Patents

Community Patent Overview

John Lambert

2 March 2004
 

On 7 March 2003 the Council of the European Union adopted a common political approach on the introduction of a "Community patent". A Community patent is intended to be a European patent granted by the European Patent Office ("EPO") under the provisions of the European Patent Convention ("EPC") designating the EC as a whole rather than individual member states. It will have unitary transferred, revoked or allowed to lapse in respect of EC as a whole. The patent will have an autonomous character subject only to the provisions of the EPC and supplementary implementing Community legislation.
History
A Convention for the European Patent for the Common Market ("Community Patent Convention") was signed at Luxembourg on 15 Dec 1975 but never implemented. The reason why it was never implemented is that it was ratified by an insufficient number of contracting parties. One of the countries that did ratify the Convention was the United Kingdom. S.86 (1) of the Patents Act 1977 gave effect to all rights, powers, liabilities, obligations and restrictions created by or arising under that Convention. The reason why other contracting parties found difficulty with the Convention was, first, the question of jurisdiction and, secondly, the impracticality of dealing with a multiplicity of Community languages. The jurisdiction issue was addressed by an Agreement relating to Community Patents which was entered at Luxembourg on 15 Dec 1998. This required member states to designate national courts as Community patent courts with appeal to a Common Appeal Court. The original Convention was supplemented by a Protocol on the Settlement of Litigation concerning the Infringement and Validity of Community Patents, ("the Protocol on Litigation"), a Protocol on Privileges and Immunities of the Common Appeal Court and a Protocol on the Statute of the Common Appeal Court.
Proposed Regulation
Practical difficulties preventing implementation remained even after the Agreement. In June 1997a different approach was suggested by the Commission in a green paper entitled "Promoting Innovation through Patents". The Commission canvassed the adoption by the EU Council of a Community patent regulation under art. 235 of the Treaty of Rome on the same lines as the Community trade mark and design regulations. This was analysed at the time by an article by John Lambert that appeared in the NIPC newsletter in October 1997. There was widespread consultation throughout the EC, including the UK, which indicated general support for the proposal. A draft regulation was proposed by the Commission on 1 Aug 2000. This proposal advocated, among other things, a single Community intellectual property court with jurisdiction over infringement and validity. These proposals were refined by the Commission in a working document on the planned Community patent jurisdiction published on 30 Aug 2002. The member states reached a common political position with regard to the Community patent on 3 March 2003. On 4 Feb 2004 the Commission proposed that the European Court should have exclusive jurisdiction on infringement, validity and certain other issues relating to the Community patent and that such jurisdiction should be exercised by a new Community Patents Court with a right of appeal to the Court of First Instance.
Common Political Approach
The Council addressed five issues in its announcement of a common political  approach on 5 March 2003:

	jurisdiction
	languages
	costs
	the role of national patent offices, and
	payments to national patent offices.

In the short term, the Commission envisages that member states will designate national courts as Community patent courts. However, from 2010 at the latest, there will be a single unitary court, attached to the Court of First Instance, consisting of judges with a high level of expertise in patent law supported by technical experts. Such court will have exclusive jurisdiction in infringement, validity, limitation and related issues.

The language regime will be the same as in the EPO up to grant. Applicants for patents will be allowed to file applications in other Community languages provided that there is a translation into English, French or German which is to be met from public funds. However, patent claims must be translated into each of the official Community languages, unless a member state waived that requirement in respect of its own language, and filed with the EPO at the applicant's expense.

The fees for processing a patent application will be uniform regardless of whether the examination is carried out by the EPO or a national patent office. Renewal fees will be no greater than those for an average European patent.
Although the EPO will alone be responsible for examining and granting Community patents, national patent offices may receive Community patent applications and carry out novelty searches on the EPO's behalf upon an applicant's request. National patent offices will be compensated by a half share of renewal fees for their work on the EPO's behalf.
The functioning of the Community patent system will be reviewed 5 years after the grant of the first Community patent.
Implementation
There is still considerable work to be done. The press release announcing the Community patent does not envisage the first grant being made before 2008.

Important