Opinion of the European Economic and Social Committee on the ‘proposal for a Council Decision conferring jurisdiction on the Court of Justice in disputes relating to the Community patent’ (COM(2003) 827 final - 2003/0326 (CNS))
Date: 2004-03-31
Institutions: European Economic and Social Committee
Subjects: Court of Justice of the European Union, European patent, civil proceedings, jurisdiction, patent law

30.4.2004

EN

Official Journal of the European Union

C 112/81

Opinion of the European Economic and Social Committee on the ‘proposal for a Council Decision
conferring jurisdiction on the Court of Justice in disputes relating to the Community patent’

(COM(2003) 827 final - 2003/0326 (CNS))

(2004/C 112/22)

On 30 January 2004, the Council decided to consult the Economic and Social Committee, under Article
95 of the Treaty establishing the European Community, on the above-mentioned proposal.

The European Economic and Social Committee decided to ask the Section for the Single Market, Produc-
tion and Consumption to carry out the work on the subject.

In view of the urgency of the matter, at its 407th plenary session held on 31 March and 1 April 2004
(meeting of 31 March), the European Economic and Social Committee appointed Mr Retureau as its
rapporteur-general and adopted the following opinion by 56 votes in favour, 1 against and 1 abstentions.

1. The proposed Council Decision presented by the

Commission

1.1
The purpose of the proposal is to confer jurisdiction on
the Court of Justice in disputes relating to the proposed Com-
munity patent.

1.2
The European Council held in Lisbon in March 2000
adopted a general programme to increase the competitiveness
of the Union's economy in order to turn it into a knowledge-
based economy that would be the most competitive in the
world. This ambitious programme breaks down into a number
of areas, including that of industrial property. In respect of this,
the Council relaunched the creation of a system of Community
patents in order to mitigate the limitations of
the current
in order to
inventions,
systems for protecting technological
help stimulate investment in research and development in the
European Community.

1.3
The Council, which has sole jurisdiction in these matters
according to the legal basis of the proposals under discussion,
has yet to make a final decision. In the meantime, the Commis-
sion has based this first proposal, which concerns the conferral
Justice, on the Council's
of
common political approach (discussed at the Competitiveness
Council on 3 March 2003 and at the Employment, Social
Policy, Health and Consumer Affairs Council
three days
later) (1).

jurisdiction on the Court of

1.4
The aim is to prevent territorial and material fragmenta-
tion of litigation concerning the validity of the Community
patent and of industrial property rights that arise directly from
it, as well as of any supplementary protection certificates asso-
ciated with that patent, by creating a single Community court
that will need to be accessible to natural and legal persons and
be operational by 2010 at the latest.

1.5
The legal basis for the proposal to confer jurisdiction on
the Court of Justice in disputes relating to the Community

(1) Memo from the secretariat of the Council to delegations, inter-insti-
tutional dossier 2000/0177 (CNS), no 7159/03 PI 24 of 7 March
2003.

patent (2) is Article 229a of the EC Treaty, introduced by the
Treaty of Nice. The EC Treaty provides that the Council, on a
proposal from the Commission and after consulting the Parlia-
ment, can confer jurisdiction on the Court of Justice, within the
limits it lays down, to hear disputes relating to Community
intellectual property titles. The Council recommends the adop-
tion of these provisions by the Member States. These will then
ratify them according to their respective constitutional arrange-
ments.

1.6
The Court's jurisdiction will (if strictly interpreted) cover
disputes relating to the infringement and validity of Com-
munity patents and supplementary certificates. The nature of
admissible actions is set out in the revised proposal for a
Council Regulation on the Community patent (3): with respect
to infringement, these are actions to stop infringement and
actions for the declaration of non-infringement, as well as sanc-
tions in the case of infringement; with respect to validity, these
are invalidity actions and counter claims for invalidity. The
Court will also have the power to take emergency measures
and to order penalty payments that may be necessary in the
disputes it will be handling.

1.7
Provision is made for transitional measures for Com-
munity patents, which might come into effect before the crea-
tion of the CPC in 2010; the designated courts of Member
States would have jurisdiction in applying the substantive law
of the Munich Convention and relevant Community law to
disputes initiated before the creation of the CPC, and would in
all cases be required to see through to the end any proceedings
that had already been started.

2. General comments

2.1
The Committee notes that the proposal is in line with
the EC Treaty and with the Protocol on the Statute of the Court
of Justice. The Committee supports the proposal in principle,
subject to the following comments.

(2) COM(2003) 827 final of 23.12.2003.
(3) Memo from the Presidency to the Intellectual Property (Patents)
group, text (revised) of proposal 10404/03 PI 53 of 11 June 2003,
subsequently revised by the Patents group on 4 September 2003,
document number 12219/03.

C 112/82

EN

Official Journal of the European Union

30.4.2004

2.2
The Committee subscribes to the point of view that a
single court with exclusive jurisdiction applying uniform rules
and jurisprudence is necessary for the fair application of Com-
munity patent law to disputes arising within the Community.
Such a solution gives parties to court proceedings the assur-
ances of legal certainty and stability they are entitled to expect.
The right to be heard in one's own language is also respected
at hearings.

2.3
The Committee considers that the ability given to private
individuals to mount an indirect challenge to certain Com-
munity acts in relation to their private dispute (a technique
known in French as exception d'illégalité, whereby a defence is
made on the basis that the law of which the defendant is in
breach is itself
illegal) concerning the validity of a patent,
without giving the Community Patent Court the power to
strike down the Community acts in question, is justified on the
basis of respect for the rights of defendants. However, the
Committee considers that it would be appropriate that conse-
quences be drawn from this, for example by the Court of
Justice, to which the Commission could make a mandatory
referral in cases where the CPC has accepted an exception d'illé-
galité defence.

2.4
For the transitional period, it is necessary to highlight
the risk that the limited number of national courts appointed
by each country might produce diverging decisions and case
law, particularly as regards the interpretation of Articles 52 to
57 of the European Patent Convention. It might be appropriate
to make provisions for the Court of Justice to be able to inter-
vene subsequently as a revision body, in the limited circum-
stances that would allow such a procedure,
in order, where
necessary, to harmonise jurisprudence created by the national
courts responsible for hearing disputes relating to the Com-
munity patent, as it would be unfair if different solutions were
reached in similar cases. This could, in particular, relate to the
conditions of validity of a certificate issued by the EPO, whose
Opposition Division and Board of Appeal are known for their
sometimes questionable jurisprudence on conditions of patent-
ability (1), which is not always adhered to by the national
courts.

The supplementary protection certificate (medicines and
2.5
plant protection products) does not yet exist for the Com-
munity patent and will be the subject of a later proposal by the
Commission. The Committee considers it risky to include in
the Court's jurisdiction disputes involving a certificate that has
been proposed but whose nature and existence remain uncer-
tain. A different, broader definition of the Court's jurisdiction
(for example, ‘Community patents and other Community indus-

Brussels, 31 March 2004.

trial property certificates’) could be considered in order to allow
for future developments. The extension of protection or its
future application to various fields of patentable inventions will
doubtless raise contradictory issues, and one should be cautious
about prejudging right now solutions and the nature of certifi-
cates which might one day be the subject of decisions by the
Community legislator.

2.6
The Committee supports the Court being given the
power to adopt interim measures (orders to act or abstain from
an act, evidence protection, cease and desist orders) and sanc-
tions, including penalty payments, without which the resolu-
tion of disputes would lack effectiveness. For practical reasons,
the implementation of the CPC's final or interim enforcement
decisions will need to be left to the competent national authori-
ties, who have powers of coercion according to the respective
laws. For cases not covered by the conferral of jurisdiction on
the Court, national courts remain competent; such cases could
include contracts relating to Community patents, or disputes
relating to the ownership of such patent. The Committee also
supports
specific
these solutions, but has a number of
comments to make about them.

2.7
Finally, the Committee considers the conditions of entry
into force of this decision to be logical and necessary, as it
requires alterations to national rules on jurisdiction and judicial
organisation, about which Member States will have to inform
the Commission in advance, as well as the effective and simul-
taneous creation of the CPC, which will be created by the
proposed Council decision commented upon in a separate
opinion.

3. Specific comments

3.1
The CFI already has jurisdiction in disputes relating to
industrial property with respect to trademarks and designs,
which are managed by the Office for Harmonisation in the
Internal Market. It might perhaps have been worth considering
the creation of an Industrial Property Court attached to the CFI,
with jurisdiction over all existing and future Community intel-
lectual property certificates, and a specialised appeal panel
within the CFI for these certificates, in order to centralise litiga-
tion on industrial property within the Community. However,
this question could be looked at in the more distant future,
once the patent court has gathered sufficient practical experi-
ence — say, after 2013. This possibility of a wider jurisdiction
is already open to the CFI's judicial appeals panel. The
Committee supports this wholeheartedly.

The President

of the European Economic and Social Committee

Roger BRIESCH

(1) For example, a patent was granted for a genetically modified animal
(oncogenic mouse), whereas animal races and species are not paten-
table.