapporteurs must have
a high level of expertise in the relevant technical field. The proposal does not foresee
a fixed number of assistant rapporteurs but prefers to leave this question to be solved
in the light of experience to be gathered. In order to reach the objective as outlined
above,  which  is  to  provide  the  bench  with  technical  expertise  of  a  general  kind,  a
limited  number  of  assistant  rapporteurs  covering  the  basic  divisions  of  technology
such as one for each of the following seven fields would seem appropriate: inorganic
chemistry  and  materials  science,  organic  and  polymer  chemistry,  biochemistry  and
biotechnology,  general  physics,  mechanical  engineering, 
information  and
communication  technology,  electrical  engineering.  Assistant  rapporteurs  shall  like
the judges be appointed for a term of six years with the possibility of reappointment.

Paragraph 3 contains a provision specifying the functions of the assistant rapporteurs
within  the  Community  Patent  Court.  As  they  shall  assist  the  judges  throughout  the
handling of the case, their participation is foreseen in the preparation, the hearing and
the deliberation of cases. The details concerning their participation shall be laid down
in the Rules of Procedure. Assistant rapporteurs shall have the right to ask questions
to  the  parties  to  clarify  relevant  technical  questions.  They  shall  take  part  in  the
deliberation of the judges but do not have a right to vote.

Article  8  of  Annex  II  to  the  Statute  –  Composition  of  the  chambers  and
assignment of cases

Paragraph 1 provides that the Community Patent Court as a rule shall sit in chambers
composed  of  three  judges.  This  number  also  retained  in  the  Council's  common

17

 
political  approach  of  3  March  2003  seems  to  be  most  appropriate  with  a  view  to
litigation  to  be  handled  striking  the  right  balance  between  thoroughness  and
efficiency of case handling for the average cases.

Paragraph  2  addresses  situations  where  there  might  be  a  need  to  deviate  from  the
standard composition of a chamber of three judges. An enlarged configuration might
be appropriate, for instance, in cases that involve fundamental points of law or where
chambers take a different view on a legal matter. A reduced configuration 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  including  provisions  on  the  quorum  since  the  standard
provisions  of  Article  17(3)  (grand  chamber)  and  Article  17(4)  (full  court)  of  the
Statute do not apply to the Community Patent Court.

Paragraph 3 provides that the president of the Community Patent Court shall always
preside ex officio over one of the chambers of the Community Patent Court. He shall
also  preside  where  the  Community  Patent  Court  in  accordance  with  its  Rules  of
Procedure sits in an enlarged composition. The presidents of the remaining chambers
shall be elected by the judges from among their number for a term of three years with
the possibility of re-election.

Paragraph  4  specifies  that  the  composition  of  the  chambers  and  the  assignment  of
cases to the chambers is governed by the Rules of Procedure. The composition of the
chambers  and  the  assignment  of  cases  will  thus  be  predetermined  in  the  Rules  of
Procedure  but  at  the  same  time  an  appropriate  degree  of  flexibility  is  left  to  adapt
such rules in the light of efficient case handling. It opens, for example, the possibility
of largely attributing the cases to the chambers on the basis of the field of technology
concerned  enhancing  the  expertise  of  the  individual  chamber  by  building  up
experience in the technical fields concerned.

Article 9 of Annex II to the Statute – Agreement on services of support staff

According to Article 12 of the Statute, officials and other servants are attached to the
Court of Justice. They are responsible to the registrar  of the  Court of Justice under
the  authority  of  the  president  of  the  Court  of  Justice.  The  conditions  under  which
these officials and other servants render their services to the Court of First Instance
are according to Article 52 of the Statute determined by common accord between the
president of the Court of Justice and the president of the Court of First Instance.

The  present  Article  lays  down  the  framework  under  which  officials  and  other
servants  attached  to  the  Court  of  Justice  will  render  services  to  the  Community
Patent Court to enable it to function. This will be determined between the President
of  the  Court  of  Justice  or,  where  appropriate,  the  President  of  the  Court  of  First
Instance by common accord with the President of the Community Patent Court. As a
rule, such an agreement will be reached between the president of the Court of Justice
and  the  president  of  the  Community  Patent  Court.  However,  there  might  also  be
situations  where  the  common  accord  between  the  president  of  the  Court  of  Justice
and  the  president  of  the  Court  of  First  Instance  has  already  taken  account  of  the
needs  of  the  Community  Patent  Court  so  that  in  such  a  case  the  president  of  the
Court  of  First  Instance  and  the  president  of  the  Community  Patent  Court  are  in  a
position  to  agree  on  appropriate  terms  for  the  Community  Patent  Court.  Finally,
certain officials and other servants who directly support the president, the judges or

18

 
the registrar such as legal secretaries or officials of the registry shall be responsible
to the registrar of the Community Patent Court under the authority of the president of
the  Community  Patent  Court.  There  is  a  corresponding  provision  for  the  Court  of
First Instance in Article 52 of the Statute.

Article 10 of Annex II to the Statute – Applicability of provisions from Title III
of the Statute to the procedure before the Community Patent Court

Paragraph  1  of  this  Article  declares  Title  III  of  the  Statute  applicable  for  the
procedure  before  the  Community  Patent  Court  as  is  the  case  for  the  Court  of  First
Instance in Article 47 of the Statute. The majority of procedural provisions contained
in Title III of the Statute concerning basic principles of procedure before the Court of
Justice can also apply to the Community Patent Court. They can be considered a set
of  common  principles  of  Community  court  procedure.  However,  where  necessary
with  a  view  to  the  special  type  of  litigation  before  the  Community  Patent  Court
changes  have  to  be  made.  The  Community  Patent  Court  will  hear  private  party
Community patent litigation. It will not be concerned with the review of the legality
of Community acts but decide disputes between private parties. As a result, not all of
the  provisions  contained  in  Title  III  of  the  Statute  can  apply  in  their  present  form.
Hence,  certain  provisions  of  Title  III  of  the  Statute  which  are  not  relevant  to  the
procedure before the Community Patent Court are disapplied (Articles 21(2), 22, 23,
40(1) and (3), 42, 43 of the Statute). Where the special nature of litigation before the
Community Patent Court makes adaptations to the existing provisions of Title III of
the  Statute  necessary,  this  has  been  done  in  Articles  11  to  25  of  Annex  II  to  the
Statute.

The provisions from Title III of the Statute apply to the Community Patent Court as
follows:

Article 19 of the Statute on legal representation is applied to the Community Patent
Court with the amendments relating to the role of European patent attorneys which
are proposed in Article 11 of Annex II to the Statute and who should have a right to
speak before the Community Patent Court.

Article  20  of  the  Statute  laying  down  the  principal  structure  of  the  procedure
consisting of two parts, a written and an oral part, its provisions on communications
to  the  parties  and  the  contents  of  the  oral  procedure  are  applied  to  the  Community
Patent Court with the proposed amendments contained in an Article 12 of Annex II
to the Statute providing e.g. for exceptional cases to dispense with the oral procedure
and allowing for proceedings to be conducted in electronic form.

Article 21(1) of the Statute concerns the necessary elements of written applications.
Article  21(2)  of  the  Statute  concerns  the  annulment  of  measures  issued  by  a
Community  institution.  The  Community  Patent  Court,  however,  will  not  be
concerned with the review of the legality of Community acts and it is therefore not
necessary for this power to apply to the Community Patent Court.

Articles 22 and 23 of the Statute  concern appeals against EAEC  arbitration  awards
and  preliminary  rulings.  Since  neither  of  these  situations  can  arise  before  the
Community Patent Court, these provisions should not apply to the Community Patent
Court.

19

 
Paragraph 1 of Article 24 of the Statute places an obligation of the parties to produce
documents and supply information considered desirable by the Court. This obligation
seems  too  wide  for  private  party  litigation  and  consequently  should  apply  to  the
Community Patent Court in a narrower sense as proposed in Article 13 of Annex II
to the Statute. Paragraph 2 of Article 24 of the Statute places a general obligation on
Member States and the institutions to provide necessary information.

Articles  25  to  30  of  the  Statute  relate  to  the  taking  of  evidence  by  witnesses  and
expert opinions, and should apply to the Community Patent Court: Article 25 (court's
choice of expert), Article 26 (hearing of witnesses), Article 27 (powers with respect
to  defaulting  witnesses),  Article  28  (oath  of  witnesses  and  experts),  Article  29
(hearing of witness or expert by judicial authority of residence), Article 30 (violation
of oath).

The elements of the procedure contained in Articles 31 to 38 of the Statute can also
apply  to  the  Community  Patent  Court:  Article  31  (principle  of  public  hearings),
Article  32  (examination  of  experts,  witnesses  and  parties),  Article  33  (minutes  of
hearings),  Article  34  (establishment  of  case 
list),  Article  35  (secrecy  of
deliberations), Article 36 (contents of judgments), Article 37  (signing of judgments
and reading of judgment in open court) and Article 38 (adjudication upon costs).

Article 39 of the Statute concerns the order of interim measures in a special summary
procedure.  This  Article  should  apply  to  the  Community  Patent  Court  with  the
adjustments  specified  in  Article  15  of  Annex  II  to  the  Statute  proposing  that
Article 39  would  extend  to  evidence-protection  measures  and  that  the  Rules  of
Procedure shall determine who is competent to make orders.

Article  40  of  the  Statute  deals  with  the  intervention  of  third  parties  in  proceedings
supporting the form and order sought by one of the parties. Such intervention should
also be possible before the Community Patent Court. However, Article 40(1), (3) of
the  Statute  confers  a  special  right  of  intervention  for  the  institutions  of  the
Communities,  the  Member  States  and  other  States  which  are  parties  to  the
Agreement on the European Economic Area and the EFTA Surveillance Authority to
intervene in proceedings without the general requirement of the establishment of an
interest  in  the  result  of  the  case  as  laid  in  Article  40(2)  of  the  Statute.  This
unconditional  right  of  intervention  is  inappropriately  broad  to  apply  to  litigation
before the Community Patent Court which concerns day  to  day disputes  relating to
rights of private parties.

Article  41  of  the  Statute  contains  provisions  on  a  judgment  by  default  and  should
apply to the Community Patent Court together with further specifications laid down
in Article 16 of Annex II to the Statute.

Article  42  of  the  Statute  provides  for  the  possibility  of  third  parties  to  contest  a
judgment prejudicial to their rights where they had not been heard. Such a provision
is  incompatible  with  the  principle  of  legal  certainty  in  private  party  litigation  and
should  thus  not  apply  to  the  Community  Patent  Court.  Once  a  judgment  of  the
Community Patent Court becomes final and can no longer be subject to appeal, there
should be no further possibility to reopen the case except in the very limited situation
of a revision under Article 44 of the Statute and Article 17 of its Annex II in case of a
fundamental procedural defect or a  criminal offence.  In all other cases parties must
be able to rely on the terms of a final judgment. Moreover, a situation envisaged by

20

 
Article  42  hardly  arises  in  private  party  litigation  where  judgments  only  produce
their effects upon the parties of the case which are bound by the judgment. Situations
where  third  parties  might  be  indirectly  affected  only  arise  where  there  are  rights
concerned with a patent which has been declared invalid. For these cases, the Rules
of  Procedure  will  need  to  make  appropriate  provisions  ensuring  that,  where
necessary,  interests  of  third  parties  are  already  taken  into  account  during  the
proceedings  leading  up  to  the  judgment.  These  could  provide,  for  example,  that  in
case of an exclusive licence, both the right holder and the licensee would need to be
sued together whereas in the case of a simple contractual licence the consequences of
a declaration of invalidity pronounced in proceedings against the right holder might
be left to the legal relationship between right holder and licensee.

Article 43  of the  Statute  providing  for  special  proceedings  in  which  the  scope  of  a
judgment can be subject to interpretation does not seem to be appropriate for private
patent litigation and should consequently not apply to the Community Patent Court.
The claims granted by the Community Patent Court must be clear and of such nature
that  they  are  directly  enforceable  without  the  need  of  further  interpretation  by  the
Community  Patent  Court.  Moreover,  the  provision  could  be  misunderstood  as
reserving any kind of interpretation of the judgment to the Community Patent Court.
However,  in  the  enforcement  stage  which  is  according  to  Articles  244,  256  of  the
EC Treaty provided for by national law, the competent  authority will need to apply
the terms of the judgment and decide on the question if a particular embodiment of
an invention falls within the scope of an injunction not to infringe a patent. Finally, if
systematically  used  by  the  defendant  in  the  course  of  enforcement  measures,  this
provision applied to the Community Patent Court would carry the risk of paralysis of
Community patent litigation.

Article  44  of  the  Statute  allowing  for  a  revision  of  a  judgment  on  the  grounds  of
discovery of new facts, which were unknown at the time judgment was given, seems
incompatible  with  the  principle  of  legal  security  in  private  party  litigation.
Consequently, adaptations to this provision are proposed in Article 17 of Annex II to
the  Statute  limiting  a  revision  to  cases  of  a  fundamental  procedural  defect  or  a
criminal offence in the proceedings that led to the judgment.

Finally,  Article  45  of  the  Statute  on  time  limits  and  Article  46  of  the  Statute  on  a
liability  bar  against  the  Communities  shall  apply  before  the  Community  Patent
Court.

Paragraph 2 of the present Article provides in its first sentence that further and more
detailed provisions on the procedure before the Community Patent Court shall be laid
down  in  the  Rules  of  Procedure  which,  according  to  Article  225a(5)  of  the
EC Treaty,  are  established  by  the  Community  Patent  Court  in  agreement  with  the
Court of Justice and subject to approval by the Council. The second sentence allows
the Rules of Procedure to derogate from Article 40 of the Statute on intervention in
order  to  take  account  of  the  special  features  of  private  party  Community  patent
litigation. A  corresponding provision  is  contained for the Court of First  Instance in
Article 53(2) of the Statute.

Article 11 of Annex II to the Statute – European Patent Attorney

This Article contains adaptations to Article 19 of the Statute on legal representation
before the Court for the purpose of proceedings before the Community Patent Court.

21

 
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  side  of  the
Community Patent Court contributed by assistant rapporteurs but also on the side of
the parties.

The first and second paragraphs recognise this important role of technical expertise
for  the  parties  giving  European  Patent  Attorneys  the  right  of  audience  before  the
Community Patent Court. A reference to the list maintained by the European Patent
Office  for  the  purpose  of  legal  representation  before  it  will  ensure  appropriate  and
uniform  standards  for  qualifying  persons  which  must  be  met  for  efficient
proceedings.

The third paragraph  applies Article 19(5) and  (6) of the  Statute to  European Patent
Attorneys. Where a European Patent Attorney appears before the Community Patent
Court, he will enjoy the necessary rights and immunities and the Community Patent
Court will have the powers normally accorded to courts of law under the conditions
laid down in the Rules of Procedure.

Article 12 of Annex II to the Statute - Oral and written procedure

This Article adapts Article 20 of the Statute concerning the written and oral part of
the procedure to proceedings before the Community Patent Court.

It  is  proposed  to  rephrase  Article  20(4)  relating  to  the  conduct  of  the  oral  hearing.
The obligation of the "reading  of a  report" by the judge rapporteur seems too rigid
for daily trial court proceedings and should be replaced by a more flexible wording
referring to the "presentation of the main features of the case". Since the wording of
Article 20(4) of the Statute does not allow the hearing of a European Patent Attorney
as  foreseen  before  the  Community  Patent  Court  by  the  proposed  Article  11  of
Annex II  to  the  Statute,  the  concerned  wording  should  be  replaced  by  the  more
general wording "hearing of the parties". The question of who actually addresses the
court  does  not  have  to  be  enumerated  as  is  currently  done  in  Article  20(4)  of  the
Statute but would be a question of proper legal representation. Finally the hearing of
witnesses  and  experts  is  replaced  by  the  more  general  wording  of  "examination  of
evidence".

Article 20(5) of the Statute which deals with the Advocate General should not apply
to  the  Community  Patent  Court  as  the  Advocate  General  will  not  participate  in
proceedings. Instead a provision is proposed that would allow in appropriate cases to
pass  to  a  written  procedure.  Article  20(1)  of  the  Statute  lays  down  the  important
principle that cases are only decided upon after an oral hearing. For certain cases, an
oral hearing might not be appropriate e.g. in simple cases with uncontested facts or
where the defendant accepts the plaintiff's claims. For such cases there should be the
possibility to deviate from the principle of an oral hearing and exceptionally decide a
case in a written procedure. Therefore, the Community Patent Court should have the
possibility to dispense with the oral procedure  after having heard the parties and in
accordance with the Rules of Procedure.

Finally an enabling clause should be introduced which allows for the employment of
technical  means  in  the  written  and  oral  procedure  before  the  Community  Patent
Court. 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

22

 
the procedure which can be conducted by electronic means and the conditions for so
doing  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 constantly developing and the Rules of Procedure would be best suited
to  keep  track  of  the  widening  technological  possibilities  by  introducing  necessary
changes into the procedure.

Article 13 of Annex II to the Statute – Production of evidence

Paragraph  1  of  Article  24  of  the  Statute  contains  an  obligation  of  the  parties  to
produce documents and supply information considered desirable by the Court. This
obligation seems too wide for private party litigation and consequently should apply
to the Community Patent Court in a narrower sense. In principle it is the obligation
of  each  party  in  private  party  litigation  to  bring  forward  the  necessary  evidence  to
prove  its  contested  claim.  However,  under  special  circumstance  it  would  seem
justified  to  oblige  the  opposing  party  to  produce  evidence  in  favour  of  the  other
party. A reasonable balance between the interests of parties would seem to be struck
as  recognised  by  Article  43(1)  of  the  Agreement  on  Trade-Related  Aspects  of
Intellectual Property Rights (TRIPS Agreement) of 15 April 1994 where a party has
presented  reasonably  available  evidence  to  support  its  claims,  and  has,  in
substantiating those claims cited evidence under the control of the opposing party. In
such a case the Community Patent Court may order that evidence be produced by the
opposing party, subject to the protection of confidential information.

Article  14  of  Annex  II  to  the  Statute  –  Interim  and  evidence-protection
measures

This Article contains special provisions on interim and evidence protection measures.

Paragraph  1  concerns  the  order  of  interim  measures.  Article  243  of  the  EC  Treaty
provides  that  the  Court  may  in  cases  before  it  prescribe  any  necessary  interim
measures.  This  provision  which  is  also  applied  to  the  Community  Patent  Court  by
Article 2  of this Decision does not foresee  the  ordering of interim measures  before
main proceedings are pending. However, a need for such a possibility exists in patent
litigation  where  for  example  a  preliminary  injunction  to  stop  an  infringement  is
necessary even before the main proceedings have commenced. Also Article 50(6) of
the  TRIPS  Agreement  presupposes  the  possibility  to  prescribe  interim  measures  in
cases where main proceedings have not yet been brought. Consequently the present
Article makes use of the possibility foreseen in Article 225a(6) of the EC Treaty to
derogate  for  judicial  panels  from  the  EC  Treaty  provisions  relating  to  the  Court  of
Justice.  It  is  proposed  that  interim  measures  shall  not  be  conditional  upon  main
proceedings having already been instituted before the Community Patent Court.

Paragraph  2  provides  for  evidence-protection  measures  allowing  an  order  to
authorize  a  detailed  description  or  the  physical  seizure  of  infringing  goods  and
related documents in the event of actual or imminent infringement. The measure also
known in patent law as saisie-contrefaçon supplements the obligation of the parties
to  produce  evidence  as  laid  down  in  Article  13  of  Annex  II  to  the  Statute  and  has
proven to be a valuable instrument for the enforcement of intellectual property rights
and has therefore also been taken up in Article 8 of the Commission proposal for a
directive  on  measures  and  procedures  to  ensure  the  enforcement  of  intellectual
property rights of 30 January 2003 [COM (2003) 46 final].

23

 
Paragraph  3  provides  for  a  claim  for  adequate  compensation  in  case  of  interim
measures  or  evidence-protection  measures  where  measures  are  revoked.  Interim
measures and evidence protection measures can have a significant economic impact
on the party against whom they are ordered. It must also be born in mind that such
orders are made in a summary procedure under Article 39 of the Statute, Article 15
of  its  Annex  II  at  a  stage  where  the  judge  does  not  yet  have  all  the  necessary
elements  of  fact  and  evidence  to  give  final  judgment.  Therefore  an  appropriate
balance between the parties' legitimate interests requires that the applicant obtaining
an interim or evidence-protection measure would have the obligation to compensate
the opposing party for any injury caused where a measure is not upheld. Such a claim
is also provided for in Article 50(7) of the  TRIPS  Agreement  in  relation  to interim
measures and in Articles 8(3) and 10(5) of the Commission proposal for a directive
on measures and procedures to ensure the enforcement of intellectual property rights
of 30 January 2003 for both measures concerned.

Article 15 of Annex II to the Statute – Special orders

This  Article  contains  adjustments  to  Article  39  of  the  Statute  on  interim  measures
and  measures  relating  to  the  suspension  of  enforcement.  Article  39  of  the  Statute
provides  a  basis  for  a  summary  procedure  for  theses  cases  to  be  laid  down  in  the
Rules  of  Procedure  which  may  differ  from  the  rules  laid  down  in  the  Statute.  This
provision  takes  account  of  the  special  situation  and  urgency  of  the  measures
concerned  justifying,  where  appropriate,  deviating  from  the  rules  governing  main
proceedings.  For  the  purpose  of  proceedings  before  the  Community  Patent  Court,
evidence-protection  measures,  provided  for  under  Article  14  of  Annex  II  to  the
Statute should, with a view to their nature and in particular their urgency, qualify for
those special measures to be ordered in a summary procedure.

A second amendment  for  the  purpose  of proceedings before the Community  Patent
Court  is  made  with  a  view  to  the  person  entitled  to  make  the  orders  concerned.
Article 39 of the Statute attributes this competence to the president of the Court. This
approach  does  not  seem  to  leave  the  appropriate  degree  of  flexibility  for  patent
litigation before the Community Patent Court. The question whether the enforcement
of a judgment should be suspended is closely linked to the individual case and might
consequently be handled more efficiently by the chamber that made the judgment or
one  of  its  judges.  Interim  and  evidence-protection  measures  will  also  be  quite  a
common procedure in patent litigation and might therefore be better handled by the
chamber which is competent for main proceedings or one of its judges. To refer the
question who is competent to make orders in  a  summary procedure  to the  Rules of
Procedure leaves the necessary flexibility to provide for the most suitable solution.

Article 16 of Annex II to the Statute – Judgment by default

This  Article  makes  amendments  to  Article  41  of  the  Statute  on  a  judgment  by
default.

Article 41 of the Statute foresees the possibility  for a judgment  by  default  where  a
defending party, after having been duly summoned, fails to file written submissions
in defence. For private party patent litigation this should not be the only situation in
which the Community Patent Court should be able to decide the case by a judgment
by default. A judgment by default should also be possible where the defendant filed
submission  in  the  written  part  of  the  procedure  but  later,  after  having  duly  been

24

 
summoned, fails to appear at the oral hearing to defend himself. In this situation the
Community Patent Court should be able to make a judgment by default which would
end the case unless the defendant according to the second sentence of Article 41 of
the  Statute  lodges  an  objection  against  the  judgment  within  one  month  of  its
notification.  Finally,  a  judgment  by  default  should  also  be  possibly  against  the
plaintiff who, after having been duly summoned, fails to appear at the oral hearing.

Article 17 of Annex II to the Statute – Revision of a judgment

Article  44(1)  of  the  Statute  contains  a  provisions  on  the  revision  of  a  judgment
unsuitable for private party litigation before the Community Patent Court. Article 44
allows  the  revision  of  a  final  judgment  on  the  grounds  that  a  decisive  factor  was
unknown  at  the  time  the  judgment  was  given.  With  a  view  to  legal  certainty,  such
grounds are insufficient to reopen a  case  in private party litigation. Parties must  be
able to rely on a judgment of the Community Patent Court where that judgment is no
longer subject to an appeal even in a case where a decisive fact was unknown at the
time of judgment. The reopening of cases must remain very exceptional and should
be  limited  to  the  discovery  of  a  decisive  factor  which  was  unknown  to  the  party
claiming the revision and only on the grounds of a fundamental procedural defect or
an act which was held by a final court decision to constitute a criminal offence. Only
in these very exceptional cases is it justified that a final judgment may legitimately
be challenged.

Article 18 of Annex II to the Statute – Settlement

A  dispute  between  the  parties  may  not  only  be  resolved  by  a  final  decision  of  the
Community Patent Court in a judgment but also by a settlement between the parties
before the Community Patent Court. The present Article lays out the legal basis for
an in court settlement which can be concluded by the parties at any time in the course
of  proceedings.  Such  a  settlement  which  is  confirmed  by  the  Community  Patent
Court  has  two  important  effects:  it  will  terminate  the  proceedings  before  the
Community Patent Court and it serves as an enforceable title under Articles 244, 256
of the EC  Treaty  in case a party does not comply  with  the terms  of the settlement.
The  second  sentence  clarifies  that  a  settlement  cannot  affect  the  validity  of  a
Community  patent  which  is  exclusively  governed  by  law  and  not  subject  to  party
autonomy.  Of  course,  parties  remain  free  to  conclude  a  settlement  including  an
agreement to surrender or voluntarily limit the patent.

Article 19 of Annex II to the Statute – Wrongly addressed Community court

Article 54(1) of the Statute concerns the obligation of the registrars of the Court of
Justice  and  the  Court  of  First  Instance  to  forward  documents  addressed  to  one  of
them but accidentally lodged with the other. Article 54(2) of the Statute governs the
situation  that  either  the  Court  of  Justice  or  the  Court  of  First  Instance  is  seised
whereas the other court is the competent court. In this case the seised court can refer
the action with binding effect. Both provisions shall apply mutatis mutandis also in
relation to the Community Patent Court.

Article 54(3) of the Statute providing for the possibility to stay proceedings and wait
for  the  ruling  of  the  Court  of  Justice  necessitates  some  changes  and  is  separately
treated in the following Article 20 of Annex II to the Statute.

25

 
Article 20 of Annex II to the Statute – Stay of proceedings

This Article contains rules on the stay of proceedings.

Paragraph 1  covers like Article 54(3) of  the Statute  for the Court of  First  Instance,
the  situations in  which the  Community  Patent  Court  may,  after  hearing  the  parties,
stay  proceedings  in  order  to  wait  for  a  decision  of  another  Community  court.  The
Community Patent Court should have the possibility to stay proceedings where there
is a sufficient link between the questions at issue before it and those raised in a case
before the Court of Justice or the Court of First Instance. A stay of proceedings can
be considered where the Court of Justice is seised of a case raising the same issue of
interpretation either by way of a preliminary  ruling or in the context of a review in
accordance with Article 225(2) of the EC Treaty. A stay of proceedings could further
be considered where the Court of First Instance has to decide on the validity of the
same  Community  patent  that  is  also  subject  to  proceedings  before  the  Community
Patent Court. Under theses circumstance a stay of proceedings should be considered
with a view to a uniformity of jurisprudence and efficient case handling.

Paragraph  2  provides  for  the  possibility  of  the  Community  Patent  Court  to  stay
proceedings  where  it  is  seised  of  an  invalidity  action  and  where  opposition
proceedings  are  ongoing  before  the  European  Patent  Office.  No  automatic  stay  of
proceedings  is  foreseen.  It  is  left  to  the  Community  Patent  Court  to  decide  this
question in view of the circumstances of the individual case. The Community Patent
Court  may,  after  hearing  the  parties,  stay  proceedings  until  such  time  as  a  final
decision is issued on the opposition. Such a final decision, i.e. a decision that is no
longer  subject  to  further  legal  remedy  before  the  European  Patent  Office,  can  be
issued by the Opposition Division or where an appeal is filed by the Board of Appeal
of the European Patent Office.

Article 21 of Annex II to the Statute – Communication of decisions

This Article applies Article 55 of the Statute determining the decisions to be notified
and  their  recipients  with  slight  amendments  to  the  Community  Patent  Court.  The
registrar shall notify final decision, decisions disposing of substantive issues in part
only or disposing of a procedural issue concerning a plea of lack of  competence or
inadmissibility to all parties. Member States and the institutions of the Communities
which have neither intervened nor been a party to the case shall only be informally
sent the final decision  of the Community  Patent Court  for  information  purposes.  A
formal notification of the full range of decisions seems inadequate.

Article  22  of  Annex  II  to  the  Statute  –  Enforcement  of  decisions  of  the
Community Patent Court

This Article concerns the enforcement of decisions of the Community Patent Court.

Paragraph  1  lays  down  two  principles  governing  the  enforceability  of  decisions  of
the  Community  Patent  Court.  Decisions  of  the  Community  Patent  Court  should
always  be  enforceable  if  they  are  no  longer  subject  to  appeal.  Enforcement
commences  where  the  decision  of  the  Community  Patent  Court  is  res  judicata.
Consequently  the  appeal  against  a  decision  of  the  Community  Patent  Court
preventing  the  res  judicata  effect  should  have  a  suspensory  effect  for  the
enforceability of the decision. However, a party that has won a case at first instance

26

 
can have  a  legitimate interest to start enforcing the terms of a decision even where
the opposing party appeals the decision. To postpone any type of enforcement until
after  a  decision  on  the  appeal  might  dramatically  reduce  the  value  of  proceedings
before  the  Community  Patent  Court  since  the  effective  remedy  might  only  be
realised at a point in time where the party can no longer gather the economic benefit
that the proceedings were meant to ensure. Moreover, it has to be born in mind that
the  Community  Patent  Court  will  have  decided  the  case  after  a  thorough
examination.  On  the  other  hand  if  the  enforcement  is  allowed  prior  to  the  decision
reaching res judicata, safeguards are necessary to adequately protect a party against
whom the enforcement is directed from damages if the decision is not finally upheld
on  appeal.  The  present  Article  strikes  a  balance  between  these  interests  of  parties
involved  in  allowing  the  Community  Patent  Court  to  declare  its  decisions
enforceable while, if necessary, subjecting enforcement to the provision of security.
Where  the  Community  Patent  Court  subjects  the  enforcement  to  the  provision  of
security, the defendant who successfully appeals a first instance decision which was
enforced  against  him  can  always  recover  e.g.  a  paid  sum  if  necessary  from  the
security even  where the opposing party in  the  meantime has fallen  into insolvency.
The kinds of situations in which a security  would not  need to be provided must be
developed  by  the  Community  Patent  Court.  This  could  e.g.  be  the  case  for  a
judgment by default  where  the  party  against whom the decision is directed, though
duly  summoned,  has  not  entered  an  appearance  or  where  a  party  has  accepted  a
claim.

Paragraph  2  simplifies  the  mechanism  for  the  enforcement  of  decisions  of  the
Community  Patent  Court.  According  to  Article  225a(6)  of  the  EC  Treaty,  the
enforcement  of  the  decisions  of  the  Community  Patent  Court  is  governed  by
Articles 244, 256 of  the EC Treaty unless the  decision establishing the  Community
Patent Court provides otherwise. Under Article 256 of the EC Treaty, enforcement is
governed by the rules of civil procedure in force in the State in the territory of which
it is carried out. In order to be able to start such enforcement procedures, the national
authority  designated  for  this  purpose  by  the  Member  State  needs  to  append  to  the
decision an order for its enforcement. For doing so, the national authority is entitled
only to verify the authenticity of the decision. Even though the role of the  national
authority in this context is already limited to a formality check of the authenticity of
the decision to be enforced, this would seem to be neither necessary nor suitable for
the enforcement of decisions of the Community Patent Court. The Community Patent
Court  would  itself  be  best  placed  to  certify  the  authenticity  of  the  enforceable
decision.  A  special  procedure  to  obtain  an  order  of  enforcement  from  a  national
authority  would  unduly  prolong  enforcement  and  would  in  particular  present
problems  for  the  enforcement  of  interim  measures  which  by  nature  require  rapid
actions, sometimes within hours. It is therefore proposed that the Community Patent
Court  itself  would  append  the  order  of  enforcement  to  its  decision  which  a  party
could then directly enforce according to the national civil procedure law concerned.
Paragraph  2  also  allows  the  enforcement  of  decisions  against  Member  States.
Member States may, like any other person or legal entity, be a party to proceedings
before the Community Patent Court. They may obtain a Community patent and they
may  be  subject  to  infringement  proceedings  brought  by  other  right  holders.
Consequently decisions of the Community Patent Court must be enforceable against
them.

27

 
Paragraph 3 contains a further specificity concerning the enforcement of decisions of
the  Community  Patent  Court.  Decisions  ordering  the  defendant  to  act  in  a  certain
way  or  to  abstain  from  certain  acts  are  enforceable  through  an  order  of  a  penalty
payment  in  case  of  non-compliance  with  the  terms  of  a  decision.  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. The Community Patent Court may order
a single amount to be paid in case of non-compliance with the court decision. It may
also  order  the  payment  of  a  recurrent  fine  where  the  fines  are  dependant  on
circumstances to be specified by the court such as e.g. each case of non-compliance
with  the  court  decision  or  the  non  compliance  within  a  certain  time  span.  The
individual fine must be proportionate with a view to the importance of the order to be
enforced and may in any case not exceed an amount of EUR 50 000.

Article 23 of Annex II to the Statute – Court fees

This  Article  introduces  Court  fees  for  proceedings  before  the  Community  Patent
Court.

Paragraph  1  contains  the  principle  that  appropriate  court  fees  will  be  charged  for
proceedings before the Community Patent Court. While proceedings before the Court
of Justice and the Court of First Instance are free of charge, it seems appropriate for
Community  patent litigation  that  parties  adequately  contribute  to  the  costs  incurred
by the Community Patent Court. Before the Community Patent Court, the parties will
litigate  disputes  about  their  subjective  private  rights.  The  costs  of  such  a  dispute
between private parties should not entirely be left to be paid for by the public.

Paragraph 2 concerns the adoption of a schedule of fees which would provide for the
individual fees as well as the amount to be charged. The schedule of fees should be
adopted  by  the  Council  by  qualified  majority  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.  The  amount  to  be  charged  would  need  to  strike  the  right  balance
between  the  principle  of  fair  access  to  justice  and  an  adequate  contribution  of  the
parties for the services rendered by the Community Patent Court. This means on the
one  hand  that  fees  must  not  be  of  a  kind  that  they  create  a  prohibiting  effect
rendering the enforcement of Community patents unduly costly. Also for defendants,
in particular SMEs, the risk of being sued before the Community Patent Court must
not present a financial threat inducing them to rather give up a position than having a
dispute decided. On the other hand, parties should shoulder a fair share of the costs
that their litigation creates.  In  addition  to a balanced schedule  of  fees,  the  Rules of
Procedure would need to provide for legal aid for parties unable to meet the costs as
is the case in Article 76 of the Rules of Procedure of the Court of Justice and Articles
94 ff. of the Rules of Procedure of the Court of First Instance.

Paragraph 3  specifies that  fees  shall  be  paid in advance  and that  a  party  which  has
not  paid  a  prescribed  court  fee  may  be  excluded  from  further  participation  in  the
proceedings.  Parties  would  pay  the  due  amount  according  to  the  schedule  of  fees

28

 
before  the  Community  Patent  Court  takes  action.  This  shall  ensure  that  the
Community  Patent  Court  will  receive  its  fees  without  spending  unnecessary
resources  on  the  collection  of  fees  including  the  world  wide  enforcement  against
parties  that  are  not  paying  their  fees.  The  Community  Patent  Court  will  adjudicate
upon costs in accordance with Article 38 of the Statute and the relevant provisions of
the  Rules  of  Procedure  which  would  lay  down  detailed  provisions  on  which  party
ultimately has to bear the costs as is the case for the Court of Justice in Articles 69 ff.
and  the  Court  of  First  Instance  in  Articles  87  ff  of  their  respective  Rules  of
Procedure. A party winning a case which had advanced a fee would thus be able to
reclaim the fees from the losing party. Finally, it should be noted that the Community
Patent  Court  "may"  exclude  parties  from  further  proceedings.  This  allows  the
Community  Patent  Court  to  develop  a  practice  under  which  circumstances  fees
exceptionally need not be paid in advance as may be appropriate in the case of urgent
interim measures leaving no time for prior payment of fees.

Article 24 of Annex II to the Statute –Hearings in Member States

This Article clarifies that the Community Patent Court may hold hearings in Member
States other than that in which its seat is located as agreed upon by the Council in its
common political approach of 3 March 2003. It is for the Community Patent Court to
decide in the individual case on the appropriateness of such hearings.

Article 25 of Annex II to the Statute – Language of proceedings

This Article lays down the principles governing the language of proceedings before
the Community Patent Court.

Paragraph 1 provides that the Community Patent Court will conduct proceedings in
the official EU language of the Member State where the defendant is domiciled or in
one of them to be chosen by the defendant, where in a Member State there are two or
more  official  EU  languages.  This  principle  which  was  recognised  in  the  common
political approach of the Council of 3 March 2003 shall ensure that an EU domiciled
defendant  who  is  confronted  with  claims  of  a  plaintiff  can  defend  himself  in  a
language he knows or can be expected to know. Since the domicile of the defendant
can  regularly  be  determined  with  no  great  difficulty,  the  chosen  rule  is  very  clear
contributing to legal certainty for the plaintiff. Where, however, the defendant is not
domiciled  in  a  Member  State,  the  Community  Patent  Court  shall  conduct
proceedings  in  the  official  EU  language  in  which  the  patent  was  granted.  This
provision contains a clear rule for all other possible situations in which the defendant
has his domicile in a third State.

Paragraph  2  provides  as  agreed  upon  by  the  Council  in  its  3  March  2003  common
political  approach  that  at  the  request  of  the  parties  and  with  the  consent  of  the
Community  Patent  Court,  any  official  EU  language  can  be  chosen  as  language  of
proceedings to take account of their respective situations. Such an agreement of the
parties  would  be  likely  e.g.  where  the  defendant  though  domiciled  in  a  different
Member  State  originates  from  the  same  Member  State  as  the  plaintiff  or  where  in
particular  companies  communicate  in  the  same  international  business  language
which  the  defendant  would  prefer  to  use  in  preference  to  the  language  of  his
domicile. Under normal circumstances, the Community Patent Court would consent
to  the  joint  request  of  the  parties  to  change  from  one  language  of  proceedings  to
another.  However,  for  exceptional  cases,  the  Community  Patent  Court  should  have

29

 
the  power  to  reject  the  request  e.g.  where  the  request  is  made  untimely  causing
difficulty to the Community Patent Court such as a corresponding request close to or
at an oral hearing for which interpretation cannot be provided.

Paragraph 3 clarifies that the Community Patent Court may hear, in accordance with
the Rules of Procedure, the parties in person, witnesses and experts in any language.
The  Community  Patent  Court  must  be  allowed,  where  it  considers  necessary,  to
question any such person even where that person does not speak any of the official
EU  languages.  In  such  a  case,  the  registrar  shall  provide  for  interpretation  into  the
language  of  proceedings  and  at  the  request  of  any  party  into  the  language  used  by
that party at the oral hearing in accordance with the Rules of Procedure.

Paragraph  4  finally  provides  for  the  possibility  of  the  Community  Patent  Court  to
allow  the  submissions  of  accompanying  documents  drawn  up  in  a  language  other
than  the  language  of  proceedings  avoiding  unnecessary  and  costly  translations.
However, the Community Patent Court may at any time order that such a translation
be produced.

Article  26  of  Annex  II  to  the  Statute  –  Appeal  against  decisions  of  the
Community Patent Court

This  Article  contains  provisions  on  the  possibility  to  appeal  decisions  of  the
Community Patent Court.

Paragraph 1 lays down, that final decisions of the Community Patent Court may  be
appealed  within  two  month  of  the  notification  of  the  decision.  This  provision
corresponds to Article 56(1) of the Statute governing the appeal against decisions of
the  Court  of  First  Instance.  The  additional  wording  of  that  Article  relating  to  an
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  retained  for  the  Community  Patent  Court.  A  decision  disposing  of
substantive issues in part would be a judgment of the Community Patent Court and
could  thus  be  appealed  against.  The  same  can  be  said  for  a  decision  declining
competence or declaring an action inadmissible.

Paragraph 2 contains a specific provision on the possibility to appeal against interim
measures made pursuant to Article 243 of the EC Treaty, orders for the suspension of
enforcement  made  under  Article  256(4)  of  the  EC  Treaty  and  evidence  protection
measures  provided  for  in  Article  14  of  Annex  II  to  the  Statute.  An  appeal  against
such  orders  may  be  brought  within  two  month  from  their  notification.  A
corresponding provision for the Court of First Instance is contained in Article 57(2)
of the Statute. In the situations referred to by Article 50(2) of the TRIPS Agreement
where such an order has been made without the prior hearing of the party adversely
affected  by  the  measures,  the  legal  remedy  shall  not  consist  of  a  direct  appeal.
Instead that party may, within two months of the notification, lodge an objection with
the  Community  Patent  Court  which  then  shall,  with  due  consideration  of  the
arguments  brought  forward  by  the  party  adversely  affected,  review  and  modify,
revoke or confirm the measures. That decision of the Community Patent Court would
then be subject to an appeal. This procedure ensures that an appeal is reserved as a
legal remedy  against a considered  decision of the  Community  Patent  Court  handed
down after an inter partes procedure.

30

 
Paragraph  3  provides  for  an  appeal  against  a  decision  dismissing  an  application  to
intervene  within  two  weeks  from  the  notification  of  the  decision  dismissing  the
application (see also for the Court of First Instance Article 57(1) of the Statute).

Paragraph 4 concerns the possibility of an appeal against other decisions taken by the
Community  Patent  Court  in  the  course  of  proceedings.  The  possibility  to  appeal
against every decision disposing of procedural issues seems too wide and would risk
paralysing  the  proceedings.  Such  appeals  should  only  be  possible  where  explicitly
allowed  in  the  Rules  of  Procedure.  Unless  otherwise  provided  for  in  the  Rules  of
Procedure,  any  mistake  in  the  procedure  would  have  to  be  dealt  with  in  the
framework  of  the  appeal  against  the  judgment  itself  ensuring  swift  first  instance
proceedings  while  leaving  sufficient  safeguards  for  the  parties.  An  isolated  appeal
against  decisions  of  a  procedural  nature  could  be  considered  where  an  immediate
appeal is justified by the importance of the disputed decision, for example in the case
of a decision of the Community Patent Court on a challenge for bias.

Paragraph 5 clarifies that an appeal provided for in paragraphs 1 to 4 of this Article
may only be brought by the party which has been unsuccessful, in whole or part, in
its submissions (see also for the Court of First Instance Article 56(2) of the Statute).
The  procedure  referred  to  in  paragraphs  2  and  3  shall  be  conducted  under  the
summary procedure provided for in Article 39 of the Statute (see also for the Court
of First Instance Article 57(3) of the Statute).

Article 27 of Annex II to the Statute – Grounds for appeal

This  Article  contains  the  grounds  for  appeal.  Article  225a(3)  of  the  EC  Treaty
restricts the appeal against decision of a panel set up under that Article to points of
law unless otherwise provided for in the decision establishing the panel.

Paragraph 1 provides for the Community Patent Court that an appeal may be based
on points of law and matters of fact.

Paragraph 2 specifies on what grounds an appeal on points of law may lie.  It could
lie on the grounds of lack of competence of the Community Patent Court, a breach of
procedure which adversely  affects  the interests of the  appellant or the infringement
of  Community  law  by  the  Community  Patent  Court.  This  same  list  is  contained  in
Article  58(1)  of  the  Statute  for  an  appeal  on  points  of  law  against  decisions  of  the
Court of First Instance to the Court of Justice.

Paragraph 3 specifies on what grounds an appeal on matters of fact shall lie. While
an  appeal  in  private  party  litigation  should  not  be  restricted  to  points  of  law  but
should  also  allow  parties  to  raise  matters  of  fact,  a  full  retrial  of  a  case  in  second
instance should be excluded. A full retrial would reduce the value of the first instance
proceedings  before the Community  Patent  Court  and risk  carrying  the trial  into  the
appeal instance before the Court of First Instance which would then risk that it would
not be able to properly fulfil its function as an appeal instance, namely to concentrate
on  specific  issues  singled  out  by  the  parties  for  more  detailed  review  at  a  higher
level.  To  this  end,  an  appeal  on  matters  of  fact  may  lie  on  the  grounds  of  a
re-evaluation  of  facts  and  evidence  submitted  to  the  Community  Patent  Court.  On
appeal, the Court of First Instance would be free to make its proper evaluation of the
facts  brought  forward  by  the  parties  at  first  instance  before  the  Community  Patent
Court. Also where there are contested facts, the Court of First Instance  could make

31

 
its  own  evaluation  of  the  evidence  produced  at  first  instance.  However,  the
possibility for the parties to submit new facts or evidence for the first time during the
appeal proceedings would be restricted to those situations where their submission by
the party concerned could not reasonably have been expected during the proceedings
before  the  Community  Patent  Court.  This  could,  for  example,  be  the  case  if  a  fact
was  unknown  to  a  party  and  could,  while  applying  due  diligence,  not  have  been
known by that party or if the Community Patent Court took a view of the case that
suggested  known  facts  to  be  irrelevant.  It  is  left  to  the  Court  of  First  Instance  to
establish  through  jurisprudence  under  what  circumstances  the  submission  of  facts
and  evidence  could  not  have  been  reasonably  expected  at  first  instance  leaving  the
necessary flexibility to take account of  all the  possible situations that may occur in
practise.

Paragraph 4 provides that no appeal shall lie regarding only the amount of the costs
or  the  party  ordered  to  pay  them  as  does  Article  58(2)  of  the  Statute  for  appeals
against decisions of the Court of First Instance.

Article 28 of Annex II to the Statute – Decisions by the Court of First Instance
and referral back to the Community Patent Court

This  Article  concerns  the  decision  by  the  Court  of  First  Instance  and  a  possible
referral of the case back to the Community Patent Court.

Paragraph  1  provides  that  where  the  appeal  is  well  founded,  the  Court  of  First
Instance  shall  quash  the  decision  of  the  Community  Patent  Court  and  give  final
judgment.  Only  in  exceptional  circumstances  may  the  Court  of  First  Instance  refer
the  case  back  to  the  Community  Patent  Court  for  judgment.  It  seems  essential  for
efficient and swift patent proceedings to avoid unnecessary referrals of  a  case back
and forth between instances. Unlike in Article 61 of the Statute, which addresses the
appeal  against  decisions  of  the  Court  of  First  Instance  to  the  Court  of  Justice  on
points of law stating that the Court of Justice may give final judgment where the state
of  proceedings  so  permits  or  otherwise  refer  the  case  back  to  the  Court  of  First
Instance, the present Article states the rule that the Court of First Instance in patent
appeal  proceedings  shall  decide  the  case.  This  follows  from  the  nature  of  patent
appeal  proceedings  which  can  also  take  factual  elements  into  consideration.  The
Court of First Instance can establish those facts that are missing in its view and then
give final judgment whereas the Court of Justice can only use the established facts of
the first instance which makes it necessary to refer back a case if further facts need to
be established.

However,  there  are  cases  where  a  referral  back  to  the  Community  Court  would  be
appropriate. A referral back would seem appropriate where the case was not heard in
substance before the Community Patent Court and a direct decision of the Court of
First Instance would take away the entire first instance for the parties. Examples for
such a referral back to the Community Patent Court would be cases where an appeal
was brought forward against a judgment declining competence or deciding e.g. only
on  the  liability  as  such  but  not  the  amount  of  damages.  Another  situation  where  a
referral back could be considered is where the Community Patent Court committed a
fundamental procedural mistake that had an effect on the judgment which  could  be
the case e.g. with a violation of the right to be heard. In such a case the first instance
proceedings might not be considered to be an effective legal remedy.

32

 
Paragraph  2  provides  that  the  Community  Patent  Court  shall  be  bound  by  the
decision of the Court of First Instance on points of law where a case is referred back
to it (see for the Court of First Instance Article 61(2) of the Statute).

Article 29 of Annex II to the Statute – Rules of Procedure

This  Article  provides  that  the  Rules  of  Procedure  of  the  Community  Patent  Court
shall  contain  any  provision  necessary  for  applying  and,  where  required,
supplementing  Annex  II  to  the  Statute.  A  corresponding  provision  for  the  Court  of
Justice and the Court of First Instance is contained on Article 63 of the Statute.

Chapter II – Appeal proceedings before the Court of First Instance

Chapter II contains amendments to the Statute of the Court of Justice with respect to
the  function  of  the  Court  of  First  Instance  as  Community  Patent  Appeal  Court
providing  in  particular  for  a  specialised  patent  appeal  chamber  within  the  Court  of
First Instance and special provisions governing the procedure before it.

Article 5 – Number of Judges of the Court of First Instance

This Article proposes to raise the number of judges of the Court of First Instance by
three judges from 15 to 18. Community patent cases would be heard by a specialised
appeal  chamber  which  should  be  set  up  within  the  Court  of  First  Instance  in
accordance with Article 61a of the Statute as amended by Article 6 of this Decision.
The three judges forming the patent appeal chamber should be additional judges with
a view to the required professional profile of candidates and the increased case load
of the Court of First Instance caused by Community patent appeal proceedings.

Article 6 –Community patent appeal proceedings

This Article inserts into the Statute of the Court of Justice an Article 61a containing
special  provisions  concerning  Community  patent  appeal  proceedings  before  the
Court of First Instance.

Paragraph  1  of  the  proposed  Article  61a  of  the  Statute  as  amended  provides  for  a
special  chamber  to  be  set  up  within  the  Court  of  First  Instance  for  the  purpose  of
hearing appeals against decisions of the Community Patent Court composed of three
judges. Such a specialised chamber seems appropriate with a view to the special type
of  litigation  before  it.  Litigation  concerning  the  Community  Patent  is  private  party
litigation in a field that requires a particular experience. It would be difficult to build
up and maintain the necessary experience if such appeal proceedings were heard by
different  chambers.  Instead,  proceedings  should  be  handled  by  only  one  chamber,
thus concentrating the expertise within the Court of First Instance.

Paragraph 2 of Article 61a of the Statute as amended proposes that the judges sitting
in the patent appeal chamber of the Court of First Instance should be judges having a
high level of legal expertise in patent law. This provision is in line with the general
approach  followed  in  the  establishment  of  a  Community  patent  jurisdiction  i.e.  to
create a specialised court system for litigation on the Community patent. One of the
central  demands  to  come  forward  with  a  Community  patent  system  has  been  to
provide for an increased legal security in the Union by a centralised and specialised
jurisdiction with experienced judges. As this seems vital for the success of the entire

33

 
system, judges sitting at first instance as well as those sitting on appeal should have
expertise in patent law. The present provision does not alter in any way Article 224
of the EC Treaty relating to the appointment of judges of the Court of First Instance.
That Article, of course, also applies to the appointment of the judges meant to form
the patent appeal chamber. With the present provision, the Council would only agree
to present candidates and appoint judges with a particular professional profile.

The  reference  to  Article  17(5)  and  Article  50  of  the  Statute  clarifies  that  the
establishment  of  a  patent  appeal  chamber  within  the  Court  of  First  Instance  is  not
meant to separate this chamber from the rest of the court. It shall merely be ensured
that  Community  patent  appeal  cases  in  the  standard  composition  are  heard  by
specialised judges with particular experience in the field of law concerned. However,
any  Member  of  the  Court  of  First  Instance  may  sit  in  the  patent  appeal  chamber
where  an  additional  judge  needs  to  sit.  This  would  be  the  case  where  the  patent
appeal chamber sits in accordance with Article 50 of the Statute with more than three
judges which could be appropriate e.g. for cases that would reach beyond patent law
and concern the unity and consistency of Community law. Also in the event that one
judge of the patent appeal chamber is prevented  from  attending, a  judge of another
chamber  can  be  called  upon  to  sit  in  accordance  with  Article  17(5)  of  the  Statute.
Finally nothing should prevent that, where the caseload so permits, the patent appeal
chamber is attributed other cases than Community patent cases such as Community
trade mark or design cases in accordance with Article 50(2) of the Statute.

Paragraph 3 of Article 61a of the Statute as amended concerns the appeal procedure
before the patent chamber of the Court of First Instance. The object of this provision
is  to  ensure  that  the  Statute  provisions  governing  the  procedure  for  Community
patent  litigation  are  the  same  for  the  complete  trial  of  first  and  second  instance.
Where special procedural provisions are necessary in view of the special character of
Community  patent  litigation  i.e.  private  party  litigation  these  should  apply  in  a
uniform manner for the Community Patent Court and the Court of First Instance on
appeal.  Article  53  of  the  Statute  provides  for  the  Court  of  First  Instance  that  the
procedure  before  it  shall  be  governed  by  Title  III  of  the  Statute.  The  same  will  be
valid  for  the  Community  Patent  Court  according  to  Article  10  of  Annex  II  to  the
Statute.  The  special  provisions  amending  Title  III  of  the  Statute  with  regard  to  the
procedure  at  first  Instance  before  the  Community  Patent  Court  are  also  made
applicable  to  the  procedure  before  the  patent  appeal  chamber  of  the  Court  of  First
Instance.  The  following  provisions  of  Annex  II  to  the  Statute  are  concerned:
Assistant rapporteur  (Article  7),  provisions from  Title  III  of  the  Statute  that  do  not
apply to patent litigation (Article  10),  the  role  of  European  Patent  Attorneys  in  the
representation of parties (Article 11), the oral and written procedure (Article 12), the
production  of  evidence  (Article  13),  interim  and  evidence-protection  measures
(Article 14), special orders in a summary procedure (Article 15), judgment by default
(Article  16),  the  revision  of  a  judgment  (Article  17),  settlement  (Article  18),  the
obligation  of  all  Community  Courts  to  forward  wrongly  addressed  documents  and
refer actions to the competent court (Article 19), the stay of proceedings (Article 20),
the transmission of decisions (Article 21), the enforcement of decisions (Article 22)
and Court fees (Article 23). For details, see the provisions referred to by the present
Article.

The second sentence of Paragraph 3 provides that Member States and the institutions
of the European  Community shall  have  the  right to intervene  in  Community  patent
cases  before  the  Court  of  First  Instance  in  accordance  with  Article  40(1)  of  the

34

 
Statute.  This  possibility  is  excluded  by  Article  10  of  Annex  II  to  the  Statute  for
proceedings  at  first  instance  before  the  Community  Patent  Court.  While  such
intervention  at  the  first  instance  seems  too  broad  for  the  entirety  of  cases  at  first
instance,  such  a  possibility  seems  appropriate  for  the  second  instance  allowing
Member States and the institutions of the European Community to contribute to the
development of legal questions of Community patent law.

Paragraph  4  of  Article  61a  of  the  Statute  as  amended  provides  for  the  language  of
appeal proceedings which shall be the language of proceedings in which the case was
conducted before the Community Patent Court. This ensures a uniform treatment of
the  entire  case,  both  at  first  and  second  instance.  Applications,  decisions,  written
contributions,  testimonies  of  witnesses,  expert  opinions  etc.  can  be  directly
considered  in  second  instance  without  further  translations.  Also  parties  might  have
disposed  for  their  representation  at  first  instance  with  regard  to  the  language  of
proceedings  and  might  wish  that  their  representative  who  is  familiar  with  the  case
also represents them before the Court of First Instance on appeal. A reference to the
provision  contained  in  Article  25(1)  of  Annex  II  to  the  Statute  providing  for  the
language  of  the  Member  State  where  the  defendant  is  domiciled  as  language  of
proceedings before the Community Patent Court could not be made as the plaintiff of
first instance might become the defendant in appeal. However, the further principles
laid down in Article 25(2) to (4) of Annex II to the Statute concerning an agreement
of  the  parties  on  the  language  of  proceedings,  the  hearing  of  parties  in  person,
witnesses  and  experts  in  a  language  other  than  the  language  of  proceeding  and  the
possibility to submit accompanying documents in a language other than the language
of proceedings shall also apply to the appeal proceedings.

Chapter III – Final provisions

Chapter III contains final provisions concerning transitional provisions and the entry
into force of this Decision.

Article 7 – Transitional provisions

Paragraph  1  of  this  Article  concerns  the  appointment  of  the  president  of  the
Community Patent Court providing that the first president of the Community Patent
Court  shall  be  appointed  in  the  same  manner  as  its  members  unless  the  Council
decides  that  also  the  first  president  shall  be  elected  by  the  judges  according  to
Article 4 of Annex II to the Statute. A parallel approach had also been taken for the
Court  of  First  Instance  in  Article  11(1)  of  Council  Decision  88/591/ECSC,  EEC,
Euratom of 24 October 1988 establishing the Court of First Instance.

Paragraph  2  concerns  the  newly  appointed  first  judges  of  the  Community  Patent
Court.  In  order  to  establish  a  cycle  where  the  Community  Patent  Court  is  only
partially  re-staffed  at  any  one  time,  as  foreseen  by  Article  2  of  Annex  II  to  the
Statute, some members of the Community Patent  Court  will  need  to have  a shorter
initial term of office. 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 three  years  which
had  also  been  foreseen  for  the  Court  of  First  Instance  in  Article  12  of  Council
Decision 88/591/ECSC, EEC, Euratom of 24 October 1988 establishing the Court of
First Instance.

35

 
Article 8 – Entry into force

This Article contains provisions for the  entry into force of this Decision. The  entry
into force should depend on the adoption of the Council Decision taken pursuant to
Article 229a of the EC Treaty conferring jurisdiction on the Court of Justice relating
to the Community patent and its acceptance by all Member States in accordance with
their  constitutional  requirements.  After  the  corresponding  notification  by  Member
States,  the  necessary  preparations  for  the  establishment  of  the  Community  Patent
Court and the setting up of the patent appeal chamber of the Court of First Instance
can commence.

However,  Article  1  of  Annex  II  to  the  Statute  containing  the  provision  attributing
jurisdiction within the Court of Justice to the Community Patent Court  should only
enter into force on the date on which the Council Decision conferring jurisdiction on
the Court of Justice enters into force which in turn is dependent on the publication of
a notice by the president of 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. This ensures that the conferral of jurisdiction  on  the  Court of
Justice and the attribution of jurisdiction to the Community Patent Court take effect
at the same point in time marking the end of the transitional period and the beginning
of the Community jurisdiction.

36

 
2003/0324 (CNS)

Proposal for a

COUNCIL DECISION

establishing the Community Patent Court
and concerning appeals before the Court of First Instance

THE COUNCIL OF THE EUROPEAN UNION,

Having  regard  to  the  Treaty  establishing  the  European  Community,  and  in  particular
Articles 225a, 245 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 Court of Justice3,

Having regard to the opinion of the European Economic and Social Committee4,

Whereas:

(1)

(2)

(3)

(4)

1

2

3

4

5

The European Council held in Lisbon in March 2000 called for the necessary steps to
increase  the  competitiveness  of  the  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
completing the system of patent protection in the Union.

Council  Regulation  (EC)  No  …/20035  creates  a  Community  patent  title.  Holders  of
such  a  title  will  enjoy  Community  wide  protection  of  an  invention  according  to  the
uniform standards of the regulation.

OJ C
OJ C
OJ C
OJ C
OJ L

37

 
                                                
(5)

(6)

(7)

(8)

(9)

By Decision 2003/…/EC6, the Council confers jurisdiction on the Court of Justice in
certain disputes relating to the Community patent, recommending those provisions to
the  Member  States  for  adoption  in  accordance  with  their  respective  constitutional
requirements.

The second paragraph of Article 220 of the Treaty provides that judicial panels may be
attached to the Court of First Instance under the conditions laid down in Article 225a
thereof,  in  order  to  exercise,  in  certain  specific  areas,  the  judicial  competence  laid
down in the Treaty.

The jurisdiction conferred on the Court of Justice under Article 229a of the Treaty in
disputes  relating  to  the  Community  patent  should  be  exercised  at  first  instance  by  a
judicial  panel  established  on  the  basis  of  Article  225a  of  the  Treaty,  to  be  called
"Community Patent Court".

Article 225(2) of the Treaty provides that 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  EC  Treaty.  For  this  purpose  a  specialised
patent  appeal  chamber  should  be  created  within  the  Court  of  First  Instance  to  hear
appeals  against  decisions  of  the  Community  Patent  Court.  Decisions  made  by  the
Court of First Instance on appeal against decisions of the Community Patent Court are
according to Article 225(2) of the Treaty, exceptionally, subject to review by the Court
of Justice where there is a serious risk to the unity or consistency of Community law.

In  order  to  take  account  of  the  special  nature  of  private-party  Community  patent
litigation  and  to  ensure  a  uniform  procedure  at  both  instances,  amendments  to  the
procedural  rules  contained  in  the  Protocol  on  the  Statute  of  the  Court  of  Justice  are
necessary, both for the procedure at first instance before the Community Patent Court
and on appeal before the Court of First Instance.

(10) A centralised and specialised Community court system, holding exclusive jurisdiction
for  Community  patent  disputes  and  composed  of  a  first-instance  Community  Patent
Court  and  an  appeal  chamber  within  the  Court  of  First  Instance,  should  ensure
expertise  and  decisions  of  the  highest  quality.  It  should  guarantee  efficient  patent
proceedings  for  the  whole  Community,  the  establishment  of  a  common  body  of
case-law and the uniform application of Community patent law,

6

OJ L

38

 
                                                
HAS DECIDED AS FOLLOWS:

Chapter I

Community Patent Court

Article 1

Establishment

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.

Article 2

Application of Treaty provisions

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

Article 3

Statute provisions for judicial panels

The following Title VI is added to the Protocol on the Statute of the Court of Justice:

"Title VI

JUDICIAL PANELS

Article 65

The  provisions  relating  to  the  jurisdiction,  the  composition,  and  the  organisation  of  judicial
panels established under Article 225a of the Treaty, and the procedure before them, shall be as
laid down in the annexes to this Statute."

Article 4

Annex to the Protocol on the Statute of the Court of Justice

The following Annex [II] is added to the Protocol on the Statute of the Court of Justice:

39

 
"Annex [II]

Community Patent Court

Article 1

The  Community  Patent  Court  shall  have,  at  first  instance,  exclusive  jurisdiction  in  disputes
relating  to  the  application  of  Council  Regulation  (EC)  No…/…  [of  …  on  the  Community
patent]  and  Council  Regulation  (EC)  No  …/…  [of  …  on  the  Community  supplementary
protection  certificate]  to  the  extent  that  jurisdiction  is  conferred  on  the  Court  of  Justice
pursuant to Article 229a of the EC Treaty.

Article 2

The  Community  Patent  Court  shall  consist  of  seven  Judges,  who  shall  be  appointed  for  a
period of six  years.  The  membership shall be partially renewed every three  years, replacing
four and three members alternately. Retiring members shall be eligible for reappointment.

The  Judges  shall  be  chosen  from  candidates  presented  by  the  Member  States  having  an
established high level of legal expertise in patent law. They shall be appointed by the Council
on  the  basis  of  their  expertise  after  consultation  of  a  committee  to  be  set  up  in  accordance
with Article 3.

Article 3

An advisory committee to be set up for this purpose shall, prior to the appointment decision of
the Council, give an opinion on the adequacy of the profile of candidates with a view to the
function  of  a  Judge  at  the  Community  Patent  Court.  It  may  attach  to  its  opinion  a  list  of
candidates  possessing  the  most  appropriate  high  level  of  legal  experience.  Such  a  list  shall
comprise a number of candidates twice the number of Judges to be appointed by the Council.

The  advisory  committee  shall  be  composed  of  seven  members  chosen  from  among  former
members of the Court of Justice, the Court of First Instance, the Community Patent Court or
lawyers of recognised competence. The appointment of members of the advisory committee
and its operating rules shall be decided by the Council, acting  by  a qualified  majority, on  a
proposal from the President of the Court of Justice.

The Judges shall elect the President of the Community Patent Court from among their number
for a term of three years. He may be re-elected.

Article 4

Articles 2 to 7, Articles 13, 14 and 15, the first, second and fifth paragraphs of Article 17, and
Article 18 of the Statute shall apply to the Community Patent Court and its members.

Article 5

40

 
The oath referred to in Article 2 of the Statute shall be taken before the Court of Justice and
the decisions referred to in Articles 3, 4 and 6 of the Statute shall be  adopted  by that  Court
after hearing the Court of First Instance and the Community Patent Court.

Article 6

The Community Patent Court shall appoint its Registrar and lay down the rules governing his
service. The fourth  paragraph  of  Article 3 of the  Statute and  Articles 10,  11  and  14  thereof
shall apply to the Registrar of the Community Patent Court mutatis mutandis.

Article 7

Technical  experts  shall  assist  the  Judges  throughout  the  handling  of  the  case  as  Assistant
Rapporteurs. The fourth paragraph of Article 3 and Article 13 of the Statute shall apply.

Assistant Rapporteurs must have a high level of expertise in the relevant technical field. They
shall be appointed for a period of six years on a proposal from the Court of Justice. Retiring
Assistant Rapporteurs shall be eligible for reappointment.

Assistant Rapporteurs are required, under the conditions laid down in the Rules of Procedure,
to participate in the preparation, the hearing and the deliberation of cases. They shall have the
right to put questions to the parties. They shall not have a right to vote.

The Community Patent Court shall sit in chambers of three Judges.

Article 8

In certain cases governed by the Rules of Procedure, the Community Patent Court may sit in
an enlarged configuration, or be constituted by a single Judge. They shall contain provisions
concerning the quorum.

The President of the Community Patent Court shall preside over one of the chambers of three
Judges.  In  addition,  he  shall  preside  where  the  Community  Patent  Court  sits  in  an  enlarged
configuration. The President of the remaining chambers shall be elected by the Judges from
among their number for a term of three years. They may be re-elected.

The composition of the chambers and the assignment of cases to them shall be governed by
the Rules of Procedure.

Article 9

The President of the Court of Justice or, where appropriate, the President of the Court of First
Instance shall, acting by common accord with the President of the Community Patent Court,
determine  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  Registrar  of  the  Community
Patent Court under the authority of the President of the Community Patent Court.

41

 
Article 10

The  procedure  before  the  Community  Patent  Court  shall  be  governed  by  Title  III  of  the
Statute with the exception of the second paragraph of Article 21, Articles 22 and 23, the first
and  third  paragraphs  of  Article  40,  Article  42  and  Article  43  thereof.  It  shall  be  subject  to
Articles 11 to 25 of this Annex.

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 Article 40 of the Statute in order to
take account of the specific features of litigation in the field of Community patents.

Article 11

The  lawyer  referred  to  in  Article  19  of  the  Statute  may  be  assisted  by  a  European  Patent
Attorney  whose  name  appears  on  the  list  maintained  by  the  European  Patent  Office  for  the
purpose  of  legal  representation  before  it  and  who  is  a  national  of  a  Member  State  or  of
another State which is a party to the Agreement on the European Economic Area.

The European Patent Attorney shall be allowed to speak at hearings under the conditions laid
down in the Rules of Procedure.

The fifth and sixth paragraphs of Article 19 of the Statute shall apply mutatis mutandis.

Article 12

By way of derogation from the fourth, fifth and sixth paragraphs of Article 20 of the Statute
the following rules shall apply:

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.

The  Community  Patent  Court  may,  in  accordance  with  the  Rules  of  Procedure  and  after
having heard the parties, dispense with the oral procedure.

The  Rules  of  Procedure  may  provide  that  all  or  part  of  the  procedure  may  be  conducted  in
electronic form, and the conditions for so doing.

Article 13

By way of derogation from the first sentence of the first paragraph of Article 24 of the Statute
the following rule shall apply:

Where a party has presented reasonably accessible evidence sufficient to support its claims,
and has, in substantiating those claims, cited evidence which is to be found under the control
of the opposing party, the Community Patent Court may order that such evidence be produced
by the opposing party, subject to the protection of confidential information.

42

 
Article 14

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.

Where  there  is  a  demonstrable  risk  that  evidence  may  be  destroyed  even  before  the
commencement of proceedings on the merits of the case, the Community Patent Court may, in
the  event  of  an  actual  or  imminent  infringement  of  a  Community  patent,  authorise  in  any
place  either  the  detailed  description,  with  or  without  the  taking  of  samples,  or  the  physical
seizure of the infringing goods, and, in appropriate cases, the documents relating thereto.

Where  interim  or  evidence-protection  measures  have  been  revoked  the  Community  Patent
Court  shall  order  the  applicant,  at  the  request  of  the  defendant,  to  provide  the  defendant
adequate compensation for any injury caused by these measures.

Article 15

Article 39 of the Statute relating to special orders in a summary procedure shall also apply to
evidence-protection  measures.  The  Rules  of  Procedure  shall  determine  who  is  competent  to
make the orders.

Without prejudice to Article 41 of the Statute, a judgment by default may be given against the
party that, after having been duly summoned, fails to appear at the oral hearing.

Article 16

Article 17

By way of derogation from the first paragraph of Article 44 of the Statute, the following rule
shall apply:

An  application  for  revision  of  a  judgment  may  exceptionally  be  made  to  the  Community
Patent Court on discovery of a fact which is of such a nature as to be a decisive factor, and
which, when the judgment  was  given,  was unknown to  the  party  claiming  the  revision,  and
only on the grounds of a fundamental procedural defect or of an act which was held, by a final
court decision, to constitute a criminal offence.

Article 18

The  parties  may,  at  any  time  in  the  course  of  proceedings,  conclude  their  case  by  way  of
settlement  confirmed  by  a  decision  of  the  Community  Patent  Court.  The  settlement  cannot
affect the validity of a Community patent.

The first and second paragraphs of Article 54 of the Statute shall apply mutatis mutandis to
the Community Patent Court.

Article 19

43

 
Article 20

Where  the  Court  of  Justice  is  seised  of  a  case  in  which  the  same  issue  of  interpretation  is
raised, or where the Court First Instance is seised of a case in which the validity of the same
Community patent 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 judgment.

Where  an  opposition  against  the  grant  of  a  European  patent  designating  the  Community  is
filed  with  the  European  Patent  Office,  the  Community  Patent  Court,  seised  of  an  invalidity
action, may, after hearing the parties, stay proceedings until such time as  a final decision is
issued on the opposition.

Article 21

Article  55  of  the  Statute  shall  apply  subject  to  the  condition  that  Member  States  and
institutions  of  the  Communities  which  have  neither  intervened  nor  been  a  party  to  the  case
shall only receive the final decision of the Community Patent Court.

Article 22

Final  decisions  of  the  Community  Patent  Court  shall  be  enforceable  if  they  are  no  longer
subject  to  appeal.  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.

The  order  for  its  enforcement  is  appended  to  the  decision  by  the  Community  Patent  Court.
Decisions shall be enforceable against Member States.

The  Community  Patent  Court  may  order  that  non-compliance  with  its  decisions  or  orders
constituting  an  obligation  to  act  or  to  abstain  from  an  act  shall  be  sanctioned  by  a  penalty
payment. The penalty payment may consist in a single or a recurrent fine. The individual fine
must be proportionate and may not exceed EUR 50 000.

Article 23

Appropriate court fees will be charged for proceedings before the Community Patent Court.

A  schedule  of  fees  shall  be  adopted  by  the  Council,  acting  by  a  qualified  majority  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.

Court fees shall be paid in advance. Any party which has not paid the prescribed court  fees
may be excluded from further participation in the proceedings.

The Community Patent Court may hold hearings in Member States other than that in which its
seat is located.

Article 24

44

 
Article 25

The  Community  Patent  Court  shall  conduct  proceedings  in  the  official  EU  language  of  the
Member  State  where  the  defendant  is  domiciled,  or  in  one  of  them  to  be  chosen  by  the
defendant, where in a Member State there are two or more official EU languages. Where the
defendant is not domiciled in a Member State, the Community Patent Court will conduct the
proceedings in the official EU language in which the Community Patent was granted.

At the request of the parties, and with the consent of the Community Patent Court, 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, witnesses  and  experts  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 proceedings and, at the request of any party, into the language used by  that
party in accordance with the Rules of Procedure.

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 may  at any  time order that party to produce a translation of such documents
into the language of proceedings.

Article 26

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 of
the Treaty or the fourth paragraph of Article 256 thereof or pursuant to the second paragraph
of  Article  14  of  this  Annex  may  be  brought  before  the  Court  of  First  Instance  within  two
months of its notification. However, if the order has been made without a prior hearing of the
party  adversely  affected,  that  party  may,  within  two  months  of  the  notification,  lodge  an
objection with 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  before  the  Court  of  First  Instance  within  two  weeks  of  its
notification.

The Rules of Procedure may determine the situations and conditions under which an appeal
may  be  brought  against  decisions  of  a  procedural  nature  taken  by  the  Community  Patent
Court in the course of proceedings.

An appeal as provided for in paragraphs 1 to 4 may be brought by any party which has been
unsuccessful, in whole or in part, in its submissions. The appeals referred to in paragraphs 2
and  3  shall  be  heard  and  determined  under  the  procedure  referred  to  in  Article  39  of  the
Statute.

The appeal may be based on points of law and matters of fact.

Article 27

45

 
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, or an infringement of Community law by the Community Patent Court.

An  appeal  on  matters  of  fact  shall  lie  on  the  grounds  of  a  re-evaluation  of  the  facts  and
evidence submitted to the Community Patent Court. New facts and new evidence may only be
introduced  if  their  submission  by  the  party  concerned  could  not  reasonably  have  been
expected during proceedings at first instance.

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

Article 28

If  the  appeal  is  well  founded,  the  Court  of  First  Instance  shall  quash  the  decision  of  the
Community  Patent  Court  and  give  final  judgment.  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 judgment.

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.

The Rules of Procedure of the Community Patent Court shall contain any provision necessary
for applying and, where required, supplementing this Annex."

Article 29

Chapter II

Appeal proceedings before the Court of First Instance

Article 5

Number of Judges of the Court of First Instance

Article 48 of the Protocol on the Statute of the Court of Justice is replaced by the following:

The Court of First Instance shall consist of 18 Judges."

“Article 48

Article 6

Community Patent appeal proceedings

The following Article is inserted into the Protocol on the Statute of the Court of Justice:

46

 
"Article 61a

A  specialised  patent  chamber  of  the  Court  of  First  Instance  with  three  Judges  shall  hear
appeals against decisions of the Community Patent Court.

Without prejudice to the fifth paragraph of Article 17 and Article 50, the Judges of the patent
appeal  chamber  shall  be  chosen  from  candidates  having  an  established  high  level  of  legal
expertise in patent law and appointed on the basis of their expertise.

Article 7 and Articles 10 to 23 of Annex [II] to the Statute shall apply to the appeal procedure
before the patent chamber of the Court of First Instance mutatis mutandis. Member States and
institutions of the European Community shall have the right to intervene in accordance with
the first paragraph of Article 40.

The appeal proceedings shall be conducted in the language of proceedings in which the case
was conducted before the Community Patent Court. The second, third and fourth paragraphs
of Article 25 of Annex [II] to the Statute apply."

Chapter III

Final provisions

Article 7

Transitional provisions

The first President of the Community Patent Court shall be appointed for a term of three years
in the same manner as its members. However, the Council may decide that the procedure laid
down  in  Article  4  of  Annex  [II]  to  the  Protocol  on  the  Statute  of  the  Court  of  Justice  shall
apply.

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 three years.

Article 8

Entry into force

Following its publication in the Official Journal  of the European  Union, this Decision  shall
enter into force on the day following notification by the last Member State of its acceptance of
the  provisions  of  Council  Decision  2003/…/EC  taken  pursuant  to  Article  229a  of  the
EC Treaty conferring jurisdiction on the Court of Justice relating to the Community Patent.

47

 
Article  1  of  Annex  [II]  to  the  Protocol  on  the  Statute  of  the  Court  of  Justice  shall  become
applicable on the date on which Council Decision 2003/…/EC conferring jurisdiction on the
Court of Justice relating to the Community patent enters into force.

Done at Brussels, […]

For the Council
The President
[…]

48

 
LEGISLATIVE FINANCIAL STATEMENT

Policy area: Industrial Property

Activity: Creation of the Community patent jurisdiction

TITLE  OF  ACTION:  PROPOSAL  FOR  A  COUNCIL  DECISION  ESTABLISHING  THE  COMMUNITY

PATENT COURT AND CONCERNING APPEALS BEFORE THE COURT OF FIRST INSTANCE

1.

BUDGET LINE(S) + HEADING(S)

Section IV - Court of Justice

2.

OVERALL FIGURES

The creation of the Community patent jurisdiction has a financial impact on part A of
the  budget  (human  resources  and  other  administrative  expenditure).  Community
patent litigation brings a new type of litigation under the jurisdiction of the Court of
Justice  but  also  a  considerable  quantity  of  new  cases  in  a  specialised  field  which
consequently  requires  new  staff  to  handle  cases.  With  the  increasing  number  of
Community patents being granted, the number of new cases before the Community
Patent Court will rise sharply. The European Patent Office can be expected to grant
each year 50 000 new Community patents which would, in view of a litigation rate of
around 1 per 1 000 patents in force, increase the number of new proceedings at first
instance by about 50 per year. In about 25% of the cases decided by the Community
Patent  Court  an  appeal  to  the  Court  of  First  Instance  is  likely  to  be  filed.  The
resources  which  are  considered  necessary  for  the  initial  phase  of  the  Community
patent  jurisdiction  till  2014  can  be  brought  in  gradually  according  to  the  type  and
size of the tasks to be handled. Where additional staff are brought in, the calculation
of the financial impact of human resources follows the general practice in this matter,
i.e.  newly  created  posts  in  the  year  of  their  creation  are  only  calculated  on  a
six-month basis.

– 

Necessary resources in the first five years of operation (2010-2014)

At the  level  of  the  Community Patent  Court  seven  judges  (including  the  president)
have  been  considered  appropriate  to  fulfil  its  function  in  the  initial  phase.  Even
before  the  new  jurisdiction  can  start  up  its  function,  the  judges  will,  according  to
Article  225a(5)  of  the  EC  Treaty,  need  to  establish  the  first  codification  of  a
Community civil procedure law which in itself is a major undertaking. In the initial
phase, a number of key decisions on fundamental questions will need to be taken by
an enlarged bench. Each judge will need to be assisted by one legal secretary and one
clerical secretary.

The highly technical Community patent litigation will also have consequences for the
Court of First Instance hearing cases on appeal. With a view to the highly specialised
and  technical  subject  matter,  a  patent  appeal  chamber  will  need  to  be  set  up  with
three  additional  specialised  judges  at  the  Court  of  First  Instance.  Each  judge  will
need to be assisted by at least one legal and one clerical secretary.

49

 
In addition, the special nature of patent litigation which deals with a subject matter
involving  the  latest  technological  developments  requires  not  only  lawyers  on  the
bench but also the attendance of technical experts. The Council in its 3 March 2003
common  political  approach  decided  that  technical  experts  shall  assist  the  judges
throughout the handling of a case. To cover the more  than  70 fields  of technology,
seven such technical experts (assistant rapporteurs) are foreseen for the first instance
Community Patent Court in the following sub-divisions (1) inorganic chemistry and
materials  science,  (2)  organic  and  polymer  chemistry,  (3)  biochemistry  and
biotechnology, (4) general physics, (5) mechanical engineering, (6) information and
communication  technology  and  (7)  electrical  engineering.  With  a  view  to  the
preparation  of  the  technical  questions  raised  by  a  case  during  first  instance
proceedings, the assistance of a reduced number of three technical experts during the
appeal  proceedings  before  the  Court  of  First  Instance  in  the  more  general  sub-
divisions chemistry, physics and mechanics would seem sufficient.

The Community Patent Court would also need a registrar who would be supported by
six  officials  in  the  registry.  The  registry  would  need  to  operate  in  a  particularly
complex  environment.  The  registry  of  the  Community  Patent  Court  would  be
responsible  not  only  for  keeping  the  register  but  also  for  the  correspondence  with
parties  and  their  legal  representatives  from  all  over  the  world,  as  cases  could  even
involve e.g. two parties from non EU countries. The registry would need to be able to
process  incoming  private  party  litigation  in  all  of  the  official  languages  of  the
Community. It would have to respond orally and in writing to requests made by the
parties (e.g. request for information on state of the case, scheduling of hearings etc.)
or  the  judges  (e.g.  request  for  additional  information,  missing  documents  etc.).  In
order  to  safeguard  the  proper  functioning  of  the  court,  such  day  to  day  contact
between the parties and the court will not be able to rely on the regular translation or
interpretation  services  but  will  have  to  be  provided  by  the  registry  directly.
Moreover,  the  registry  would  also  be  responsible  for  cooperation  with  the  national
authorities  enforcing 
the  Community  Patent  Court  under
Articles 244, 256 of the EC Treaty. The  Community  Patent Court will only deliver
the judgment whereas the terms of the judgment must be enforced by the competent
authorities  in  the  Member  States.  The  registry  must  ensure  communication  in  the
official language of the Member State where the decision of the Community Patent
Court is enforced.

the  decisions  of 

A lecteur d'arrêt appears to be necessary in order to verify that the judgment, drafted
by judges in a language which is not necessarily their mother tongue, is linguistically
correct. This is current practice at the Court to safeguard quality standards and must
also be provided for with respect to decisions of the  new  Community  Patent  Court
and the patent chamber of the Court of First Instance. A researcher seems necessary
in  order  to  research  the  legislation  and  jurisprudence  in  Member  States  to  provide
data for the Community patent jurisdiction that is necessary to establish Community
jurisprudence  in  this  field.  As  jurisdiction  in  private  party  patent  litigation  will  be
completely  new  to  the  Community  legal  order,  the  researchers  would  be
indispensable to investigate the existing concepts in Member States in order to allow
the  court  to  take  them  sufficiently  into  account  when  considering  new  cases.  An
additional  legal  secretary  for  the  Advocate  General  seems  necessary  in  view  of
review procedures under Article 225(2) of the EC Treaty before the Court of Justice
against decisions of the Court of First Instance. All the patent decisions of the Court
of First  Instance  would  need to be evaluated as to  their  unity  and  consistency  with

50

 
Community  law.  Where  there  is  a  serious  risk  that  Community  law  might  be
affected,  this  person  would  support  the  Advocate  General  in  the  necessary
proceedings before the Court of Justice. Apart from the staff that will be necessary to
operate  the  Community  Patent  Court  as  such,  the  proposals  must  also  provide  the
necessary reinforcement of the translation service. Finally the establishment of an IP
library will be essential for the new jurisdiction. The relevant publications (from all
Member States) such as law books, periodicals and collections of court decisions and
also publications on all fields of technology as well as access to legal and technical
data bases will need to be provided for.

– 

Phasing in of human resources

The  new  jurisdiction  will  necessarily  go  through  a  period  in  which  staff  may  be
recruited gradually according to the type and size of the tasks to be handled.

In  the  year  before  the  estimated  start  of  the  Community  jurisdiction,  which  is
foreseen  for  2010,  a  reduced  number  of  staff  will  suffice  for  the  necessary
preparations. Only the judges with secretarial support will need to be appointed. It is
important that all the judges are present from this moment. They will have to prepare
the  Rules  of  Procedure  for  patent  proceedings  which  according  to  Articles  224(5),
225a(5)  of  the  EC  Treaty  are  adopted  by  the  judges  themselves.  At  this  stage  a
librarian  would also need to begin  with  the  preparations  to  establish  the  IP  library.
Consequently a reduced figure of 14 staff has been introduced for the  year 2009 in
tables 2.3c), 7.1.

A  considerable  (but  not  yet  the  full)  number  of  staff  is  only  necessary  as  from  the
point  when  the  Community  patent  jurisdiction  takes  up  its  function  in  2010  (see
increased  expenditures  set  out  accordingly  in  tables  2.3(c)  and  7.2.  A  total  of  70
personnel seems appropriate at the start of the new jurisdiction in order to fulfil  its
functions  properly.  This  includes  first  of  all  the  seven  judges  of  the  Community
Patent  Court.  In  particular  in  the  initial  phase,  a  number  of  key  decisions  on
fundamental  questions  need  to  be  taken  by  the  court  in  which  they  establish
important case law. Such decisions should be taken by an enlarged bench instead of a
chamber  of  three  judges.  This  number  of  judges  is  also  necessary  in  order  to
guarantee a smoothly operating jurisdiction in  case of sickness or leave of a  judge.
As  concerns  the  three  judges  of  the  patent  appeal  chamber  of  the  Court  of  First
Instance,  it  is  important  to  note  that  appeals  will  be  filed  from  the  time  when  the
system  becomes  operational, 
interim  measures  or
evidence-protection  measures.  Furthermore  all  the  technical  experts,  seven  for  the
Community Patent Court and three for the Court of First Instance, need to be present
from  the  start  of  the  operation.  Cases  may  come  from  any  of  the  existing  fields  of
technology and as a consequence this number cannot be reduced in this initial phase.
The president of the Community Patent Court who will apart from his jurisdictional
functions also have to deal with administrative matters and the representation of the
first private party Community jurisdiction will need to be  assisted in his work by  a
chef  de  cabinet  from  the  beginning.  A  lecteur  d'arrêt  for  the  Community  Patent
Court  and  the  Court  of  First  Instance  will  be  necessary  from  the  first  year  of
operation since decisions will be delivered right from the start by both courts.

in  particular  concerning 

However,  five  legal  secretaries  for  the  Community  Patent  Court  and  two  for  the
Court of First Instance, ten clerical secretaries and one researcher will suffice for this
initial period of operation of the Community patent jurisdiction. Finally, in view of

51

 
the case load of this initial phase, a first (modest) reinforcement of the translation and
interpretation capacities of the Court of Justice by ten translators and ten interpreters
seems sufficient.

Certain posts can be phased in at a later stage as the case load rises. (see increase of
expenditure  in  tables  2.3(c),  7.3  and  7.4  below).  This  concerns  secretarial  support,
where  eleven  further  staff  are  foreseen  for  2012.  For  2014,  three  further  legal
secretaries are foreseen for the judges of the Community Patent Court and the Court
of First Instance so that each judge finally will be assisted by one legal secretary. In
the  same  year,  one  additional  legal  secretary  for  the  Advocate  General  for  review
proceedings  seems  necessary  as  the  judgments  of  the  Court  of  First  Instance  on
appeal against decisions of the Community Patent Court will have reached a number
where  their  scrutiny  in  view  of  possible  review  proceedings  justifies  an  additional
post.  Also  a  second  researcher  would  only  be  necessary  in  2014  as  the  case  load
increases. Finally, the translation and interpretation capacities of the Court of Justice
can  be  expanded  in  relation  to  increasing  case  load  on  a  step-by-step  basis,  i.e.  by
another  ten  staff  in  2012  and  another  eighteen  in  2014.  The  total  staff  for  the
Community patent jurisdiction will thus by 2014 amount to 114 posts.

2.1.

Total allocation for action (Part B): EUR million for commitment

None

2.2.

Period of application:

Start: 2009

Expiry: open ended

2.3.

(a)

Overall multiannual estimate of expenditure:

Schedule  of  commitment  appropriations/payment  appropriations 
intervention) (see point 6.1.1)

(financial

Not applicable

(b)

Technical and administrative assistance and support expenditure (see point 6.1.2)

Not applicable

(c)

Overall  financial  impact  of  human  resources  and  other  administrative  expenditure
(see point 7)

52

 
Year (n)

2009

2010

Year of
operation

---

New  cases  at
first instance

0

Posts:

Jurisdiction
Library
Translation

Total

13
1
---

14

I

50

49
1
20

70

2011

II

2012

III

2013

IV

2014

V

100

150

200

250

49
1
20

70

60
1
30

91

60
1
30

91

65
1
48

114

3 257 000

7 115 000

10 472 000

11 606 000

12 740 000

13 982 000

Commitment
s/ payments
in EUR

2.4.

Compatibility with financial programming and financial perspective

Not applicable

2.5.

Financial impact on revenue:

[…] Proposal  has  no  financial  implications  (involves  technical  aspects  regarding

implementation of a measure)

OR

[X] Proposal has financial impact – the effect on revenue is as follows:

The  proposal  provides  that  parties  will  be  charged  appropriate  court  fees  for
Community patent litigation at first and second instance (See Article 23 of Annex II
the  Statute).  However,  the  amount  of  revenue  cannot  be  estimated  at  present.  The
amount to be charged would need to strike the right balance between the principle of
a  fair  access  to  justice  and  an  adequate  contribution  of  the  parties  for  the  services
rendered by the Community patent jurisdiction to solve their private disputes. In any
case, the revenues from court fees will only contribute in a modest way to cover the
overall incurred costs and could by no means be expected to lead to a self financing
system. A schedule of fees laying down the exact fees to be paid will be adopted by
the Council, acting by a qualified majority 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.

53

 
3.

BUDGET CHARACTERISTICS

Type of expenditure

New

EFTA
contribution

Contributions
form applicant
countries

Heading in
financial
perspective

Non-comp

Non-diff

YES

NO

NO

No 5

4.

LEGAL BASIS

Articles 225a, 245 of the EC Treaty.

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  revision  of  the  European  Patent  Convention
and  accession  of  the  Community  to  the  same,  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  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 enforceable before national  courts, and make  the necessary
adaptations  for  the  needs  of  European  industry  which  increasingly  operates  trans-
nationally  within  the  common  market.  The  measures  are  designed  to  increase  the
competitiveness of the Union's innovative industries by creating a Community wide
uniform  patent  protection  which  can  be  enforced  before  a  single  Community
jurisdiction rendering decisions with Community wide effect.

Within  this  overall  project,  the  objective  of  the  present  proposal  is  to  establish  a
Community  Patent  Court  for  first  instance  Community  patent  litigation  and  to
provide for the necessary provisions with a view to accommodating the new function
of the Court of First Instance as appeal instance against decisions of the Community
Patent Court.

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  neither  included  provisions  on
the  rights  conferred  by  such  a  patent  nor  created  a  single  jurisdiction  to  deal  with
disputes.  This  is  still  left  to  national  legislation  and  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

54

 
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  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.

5.2.

Action envisaged and budget intervention arrangements

The  proposal  constitutes  a  major  element  of  the  envisaged  Community  patent
system.  It  contains  the  necessary  legal  provisions  to  set  up  a  Community  Patent
Court  which  will  deal  with  the  Community  patent  related  disputes  for  which
jurisdiction is conferred on the Court of Justice. It also contains necessary provisions
with  a  view  to  accommodating  the  new  function  of  the  Court  of  First  Instance  as
appeal  instance  against  decisions  of  the  Community  Patent  Court.  An  efficiently
functioning  Community  patent  jurisdiction  requires  adequate  resources.  Court  staff
need  to  be  employed  (judges,  registrar,  assistant  rapporteurs,  legal  secretaries,
lecteurs, researchers, secretaries, translators, interpreters, librarian), court rooms and
equipment (office equipment, ICT facilities, library) have to be provided.

5.3.

Methods of implementation

The necessary staff identified in 5.2. will be regular staff employed by the Court of
Justice.

6.

FINANCIAL IMPACT

6.1.

Total financial impact on Part B - (over the entire programming period)

Not applicable

6.2.

Calculation  of  costs  by  measure  envisaged  in  Part  B  (over  the  entire
programming period)

Not applicable

7.

7.1

IMPACT ON STAFF AND ADMINISTRATIVE EXPENDITURE

The year before the Community patent jurisdiction becomes operational (2009)

The  following  tables  show  the  impact  on  staff  and  administrative  expenditures  in
2009, the year before the Community patent jurisdiction becomes operational.

55

 
7.1.1.

Impact on human resources

Types of post

Staff to be assigned to management of
the action using existing and/or
additional resources

Number of
permanent posts

Number of
temporary posts

or

judges

10

officials 
temporary
staff

B

C

1

3

14

total

Description of tasks deriving from the
action

CPC: (1 president, 6 judges); CFI: 3
judges

librarian

secretaries

Total

10

1

3

14

7.1.2. Overall financial impact of human resources

Type of human resources

Amount (EUR)

Method of calculation *

judges

2 825 000

CPC: 275 000 EUR X 7
CFI: 300 000 EUR X 3

officials (B, C)

432 000

108 000 EUR X 4

Total

3 257 000

The amounts are total expenditure for twelve months.

7.1.3. Other administrative expenditure deriving from action in 2009

Amount EUR

Method of calculation

Budget line

(number and heading)

Overall allocation (Title A7)

A0701 – Missions

A07030 – Meetings
A07031 – Compulsory committees 1
A07032 – Non-compulsory committees 1

A07040 – Conferences

A0705 – Studies and consultations

Other expenditure (specify)

Information systems (A-5001/A-4300)

Other expenditure - Part A: Library

Total

0

The amounts are total expenditure for twelve months.

1 Specify the type of committee and the group to which it belongs.

56

 
I.

Annual total (7.1.2. + 7.1.3.)

EUR 3 257 000

II.

7.2.

Duration of action

indefinitely

First two years of operational Community patent jurisdiction (2010-2011)

The  following  tables  show  the  impact  on  staff  and  administrative  expenditures  in
2010 -2011, the first two years from the start of the Community patent jurisdiction.

Description of tasks deriving from the
action

CPC: (1 president, 6 judges); CFI: 3
judges

registrar of CPC

assistant rapporteurs: 7 CPC, 3 CFI

CPC 7 (5 legal secretaries, 1 lecteur, 1
chef cab. president)

CFI: 3 (2 legal secretaries, 1 lecteur)

CPC and CFI: 1 researchers

registry CPC

CPC: 7 (secretaries); CFI: 3 (secretaries)

chauffeur president CPC

librarian

translators

interpreters

7.2.1.

Impact on human resources

Types of post

Staff to be assigned to management of
the action using existing and/or
additional resources

Number of
permanent posts

Number of
temporary posts

Total

or

judges

10

officials 
temporary
staff

registrar

1

A

10

other  A

11

B

C

D

subtotal

Other  human  resources
for  general  services  of
the Court of Justice

subtotal

total

6

10

1

49

1

10

10

21

70

10

1

10

11

6

10

1

49

1

10

10

21

70

57

 
7.2.2. Overall financial impact of human resources

7.2.2.1. Overall financial impact on human resources in 2010

Type of human resources

Amount (EUR)

Method of calculation*

judges CPC and CFI

registrar CPC

officials for CPC and CFI (A, B, C, D posts)

subtotal

other human resources for general services of the Court
of Justice

2 825 000

138 000

324 000

1 890 000

5 177 000

CPC: 275 000 EUR X 7
CFI: 300 000 EUR X 3

275 000 EUR / 2

108 000 EUR X 3

108 000 EUR X 35 / 2

librarian

108 000

108 000 X 1

translators / interpreters

1 080 000

108 000 EUR X 20 / 2

total

6 365 000

The  amounts  are  total  expenditure  for  twelve  months.  Newly  created  posts  in  2010  are
calculated for six months.

7.2.2.2. Overall financial impact on human resources in 2011

Type of human resources

Amount (EUR)

Method of calculation*

judges and registrar

officials for CPC and CFI (A, B, C, D posts)

subtotal

3 100 000

4 104 000

7 204 000

CPC: 275 000 EUR X 8
CFI: 300 000 EUR X 3

108 000 EUR X 38

other human resources for general services of the Court
of Justice (translators, interpreters, librarian)

2 268 000

108 000 EUR X 21

total

9 472 000

The amounts are total expenditure for twelve months.

58

 
7.2.3. Other administrative expenditure deriving from the action

7.2.3.1. Other administrative expenditure deriving from action in 2010

Budget line

(number and heading)

Overall allocation (Title A7)

A0701 – Missions

A07030 – Meetings
A07031 – Compulsory committees 1
A07032 – Non-compulsory committees 1

A07040 – Conferences

A0705 – Studies and consultations

Other expenditure (specify)

Information systems (A-5001/A-4300)

Other expenditure - Part A: Library

Amount EUR

Method of calculation

p.m.

750 000

Total

750 000

The amounts are total expenditure for twelve months.

1 Specify the type of committee and the group to which it belongs.

7.2.3.2. Other administrative expenditure deriving from action in 2011

Budget line

(number and heading)

Overall allocation (Title A7)

p.m.

Amount €

Method of calculation

A0701 – Missions

A07030 – Meetings
A07031 – Compulsory committees 1
A07032 – Non-compulsory committees 1

A07040 – Conferences

A0705 – Studies and consultations

Other expenditure (specify)

Information systems (A-5001/A-4300)

Other expenditure - Part A: Library

1 000 000

Total

1 000 000

The amounts are total expenditure for twelve months.

1 Specify the type of committee and the group to which it belongs.

59

 
I.

Annual total (7.2.2 + 7.2.3)

Annual total in 2010

Annual total in 2011

Duration of action

II.

7.3.

EUR 7 115 000

EUR10 472 000

indefinitely

Third  and  fourth  year  of  operation  of  the  Community  patent  jurisdiction
(2012 – 2013)

The  following  tables  show  the  impact  on  staff  and  administrative  expenditures  in
2012 and 2013, the third and fourth year of the operation of the Community patent
jurisdiction.

Description of tasks deriving from the
action

CPC: (1 president, 6 judges); CFI: 3
judges

registrar of CPC

assistant rapporteurs: 7 CPC, 3 CFI

CPC 7 (5 legal secretaries, 1 lecteur, 1
chef cab. president)

CFI: 3 (2 legal secretaries, 1 lecteur)

CPC and CFI: 1 researcher

6 (registry CPC),

CPC: 15 (secretaries); CFI: 6
(secretaries)

chauffeur president CPC

librarian

translators

interpreters

7.3.1.

Impact on human resources

Types of post

Staff to be assigned to management of
the action using existing and/or
additional resources

Number of
permanent posts

Number of
temporary posts

Total

or

judges

10

officials 
temporary
staff

registrar

1

A

10

other  A

11

B

C

D

subtotal

other  human  resources
for  general  services  of
the Court of Justice

subtotal

total

6

21

1

60

1

15

15

31

91

10

1

10

11

6

21

1

60

1

15

15

31

91

60

 
7.3.2. Overall financial impact on human resources

7.3.2.1. Overall financial impact on human resources in 2012

Type of human resources

Amount (EUR)

Method of calculation *

judges and registrar

3 100 .000

CPC: 275 000 EUR X 8
CFI: 300 000 EUR X 3

officials for CPC and CFI (A, B, C, D posts)

4 104 000

108 000 EUR X 38

subtotal

other human resources for general services of the Court
librarian)
of 

interpreters, 

(translators, 

Justice 

594 000

7 798 000

108 000 EUR X 11 / 2

2 268 000

108 000 EUR X 21

540 000

108 000 EUR X 10 / 2

Subtotal

Total

2 808 000

10 606 000

The  amounts  are  total  expenditure  for  twelve  months.  Newly  created  posts  in  2012  are
calculated for six months.

7.3.2.2. Overall financial impact on human resources in 2013

Type of human resources

Amount (€)

Method of calculation *

judges and registrar

officials for CPC and CFI (A, B, C, D posts)

subtotal

3 100 000

5 292 000

8 392 000

CPC: 275 000 EUR X 8
CFI: 300 000 EUR X 3

108 000 EUR X 49

other human resources for general services of the Court
of Justice (translators, interpreters, librarian)

3 348 000

108 000 EUR X 31

total

11 740 000

The amounts are total expenditure for twelve months.

61

 
7.3.3. Other administrative expenditure deriving from action in each of the years 2012 and

in 2013

Budget line

(number and heading)

Amount EUR

Method of calculation

Overall allocation (Title A7)

p.m.

A0701 – Missions

A07030 – Meetings
A07031 – Compulsory committees 1
A07032 – Non-compulsory committees 1

A07040 – Conferences

A0705 – Studies and consultations

Other expenditure (specify)

Information systems (A-5001/A-4300)

Other expenditure - Part A: Library

1 000 000

Total

1 000 000

The amounts are total expenditure for twelve months.

1 Specify the type of committee and the group to which it belongs.

I.

Annual total (7.3.2 + 7.3.3)

Annual total in 2012

Annual total in 2013

II.

Duration of action

7.4.

End of the initial phase (2014)

EUR 11 606 000

EUR 12 440 000

indefinitely

The  following  tables  show  the  impact  on  staff  and  administrative  expenditure  in  2014
marking the end of the initial  phase  when  the  staffing of the Community  patent jurisdiction
will be completed.

62

 
7.4.1.

Impact on human resources

Types of post

Staff to be assigned to management of
the action using existing and/or
additional resources

Number of
permanent posts

Number of
temporary posts

or

judges

10

officials 
temporary
staff

registrar

1

A

10

other  A

16

B

C

D

subtotal

Other  human  resources
for  general  services  of
the Court of Justice

subtotal

total

6

21

1

65

1

24

24

49

114

Description of tasks deriving from the
action

CPC: (1 president, 6 judges); CFI: 3
judges

registrar of CPC

assistant rapporteurs: 7 CPC, 3 CFI

CPC 9 (7 legal secretaries, 1 lecteur, 1
chef cab. president)

CFI: 4 (3 legal secretaries, 1 lecteur)

CPC and CFI: 2 researchers

ECJ: 1 legal secretary for review
procedure

6 (registry CPC),

CPC: 15 (secretaries); CFI: 6
(secretaries)

chauffeur president CPC

librarian

translators

interpreters

Total

10

1

10

16

6

21

1

65

1

24

24

49

114

63

 
7.4.2. Overall financial impact of human resources

Type of human resources

Amount (EUR)

Method of calculation*

judges and registrar

3 100 000

CPC: 275 000 EUR X 8
CFI: 300 000 EUR X 3

officials for CPC and CFI (A, B, C, D posts)

5 292 000

108 000 EUR X 49

270 000

108 000 EUR X 5 / 2

subtotal

8 662 000

other human resources for general services of the Court
librarian)
of 

interpreters, 

(translators, 

Justice 

3 348 000

108 000 EUR X 31

972 000

108 000 EUR X 18 / 2

subtotal

total

4 320 000

12 982 000

The  amounts  are  total  expenditure  for  twelve  months.  Newly  created  posts  in  2014  are
calculated for six months.

7.4.3. Other administrative expenditure deriving from the action

Budget line

(number and heading)

Amount EUR

Method of calculation

Overall allocation (Title A7)

p.m.

A0701 – Missions

A07030 – Meetings
A07031 – Compulsory committees 1
A07032 – Non-compulsory committees 1

A07040 – Conferences

A0705 – Studies and consultations

Other expenditure (specify)

Information systems (A-5001/A-4300)

Other expenditure - Part A: Library

1 000 000

Total

1 000 000

The amounts are total expenditure for twelve months.

1 Specify the type of committee and the group to which it belongs.

I.

II.

Annual total (7.4.2 + 7.4.3)

Duration of action

Eur 13 982 000

indefinitely

64

 
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 contents of the present Decision, the organisation of the
Community  Patent  Court  and  the  provisions  of  the  Statute  of  the  Court  of  Justice
relating to the work of the Community Patent Court at first instance and the Court of
First  Instance  on  appeal  would  have  to  be  reviewed  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  establishment  of  a  Community
Patent Court and the appeal procedure before the Court of First Instance and does not
cover a policy area with a risk of fraud.

65

 
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  establishing  the  Community  Patent  Court  and  concerning
appeals before the Court of First Instance.

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 jurisdiction.

– 

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.

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

66

 
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.

– 

on employment

increased 

strengthened
An 
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

technologies  and  a 

investment 

inventive 

in 

67

 
their related industries.  In particular the  modern, innovative technologies  which  are
playing a steadily increasing role in a knowledge based global economy will benefit.

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 establishment, the organisation and the procedure before the Statute
the Community Patent Court and the Court of First Instance on appeal.

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  neither  included  provisions  on
the  rights  conferred  by  such  a  patent  nor  created  a  single  jurisdiction  to  deal  with
disputes. This was still left to national legislation and 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  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.

68