CELEX: 62001CJ0131
Language: en
Date: 2003-02-13 00:00:00
Title: Judgment of the Court (Sixth Chamber) of 13 February 2003. # Commission of the European Communities v Italian Republic. # Failure by a Member State to fulfil its obligations - Article 49 EC - Freedom to provide services - Patent agents - Duty to be enrolled on the register of patent agents of the host Member State - Obligation to have a residence or place of business in the host Member State. # Case C-131/01.

Case C-131/01 Commission of the European CommunitiesvItalian Republic
            «(Failure of a Member State to fulfil obligations – Article 49 EC – Freedom to provide services – Patent agents – Obligation to be enrolled on the register of patent agents of the host Member State – Obligation to have a residence or place of business in the host Member State)»
            
               
                  Opinion of Advocate General Léger delivered on 12 September 2002 
                     
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                  Judgment of the Court (Sixth Chamber), 13 February 2003  
                     
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            Summary of the Judgment
         
         
                  1..
                  Freedom to provide services – Treaty provisions – Scope – Temporary nature of the activities provided – Criteria – Patent agents  (Art. 50 EC, third para.) 
         
                  2..
                  Freedom to provide services – Restrictions – Patent agents – Obligation to register in the professional register – Obligation to have a residence or a place of business – Not permissible  (Arts 49 EC to 55 EC) 
         
         1.
          The  
         temporary nature of the carrying-on of an activity providing services in the host Member State, within the meaning of the third paragraph
         of Article 50 EC, must be determined in the light, not only of the duration of the provision of the service, but also of its
         regularity, periodical nature or continuity, and the concept of  
         establishment within the meaning of the Treaty allows a Community national to participate, on a stable and continuous basis, in the economic
         life of a Member State other than his State of origin. The decisive criterion for the purposes of the application of the chapter of the Treaty concerning services to an economic
         activity is therefore the absence of stable and continuous participation by the person concerned in the economic life of the
         host Member State. In that regard, the activity of patent agents is capable of coming within the field of application of the Treaty chapter concerning
         the freedom to provide services. see paras 22-23, 25
         
         2.
          A Member State which retains rules requiring patent agents established in other Member States to be enrolled on the national
         register of patent agents and to have a residence or place of business in its territory, in order to provide services before
         the national Patent Office, that Member State has failed to fulfil its obligations under Articles 49 EC to 55 EC. see para. 48, operative part
      

      
      
      
      
      
      
      
      
      
      
      
      
      
      
      
            
            JUDGMENT OF THE COURT (Sixth Chamber)13 February 2003  (1)
         
         
            
         
               ((Failure by a Member State to fulfil its obligations – Article 49 EC – Freedom to provide services – Patent agents – Duty to be enrolled on the register of patent agents of the host Member State – Obligation to have a residence or place of business in the host Member State))
               
            In Case C-131/01, 
            
            
             Commission of the European Communities,  represented by B. Mongin and R. Amorosi, acting as Agents, with an address for service in Luxembourg,
            
            
            applicant, 
            
            v
             Italian Republic,  represented by U. Leanza, acting as Agent, and by O. Fiumara, avvocato dello Stato, with an address for service in Luxembourg,
            
            defendant, 
            
            APPLICATION for a declaration that, by retaining rules requiring patent agents established in other Member States to be enrolled
            on the Italian register of patent agents and to have a residence or place of business in Italy, in order to provide services
            before the Italian Patent Office, the Italian Republic has failed to fulfil its obligations under Articles 49 EC to 55 EC
            concerning the freedom to provide services,
            
            
            THE COURT (Sixth Chamber),,
            
            composed of: J.-P. Puissochet, President of the Chamber, R. Schintgen, C. Gulmann, F. Macken and J.N. Cunha Rodrigues (Rapporteur), Judges, 
            
            Advocate General: P. Léger, Registrar: R. Grass, 
            
            
            having regard to the report of the Judge-Rapporteur,
            
            after hearing the Opinion of the Advocate General at the sitting on 12 September 2002, 
         gives the following
         
         
         Judgment
         1
            
         By application lodged at the Registry of the Court of Justice on 21 March 2001, the Commission of the European Communities
         brought an action under Article 226 EC for a declaration that, by retaining rules requiring patent agents established in other
         Member States to be enrolled on the Italian register of patent agents and to have a residence or place of business in Italy,
         in order to provide services before the Italian Patent Office, the Italian Republic has failed to fulfil its obligations under
         Articles 49 EC to 55 EC concerning the freedom to provide services. 
         
            
               Italian legislation
            
         
         2
            
         Article 94 of Royal Decree No 1127 of 29 June 1939 regarding the law on patents (GURI No 215 of 7 August 1979, p. 6597), in
         the version thereof resulting from Decree No 338 of the President of the Republic of 22 June 1979 revising the national legislation
         relating to patents under Delegating Law No 260 of 26 May 1978 (hereinafter  
         Decree No 1127/39), provides: No one is required to be represented by an authorised agent in proceedings before the Central Patent Office; natural and legal
         persons may act therein through one of their employees, even though not authorised.Authority to act for others may be conferred only on agents whose names appear on the register kept for that purpose by the
         Office.Authority may in addition be conferred on a lawyer or attorney enrolled with their respective professional bodies.
         
         
         3
            
         Article 2 of Decree No 342 of the Italian Republic of 30 May 1995 governing the organisation of the profession of industrial
         property agents and the keeping of the appropriate register (GURI No 192 of 18 August 1995, p. 15, hereinafter  
         Decree No 342/95), makes enrolment on the Italian register of patent agents subject to the following conditions: There may be enrolled on the register of recognised industrial property agents natural persons who:...
         
         (c)
         have their residence or a place of business in Italy, unless they are nationals of a State which permits enrolment of Italian
         nationals on its register without such a condition; 
         
         
         (d)
         have passed the qualifying examination mentioned in Article 6 or the aptitude test for industrial property agents provided
         for by the second paragraph of Article 6 of Decree-Law No 115 of 27 January 1992.
         
         
         
         4
            
         The second paragraph of Article 6 of Decree-Law No 115 of the Italian Republic of 27 January 1992 implementing Council Directive
         89/48/EEC of 21 December 1988 on a general system for the recognition of higher-education diplomas awarded on completion of
         professional education and training of at least three years' duration (GURI No 40 of 18 February 1992, p. 6, hereinafter 
         
         Decree-Law No 115/92), provides: Recognition [of diplomas of professional education and training obtained in the European Community] is subject to the passing
         of an aptitude test for those in the professions of lawyer, accountant or industrial property agent.
         
         
         5
            
         Under the first paragraph of Article 13 of Decree-Law No 115/92,  
         [t]he decree recognising the diploma of professional education and training gives the person concerned the right to join the
         profession and to practise it, in compliance with the conditions imposed by the legislation in force on Italian nationals,
         apart from the requirements concerning professional education, training and qualifications. 
         Pre-litigation procedure
         
         6
            
         By letter of formal notice of 29 July 1998, the Commission informed the Italian Government that it considered that Article
         94 of Decree No 1127/39 and Article 2 of Decree No 342/95 were incompatible with Articles 49 EC to 55 EC and requested that
         Government to send it its observations in that regard. 
         
         
         7
            
         According to the Commission, it is excessive to require patent agents established in other Member States where they are lawfully
         practising their profession to be enrolled on the Italian register of patent agents after passing an aptitude test and to
         acquire a residence or a place of business in Italy, even where their practice before the Italian Patent Office is only sporadic
         and occasional.  Such requirements are neither justified by an overriding reason in the public interest nor proportionate
         to the aim pursued, and therefore constitute an unwarranted obstacle to the freedom to provide services. 
         
         
         8
            
         Since it considered the Italian authorities' reply insufficient, the Commission sent them, on 4 August 1999, an additional
         letter of formal notice in which it repeated its complaints, adding that the second paragraph of Article 6 and the first paragraph
         of Article 13 of Decree-Law No 115/92 are contrary to Council Directive 89/48/EEC of 21 December 1988 on a general system
         for the recognition of higher-education diplomas awarded on completion of professional education and training of at least
         three years' duration (OJ 1989 L 19, p. 16), since they make even the occasional and irregular practice of the profession
         of patent agent subject to the passing of an aptitude test.  
         
         
         9
            
         In their reply of 12 October 1999, the Italian authorities disputed the truth of the alleged failure to fulfil obligations.
         
         
         
         10
            
         On 17 February 2000, the Commission issued a reasoned opinion by which it requested the Italian Republic to adopt the measures
         necessary to comply with that opinion within a period of two months from the date of its notification. 
         
         
         11
            
         By letter of 14 November 2000, the Italian authorities informed the Commission that they remained of the same view.  They
         claimed, in particular, that the aptitude test provided for by Decree-Law No 115/92 complied with the last sentence of Article
         4(1) of Directive 89/48 and that it was justified, among other things, in order to avoid any discrimination against Italian
         patent agents. 
         
         
         12
            
         Dissatisfied with the Italian Government's reply, the Commission decided to bring this action. 
         The actionThe regime of compulsory enrolment on the Italian register of patent agents
         Arguments of the parties
         
         
         13
            
         The Commission points out that the regime of compulsory enrolment on the Italian register of patent agents, as laid down by
         Italian law, precludes patent agents who are lawfully practising their profession in another Member State in which they are
         established from occasionally and temporarily acting as agents before the Italian Patent Office on behalf of clients who have
         instructed them, if they are not enrolled on that register. 
         
         
         14
            
         The Commission contends that, while the Italian Republic may fix the rules applying to patent agents who establish themselves
         in its territory, the application of those same rules to patent agents established in other Member States who intend to practise
         occasionally and temporarily in Italy and whose profession is already regulated in the Member State of origin represents an
         obstacle to the freedom to provide services for the purposes of Article 49 EC. 
         
         
         15
            
         The Commission observes, in that regard, that, according to the Court's case-law, the principle of freedom to provide services
         may be restricted only by legislation justified by the public interest, to the extent that such interest is not protected
         by the rules to which the service provider is subject in the Member State in which he is established.  In addition, such restrictions
         must be objectively necessary in order to guarantee compliance with professional rules of conduct and ensure protection of
         the interests which is the purpose thereof.  It is for the Member State concerned to demonstrate the necessity and proportionality
         of the restrictions on the freedom to provide services.  No such evidence has been adduced in this case. 
         
         
         16
            
         The Italian Government maintains, primarily, that the patent agents' activity of representing inventors before a national
         patent office is, by its very nature, neither occasional nor temporary within the meaning of Article 50 EC, so that such activity
         does not come within the field of application of the provisions of the EC Treaty on the freedom to provide services. 
         
         
         17
            
         The activity of filing and registering an invention cannot constitute an occasional service, but extends over a long period.
          Such activity involves a continuous relationship with the office concerned throughout the period of examination (requests
         for clarification from the office, filing of responses, amendment of the application, etc.), which is concluded by the decision
         to grant or refuse the patent.  Thus, the activity of representation extends over several years. 
         
         
         18
            
         The Italian Government submits that it is unreasonable to think that an inventor is going to instruct a patent agent to file
         a patent application as a single act, and then himself complete, or instruct another patent agent to complete, the examination
         procedure which follows and which requires the utmost professionalism.  It is, in fact, a complex service requiring regular,
         periodical and continuous attendances. 
         
         
         19
            
         Even if the activity in question could be carried on on a temporary basis within the meaning of Article 50 EC, the Italian
         Government submits that compulsory enrolment on the Italian register of patent agents, which is subject to the passing of
         an exam, is intended to protect the public interest inherent in the protection of the interests of recipients of the services
         concerned. 
         
         
         20
            
         In the first place, without systematic enrolment on that register, the competent Italian authorities could not keep a check
         on the occasional nature of the activity carried on by a patent agent established in another Member State, in view of the
         number of applications submitted to the Italian Patent Office.  Furthermore, if a check was made in a particular case, the
         owner of the invention would run the risk of seeing his application struck out, which would seriously prejudice his interests.
          Secondly, the Italian legislation in question enables a check to be kept on the competence of patent agents with a view to
         protecting the recipients of the services they provide against the damage which can be caused by legal advice from those without
         the requisite professional and ethical qualifications. 
         Findings of the Court
         
         
         21
            
         It is appropriate, first, to examine whether the Italian Government's assertion that the activity of patent agents does not
         come within the Treaty provisions concerning the freedom to provide services because it cannot be carried on on a  
         temporary basis in the Member State where the services are provided is well founded. 
         
         
         22
            
         It is clear from the Court's case-law that the  
         temporary nature of the carrying-on of an activity in the host Member State, within the meaning of the third paragraph of Article 50
         EC, must be determined in the light, not only of the duration of the provision of the service, but also of its regularity,
         periodical nature or continuity, and that the concept of  
         establishment within the meaning of the Treaty allows a Community national to participate, on a stable and continuous basis, in the economic
         life of a Member State other than his State of origin (Case C-55/94  
          Gebhard  [1995] ECR I-4165, paragraphs 25 and 27). 
         
         
         23
            
         The decisive criterion for the purposes of the application of the chapter of the Treaty concerning services to an economic
         activity is the absence of stable and continuous participation by the person concerned in the economic life of the host Member
         State. 
         
         
         24
            
         Although the representative activity of a patent agent before a national patent office, consisting among other things of the
         filing and pursuit of patent applications and their protection, includes a series of activities which extend over a period
         of time, it could not be said that such activity necessarily involves a stable and continuous participation in the economic
         life of the host Member State.  In addition, there is nothing to prevent a client instructing a patent agent with a view to
         a single action or several occasional actions connected with the carrying-on of the activity in question.  The disadvantages
         which such a step would, according to the Italian Government, involve are irrelevant to whether the activity in question is
         to be regarded in the host Member State as a provision of services for the purposes of Community law. 
         
         
         25
            
         Therefore, the activity of patent agents is capable of coming within the field of application of the Treaty chapter concerning
         the freedom to provide services. 
         
         
         26
            
         Furthermore, as the Court has held on many occasions, Article 49 of the EC Treaty requires not only the elimination of all
         discrimination on grounds of nationality against providers of services who are established in another Member State but also
         the abolition of any restriction, even if it applies to national providers of services and to those of other Member States
         alike, which is liable to prohibit, impede or render less advantageous the activities of a provider of services established
         in another Member State where he lawfully provides similar services (see, among others, Case C-58/98  
          Corsten  [2000] ECR I-7919, paragraph 33).  
         
         
         27
            
         The requirement imposed on patent agents established in a Member State other than the Italian Republic who wish to provide
         services in the latter State to be entered on the Italian register of patent agents constitutes a restriction within the meaning
         of Article 49 EC (see particularly, to that effect,  
          Corsten , cited above, paragraph 34). 
         
         
         28
            
         Even if there is no harmonisation in the field, such a restriction on the fundamental principle of freedom to provide services
         can be based only on rules justified by overriding requirements relating to the public interest and applicable to all persons
         and undertakings operating in the territory of the State where the service is provided, in so far as that interest is not
         safeguarded by the rules to which the provider of such a service is subject in the Member State where he is established (see,
         among others,  
          Corsten , paragraph 35).  
         
         
         29
            
         The Italian rules in question are intended to guarantee the quality of the services provided by patent agents and to protect
         those who have commissioned such services.  While such objectives constitute overriding requirements relating to the public
         interest capable of justifying a restriction on freedom to provide services, it is also necessary, in accordance with the
         principle of proportionality, that the application of national rules of a Member State to providers of services established
         in other Member States be appropriate for securing attainment of the objectives which they pursue and not go beyond what is
         necessary in order to attain them (see, among others, Case C-76/90  
          Säger  [1991] ECR I-4221, paragraphs 15 to 17, and  
          Corsten , paragraphs 38 and 39). 
         
         
         30
            
         However, as the Commission has correctly pointed out, the professional aptitude test required for the compulsory enrolment
         of patent agents on the Italian register does not differentiate between providers of services whose professional competence
         and qualities have been subject to scrutiny in the Member State of origin and those who have not been subject to such scrutiny.
         
         
         
         31
            
         In addition, as the Advocate General pointed out at paragraph 45 of his Opinion, other less restrictive measures could have
         been adopted in order to achieve the objectives legitimately pursued by the Italian Republic. 
         
         
         32
            
         Consequently, even if the Italian legislation in question applies irrespective of the nationality of the providers of services
         and appears to be appropriate to ensure the attainment of the objectives consisting in the protection of those who commissioned
         the services provided, it goes beyond what is necessary to attain those objectives. 
         
         
         33
            
         In those circumstances, the first complaint is well founded. 
         The complaint relating to the obligation to have a residence or place of business in Italy
         Arguments of the parties
         
         
         34
            
         The Commission claims that in so far as Article 2 of Decree No 342/95 requires, for enrolment on the register of patent agents
         authorised to practise their profession in Italy, a residence or place of business in that Member State, except in the case
         of nationals of States which permit the enrolment of Italian citizens on their own registers without such a condition, it
         entails an unjustified obstacle to the principle of freedom to provide services. 
         
         
         35
            
         Firstly, a patent agent established in another Member State would be dissuaded from occasionally providing services in Italy
         since it would be difficult for him to equip himself with a permanent business infrastructure in the host Member State.  None
         of the arguments put forward by the Italian Government could justify such a restriction on the freedom to provide services.
         
         
         
         36
            
         Secondly, the condition of reciprocity, by virtue of which the Italian Republic is disposed to observe Community law only
         in its relations with the Member States which do not require the same residence obligation, is not acceptable in the light
         of Community law (see, among others, Case C-232/78  
          Commission  v  
          France  [1979] ECR 2729 and Case C-101/94  
          Commission  v  
          Italy  [1996] ECR I-2691). 
         
         
         37
            
         The Italian Government observes that the obligation to have a business address in Italy serves, in accordance with its national
         legislation, to determine the court which has territorial jurisdiction over proceedings between a party claiming nullity or
         invalidity of a patent and the owner and/or the licensees thereof and/or those claiming under them. Such obligation is not
         only lawful but is also in accordance with the public interest relating to the legal system. 
         
         
         38
            
         The Italian Government states that the obligation to have a place of business in Italy is satisfied by giving a mere address
         for service in Italy: it is not necessary to transfer residence or set up business in Italy.  The requirement of an address
         for service is, in view of the minimal and economically insignificant costs, completely justified and proportionate to the
         overriding reasons of public interest constituted by the protection of recipients of the services in question and the proper
         functioning of the legal system. 
         
         
         39
            
         Finally, as regards the condition of reciprocity, the Italian Government observes that it should be interpreted as expressing
         the will of the Italian legislature to anticipate future situations in which agreements with non-member states or Community
         rules and agreements between the Community and non-member states allow the matter to be regulated differently.  The Italian
         Government, while appearing to be disposed to amend the said condition, submits that it is really a marginal question. 
         Findings of the Court
         
         
         40
            
         It is appropriate to point out, at the outset, that Article 2 of Decree No 342/95 expressly states that only natural persons
         who have  
         their residence or a place of business in Italy, unless they are nationals of a State which permits enrolment of Italian nationals on its national register without such
         a condition, may be enrolled on the Italian register of patent agents. 
         
         
         41
            
         Therefore, the Italian Government's argument that enrolment on the Italian register of patent agents merely requires an address
         for service in Italy, cannot be accepted. 
         
         
         42
            
         With regard to the obligation to have a residence or place of business within the meaning of Article 2 of Decree No 342/95,
         the requirement that a patent agent, already established and qualified in another Member State and wishing to supply services,
         have a residence or a place of business in the host Member State constitutes a restriction of the freedom to provide services
         (see particularly, to that effect, Case 252/83  
          Commission  v  
          Denmark  [1986] ECR 3713, paragraph 18). 
         
         
         43
            
         Such a requirement may be regarded as compatible with Articles 49 EC and 50 EC only if it is established that in the field
         of activity concerned there are imperative reasons relating to the public interest which justify the restrictions on the freedom
         to provide services, that the public interest is not already protected by the rules of the State of establishment and that
         the same result cannot be obtained by less restrictive rules (see, in particular,  
          Commission  v  
          Denmark , cited above, paragraph 19).  
         
         
         44
            
         The need to determine which court has territorial jurisdiction over proceedings relating to patents registered in Italy as
         well as concern to ensure the efficient conduct of such proceedings may be pleaded as overriding reasons of public interest
         capable of justifying restrictions on the freedom to provide services. 
         
         
         45
            
         However, the requirement to have a residence or place of business in Italy goes, on any view, beyond what is necessary to
         attain those objectives, since the Italian Republic could have adopted less restrictive measures to achieve those objectives.
         
         
         
         46
            
         With regard to the condition of reciprocity also provided for by Article 2 of Decree No 342/95, where there is no indication
         that it does not apply to service providers established in other Member States, it is sufficient to observe that, in accordance
         with the Court's case-law (see  
          Commission  v  
          France , cited above, paragraph 9; Case 325/82  
          Commission  v  
          Germany  [1984] ECR 777, paragraph 11, and  
          Commission  v  
          Italy , cited above, paragraph 27), a Member State cannot plead failure to observe the principle of reciprocity or rely on a possible
         infringement of the Treaty by another Member State to justify its own default.  
         
         
         47
            
         Accordingly, the second complaint is also well founded. 
         
         
         48
            
         In those circumstances it must be declared that, by retaining rules requiring patent agents established in other Member States
         to be enrolled on the Italian register of patent agents and to have a residence or place of business in Italy, in order to
         provide services before the Italian Patent Office, the Italian Republic has failed to fulfil its obligations under Articles
         49 EC to 55 EC. 
         
         Costs
         49
            
         Under Article 69(2) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been
         applied for in the successful party's pleadings. Since the Commission has applied for costs and the Italian Republic has been
         unsuccessful in its pleas, the latter must be ordered to pay the costs.  
         
         On those grounds, 
         
         
         
            
            THE COURT (Sixth Chamber)
         
         
         hereby:  
         
            
            1.
             Declares that by retaining rules requiring patent agents established in other Member States to be enrolled on the Italian
            register of patent agents and to have a residence or place of business in Italy, in order to provide services before the Italian
            Patent Office, the Italian Republic has failed to fulfil its obligations under Articles 49 EC to 55 EC; 
            
            
            2.
             Orders the Italian Republic to pay the costs. 
            
            
                  Puissochet
               
               
                  Schintgen 
               
               
                  Gulmann 
               
            
                  Macken
               
               
                  Cunha Rodrigues 
               
               
                  
               
            
                  
               
               
                  
               
               
                  
               
            
                  
               
               
                  
               
               
                  
               
            
                  
               
               
                  
               
               
                  
               
            
            
            
            
            
            
            
            
         
         
         Delivered in open court in Luxembourg on 13 February 2003. 
         
         
         
         
                  R. Grass 
               
               
                  J.-P. Puissochet  
               
            
         
         
         
                  Registrar
               
               
                  President of the Sixth Chamber
               
            
      
      
          1 –
            
             Language of the case: Italian.