Opinion of the European Economic and Social Committee on the ‘proposal for a Council Decision establishing the Community Patent Court and concerning appeals before the Court of First Instance’ (COM(2003) 828 final - 2003/0324 (CNS))
Date: 2004-03-31
Institutions: European Economic and Social Committee
Subjects: European patent, General Court (EU), appeal, intellectual property, jurisdiction, patent law

C 112/76

EN

Official Journal of the European Union

30.4.2004

Opinion of the European Economic and Social Committee on the ‘proposal for a Council Decision
establishing the Community Patent Court and concerning appeals before the Court of First
Instance’

(COM(2003) 828 final - 2003/0324 (CNS))

(2004/C 112/21)

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 Rappor-
teur-General and adopted the following opinion by 53 votes in favour, two against and two abstentions.

1. The proposed Council Decisions presented by the

Commission

courts, which retained jurisdiction with regard to validity and
to disputes relating to patents issued by the European Patent
Office (EPO), as well as for certificates issued by national patent
offices.

1.1 Presentation of the proposed decision

1.1.1
Two proposals were adopted on the same day. The
purpose of the first is to confer jurisdiction on the Court of
Justice in disputes relating to the proposed Community patent.
The second establishes a Community Patent Court
(CPC)
attached to the Court of First Instance (CFI) and a patent appeal
chamber at the CFI. It also defines the scope ratione materiae,
ratione personae and ratione loci of cases brought before the CPC
and appeals brought before the CFI regarding disputes relating
to Community patents. Finally, it covers any possible appeals
to the Court of Justice where there is a serious risk of compro-
mising the homogeneity of
law or jurisprudence regarding
Community patents.

In an attempt

to overcome the limitations of

1.1.4
the
Munich Convention, a Community Patent Convention was
signed in Luxembourg on 15 December 1975 in order to
create a unitary title at Community level. This convention, like
the Munich Convention, was too limited in scope. It never
came into force, as not enough countries ratified it. However,
this attempt was followed in 1989 by an agreement on Com-
things, a
munity patents, which included, among other
protocol on disputes regarding validity and infringement of
such patents, but
these agreements never came into force
either.

The European Council held in Lisbon in March 2000
1.1.2
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
the current
patents in order to mitigate the limitations of
systems for protecting technological
in order to
inventions,
help stimulate investment in research and development in the
European Community.

1.1.5
Consequently, two non-Community systems currently
co-exist within the Union and, more widely, the EEA and some
other countries: national patents,
issued by national patent
offices and subject to the domestic courts of the country of
issue; and European patents,
resulting from the Munich
Convention of 1973, which determined the applicable substan-
tive law and allowed for a single patent to be issued in those
signatory countries to the convention specified by the appli-
cants, but did not specify the applicable territorial
law nor
which national courts had jurisdiction.

The Commission, in the introduction to the proposal,
1.1.3
recalls the failure of the first attempts to create a Community
patent, which began in the early 1970s. The 1973 Munich
Convention (European Patent Convention, EPC) was a first step
forward,
in that it established a system for examining and
issuing patents in several states that signed up to the Conven-
tion (currently all the countries of the EEA, the Swiss Confed-
eration, Monaco, Liechtenstein and several of the candidate
countries), but without modifying the national systems and

Thus, for a single dispute relating to a patent issued in
1.1.6
several countries, the applicants are obliged to initiate as many
sets of proceedings as there are competent national courts, and
to do so in as many official languages as are applicable, which
constitutes a significant obstacle to exercising intellectual prop-
erty rights created by the issue of patents in several countries.
Indeed, it is possible that each set of proceedings may have a
different outcome, depending on the national
the
country in question.

law of

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1.1.7
is both
Progress on the Community patent project
extremely desirable from the point of view of economic interest
groups and necessary to the functioning of the Single Market.
In order to move things forward, the Commission published a
Green Paper on the subject on 25 June 1997 (1). This was
followed by consultations, studies and practical proposals.

1.1.8
Following the Lisbon European Council, the Commis-
sion presented, on 1 August 2000, a proposal for a regulation
of the Council on the Community patent, concerning all the
legal and judicial aspects of this single certificate, which would
be valid throughout the European Union. The Committee has
already expressed its support for the proposal (2).

1.1.9
These patents will be examined and issued by the Euro-
pean Patent Office once the Community has taken the neces-
sary step of signing up to the Munich Convention (3), and thus
according to the same substantive law as European patents,
which will remain in force alongside the new Community
patent once this has been created.

1.1.10
The Community Patent Regulation, presented by the
Commission in 2000 (4), was subjected to a lengthy debate in
the Council before the revised text was finally published on 4
September 2003, as it raises a number of legal, financial and
linguistic questions. The territoriality of industrial property law
will
in part be called into question for the purposes of the
Community patent. However, some national terms of reference
will remain in place, provisionally in some cases and perma-
nently in others.

The Council, which has sole jurisdiction in these
1.1.11
matters according to the legal basis of the proposals under
discussion, has yet to make a final decision. In the meantime,
the Commission has based these two proposals on the Coun-
cil's common political approach (discussed at the Competitive-
ness Council on 3 March 2003 and at the Employment, Social
Policy, Health and Consumer Affairs Council
three days
later) (5). The first proposal concerns the conferral of jurisdic-
tion on the Court of Justice; the second, the creation of specia-
lised panels, their composition, their statute and their powers,
proceedings and appeals brought before them, and the amend-
ments to the statute of the Court of Justice and the CFI that
these new panels and powers require.

1.1.12
The aim is to prevent territorial and material frag-
mentation of litigation concerning the validity of the Com-
munity patent and of
industrial property rights that arise
directly from it, as well as of any supplementary protection
certificates associated 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) OJ C 129 of 27.4.1998.
(2) OJ C 155 of 29.5.2001.
(3) This would mean revising the Munich Convention according to the
the signatory states,

diplomatic method, which will
whether they are members of the Community or not.

involve all

(4) See the EESC opinion on the proposal for a Council Regulation on
the Community Patent issued on 29.3.2001, published in OJ C 155
of 29.5.2001.

(5) 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.

1.2 Proposal

for a decision establishing the CPC and concerning

appeals before the CFI

1.2.1
The legal basis for the proposal for a decision estab-
lishing the CPC and concerning appeals before the CFI is princi-
pally to be found in Articles 220, 225, 225a and 245 of the
EC Treaty. Other articles of the EC Treaty (6) and the Protocol
on the Statute of the Court of Justice (7) are also relevant. The
Statutes of the Court and of the CFI will be amended to the
extent that is strictly necessary and according to the provisions
of the Council's final decision, after consulting the Court and
the political institutions of the Communities, on the proposal
of the Court itself or of the Commission.

The Commission proposes the creation of a CPC by
1.2.2
2010 at the latest. It would be based at the headquarters of the
CFI and have seven judges, including a President of the Court
elected by his peers for a renewable three-year term. The CPC,
made up of two chambers with three judges each, will be
attached to the CFI, and will hear disputes on infringement and
validity of Community patents,
in line with the jurisdiction
conferred on the Court of Justice. In addition, a specialised
panel of three judges will be created at the CFI as a court of
appeal against decisions of the CPC. In cases where Community
law and case law need to be reconciled, the Court of Justice
will be able to act as a court of revision, within strictly defined
limits. Judges will be appointed for a renewable six-year term;
every three years, three or four judges in turn will be replaced
in order to ensure both regular renewal and continuity of the
court.

in principle, affect

Since it covers private disputes, the patent court does
1.2.2.1
not,
the validity of Community acts;
however, private persons will need to be able to challenge,
the provisions relating to the
where appropriate, some of
validity of patents, but only within the limits of their particular
case, without being able to request that a Community act be
struck down.

the Court will also be enforceable
1.2.2.2 Decisions of
against Member States, who have the same status as private
persons with regard to patents applied for by a State and to
infringement.

(6) Articles 241, 243, 244 and 256 of the EC Treaty and Article 14 of
Annex II of the Statute; with regard to Article 256, the Court will
itself apply the order of enforcement to its decision, in order to
avoid delays.

(7) OJ C 325/167 of 24.12.2002. The Statute of the Court can be
amended by the Council acting unanimously (Article 245 of the EC
Treaty) at the request of the Court or of the Commission; depending
on the origin of the request, the Commission or the Council are
consulted, as is the Parliament. However, the amendment cannot
apply to Title I of the Statute of the Court.

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1.2.3
For the CPC, the appointment of judges, the election of
the president, appeals before the CFI and any other provisions
specific to the Court, such as the composition, powers and
the chambers, which are
specific procedural provisions of
different or constitute an amendment to the Statute of the
Court of Justice and the CFI ought, as far as possible, to be
inserted into the Annex to the Statute of the Court relating to
judicial panels.

The judges are chosen from a list drawn up by a
1.2.4
Consultative Committee. This list must contain twice as many
names as there are vacant posts. Appointments are made by
the Council acting unanimously. The judges will have to
demonstrate a high level of expertise and experience in patent
law. The Consultative Committee will be appointed by the
Council and be made up of seven members, most of whom will
be former judges of the Court of Justice, the CFI or the CPC,
and possibly ‘lawyers of recognised competence’, all of whom
will be highly competent and impartial individuals.

1.2.5
Technical experts will assist the judges throughout the
handling of a case. They will be selected from the main scien-
tific and technological sectors that are subject to patent applica-
tions. There will be no Advocate-General.

1.2.6
The language of proceedings shall be that of the domi-
cile of the defendant or, where his country uses more than one
language chosen by
official Community language, an official
him. However, with the agreement of the Court, the parties
may choose any official language as the language of proceed-
ings; in the event of any appeals, these will be heard in the
language used at
instance. The parties present and
witnesses will, at the hearing, be able to speak in an official
language other than the language of proceedings; in this case,
translation and interpreting into the language of proceedings
will have to be provided.

first

1.2.7
of the CPC before the specialised appeal panel of the CFI.

The losing party can bring an appeal against a decision

Any revision of a final

judgement by the Court of
1.2.8
Justice will be subject to very strict and restrictive conditions,
for reasons of legal certainty; only fundamental new facts or
criminal acts that were a decisive factor affecting the decision
that became res judicata will constitute grounds for an appeal.

possible, be included in the future Rules of the Court and affect
the Statute, which is an integral part of the Treaties, as little as
possible. The main specific provisions planned for the patent
court are as follows:

— written and oral proceedings: more streamlined and flexible
than the Court of Justice, possible use of ICT; use of ICT,
such as video conferencing, is proposed;

— representation: the parties will be able to be assisted by
patent agents, chosen from the list of agents approved by
the EPO. Legal aid is planned in order to ensure access to
justice for all;

accompanied

— emergency, interim and penalty measures: possible at any
stage of the proceedings, even before the hearing; these
may include injunctions to act or to abstain from an act,
saisie-contrefaçon,
possibly
evidence protection, and any other emergency or interim
measure that flows from the application of Community law
on protection of industrial property and of the relevant
provisions of the WTO TRIPS agreements included in this
decision and other Community acts (1);

penalties,

by

— any decisions relating to disputes concerning the Com-
munity patent will have the enforcement order appended
directly by the relevant judicial panel and will be immedi-
ately applicable by the competent authorities of the country
or countries in which the decisions are to apply as soon as
they are requested to do so by the beneficiary of an interim
or final decision; the enforcement procedure will be that of
the country receiving the request;

— any request by the applicant

for interim measures that
would be financially prejudicial to the defendant before the
judgement will have to be accompanied by guarantees in
case his claims are not upheld;

— the decisions of the CPC will have to be listed in the Com-

munity Patent Register;

— only final decisions will be communicated to the Member

States.

Each Member State will designate a limited number
1.2.10
of national courts to hear disputes relating to the Community
patent brought during the transitional period. For the purposes
of enforcement in another Member State, the decisions of these
courts will be subject to the convention on jurisdiction and the
enforcement of judgments, subject to special provisions that
may be included in the future Regulation (2).

1.2.9
The main provisions for derogation from the current
rules of the Court of Justice and of its CFI logically flow from
the nature of the litigation and of the parties to the proceed-
ings, and also aim to avoid procedural delays and strengthen
judgements. They should, as far as
the legal certainty of

(1) EESC opinion 1385/2003 of 29.10.2003, Rapporteur: D. Retureau.
(2) Among the legal instruments already adopted with regard to civil
and commercial law with the Committee's approval, Regulation (EC)
No 44/2001 of 22 December 2000 on jurisdiction and the recogni-
tion and enforcement of judgments in civil and commercial matters
is worth mentioning, as it appears relevant to the matter in hand.

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1.2.11
A number of additional provisions concerning the
functioning of the court, its registry, and its staff are included
in the proposal; these provisions are logical, coherent, and in
line with the usual activities and responsibilities of a court of
this nature. Therefore, it does not seem worthwhile to look at
them one by one in this presentation of the proposed decision.

munity 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 consequences be drawn from
this, for example by the Court of Justice, to which the Commis-
sion could make a mandatory referral in cases where the CPC
has accepted an exception d'illégalité defence.

2. The Committee's comments

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

2.1.1
The CPC will handle disputes between private persons,
unlike the disputes usually handled by the Court, and will do
so in an area requiring specialised legal and technical knowl-
edge. Given that the CPC is attached to the CFI and consists of
two chambers of three first-degree judges and a president, and
incorporated
that a specialised appeal panel of three judges,
within the CFI, is created, the general rules on the operation of
courts are upheld. The Committee also supports the appoint-
ment of patent experts to assist the Court, rather than commis-
sioners or advocates-general; the Committee believes that this
will strengthen the authority and value of judgements.

2.1.2
The creation of a CPC attached to the CFI and of a
specialised appeal panel within the CFI of the Court of Justice
to handle cases relating to Community patents is necessary and
appropriate, given that it relates to a single Community indus-
trial property certificate: the future Community patent. The
advantage of
chambers dedicated exclusively to hearing
disputes relating to the Community patent both at first instance
and at second instance will be that parties to proceedings will
be able to settle their disputes more quickly and efficiently by
distinguishing this
litigation
handled by the CFI. The CFI will operate as an appeal body,
and in certain restricted cases the Court of Justice will be able
to act as a supreme body able to review previous decisions.

litigation from more general

This will offer owners of technological patents and
2.1.3
supplementary industrial property certificates all the appro-
priate procedural guarantees. The procedure will avoid referrals
back from the CFI to the CPC, and settlements between parties
will be possible before the Court, which will allow matters to
be settled more quickly. Matters other than validity and infrin-
gement will remain within the jurisdiction of national courts,
which is in line with the principle of subsidiarity.

The Committee considers that

2.1.4
the ability given to
private individuals to mount an indirect challenge to certain
Community 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 CPC the power to strike down the Com-

2.1.5
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 52-57
of the European Patent Convention. It would be appropriate to
make provisions for the Court of Justice to be able, where
necessary, to intervene subsequently as a revision body, in the
limited circumstances that would allow such a procedure.

It

is concerned about

The Committee would like the proposed CPC, for its
2.1.6
part, to give a measured interpretation, in line with the general
principles of judicial interpretation, of the conditions of patent-
ability in cases concerning the validity of a certificate, notably
with regard to the exclusions clearly stated in Articles 52 et seq.
future developments —
of the EPC.
parallel or divergent — of Community law and of the EPC, in
particular with respect to the independence of Community law
in relation to any changes that may be made to the EPC's provi-
sions on patentability in the future, and would like the
Commission quickly to propose arrangements for examining
and issuing Community patents that would guarantee the
supremacy of Community industrial property law with respect
to possible amendments at the CPC of the conditions of issue
and validity of the European patent by the EPO.

2.1.7
The Committee supports the provisions that allow
disputes to be resolved quickly, such as the possibility of settle-
ment before the court.

2.1.8
It considers the proposals presented by the Commis-
sion relating to the jurisdiction and the specific organisation of
the Court for cases relating to Community patents to be well
thought
through, well-constructed, balanced, and likely to
enable disputes to be resolved efficiently.

In the light of this, the Committee finds it all the more
2.1.9
regrettable that the Council was unable, on 11 March last year,
to make progress on the Regulation on the Community patent;
the Committee would once again emphasise the importance of
the creation of the Community patent as soon as possible, in
order to support the innovation and competitiveness of Euro-
pean businesses, and finds delays for linguistic or other reasons,
that are not fundamental in nature but could lead to excessive
costs that would negate the advantage of a Community patent,
to be unacceptable. All the Member States are parties to the
EPC, which has only three official
languages of application;
there is no reason to adopt more binding and more expensive
provisions for a Community patent.

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2.1.10
The Committee very much hopes, for the sake of
innovation and the creation of skilled jobs in Europe, that the
Council will quickly decide in favour of a low cost patent,
without excessive procedural costs or requirements that would
remove its attraction and effectiveness.

Specific comments

The CFI already has jurisdiction in disputes relating to
2.2
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 prop-
erty industrial certificates, and a specialised appeal panel within
the CFI for these certificates, in order to centralise litigation on
industrial property within the Community. However, this ques-
tion could be looked at in the more distant future, once the
patent court has gathered sufficient practical experience — say,
after 2013. This possibility of a wider jurisdiction is already
open to the CFI's judicial appeals panel. The Committee
supports this wholeheartedly.

2.3
The CPA proposed that, in addition to their high level of
expertise on the subject of patents, the appointed judges would
also have to have a wide knowledge of languages (as there will
not be one judge from each country); this provision of the CPA
was not retained by the Commission. The Committee regrets
this, as parties to proceedings, whether applicants or defen-
dants, should be able not only to be heard but also, as far as
possible, to have a chance of being understood in one of the
Community languages by at least one of the judges hearing the
case, notwithstanding the provision of specialised interpreting
for each hearing. All other things being equal, preference
should be given to judges who have mastery of several official
Community languages.

If matters relating to the ownership of the certificate
2.4
remain under national jurisdiction, it must be noted that the
matter of rights of salaried or contracted inventors is handled
differently in different countries. Out of concern for fairness,
and in order to avoid one-sided contracts on patent ownership
and the share or compensation paid to inventors, it would be

Brussels, 31 March 2004.

appropriate to seek further harmonisation of laws applicable to
the Community patent with regard to the rights of certain cate-
gories of inventor in relation to the owner of the certificate.
(Generally speaking, patents are applied for by businesses,
which retain the ownership rights; it is far less usual for the
application to be lodged by the actual inventor, who may, by
dint of contract or of national law, receive royalties for the use
of his invention, but often has no rights at all.)

the costs of examining,

The Committee notes with interest the Commission's
2.5
declaration that
issuing and main-
taining the Community patent will be 50 % lower than those
for the European patent; nonetheless, regulations on interme-
diation in Community patents
(advisers, patent attorneys)
should be introduced in good time to prevent significant distor-
tions in the real cost of obtaining a patent and to ensure that
applicants have access to properly qualified service providers.
The EPO list of approved intermediaries could be used as a
reference, but an indicative or mandatory scale of charges for
the various services could be considered. Similarly, the role and
fees of national patent or industrial property offices should be
taken into consideration, as should the possibility of approving
technical translators specialising in patents, always keeping in
mind quality and affordability of services.

if

the
The legislative financial statement shows that
2.6
parties are required to bear the costs of the proceedings, the
Council, voting on the schedule of fees by qualified majority,
will have to take into consideration the need for fair access to
justice, and not set amounts that might be a deterrent for indi-
viduals or SMEs. In any case, the Committee does not believe
that the costs of services to private persons can be covered by
these fees alone,
taking into consideration the CPC's draft
budget and the principle of keeping down the costs of
obtaining, keeping and protecting industrial property in
comparison with the European patent and the national patents
of the most developed non-EU countries. The Committee there-
fore hopes that the court fees for the first instance and for
appeals will remain low, in order to maintain the Community
patent's strategic advantage for the competitiveness of busi-
nesses, particularly Community SMEs.

The President

of the European Economic and Social Committee

Roger BRIESCH