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  N. 13, Feb - Mar 2004 
IP & RTD: Articles 

Proposal for a Decision of the Council attributing jurisdiction to the Court of Justice regarding community patent disputes

 
Manuel E. Morán García.

Professor of Private International Law.

University of Alicante.




1. On 23 December 2003, the community authorities, in keeping with the season's festivities, left a gift at the door of European industry. Document COM (2003) 827 was published, including the Proposal for a Decision of the Council attributing jurisdiction to the Court of Justice regarding community patent disputes. As with nearly all Christmas presents, the announcement wasn't exactly what the internal market needed, but it did nevertheless brighten the future prospects of European industry as regards world competition.

The basic reasoning is simple. Europe needs a legal patent protection system which provides incentives for innovation, in the context of the Information Society and global competition. Such a system should involve the following elements. Firstly, a rapid, simple and economic mechanism for issuing patents. Secondly, this mechanism should grant a title providing uniform protection throughout the region. Thirdly, said uniform protection must be effective, meaning that it should have a dispute resolution system which is truly effective and not fragmented State by State.

2. This is not presently the case. More than forty years after the signature of the Treaty of Rome, companies operating within the internal market continue without a unitary innovation protection right being provided through patents. Said protection can only be obtained through two systems, neither of which is based on a supranational legal instrument: national systems and the so-called "European patent" system, based on the Munich Convention of 19731.

The result of this combination enables us to confirm that, out of the three basic elements set out above, it is the lack of an effective mechanism for resolving disputes which constitutes the fundamental obstacle for the adequate legal protection of inventions in Europe. Concerning the first element, the European Patent Office does satisfactorily fulfil its function in terms of quality of work and the value of the protection certificate issued. With respect to the second, achieving uniformity as regards the protection title isn't so urgent due to important material harmonization and the multilateral orientation existing in European states' patent legislation2.

3. If an effective mechanism for dispute resolution were not found, any system for the protection of inventions by patents would fail in its primary function: converting Europe into the most competitive economy by the year 20103.

The difficulties in reaching a political agreement on this issue, together with other problems such as the so-called linguistic problem and excessive costs, have lead to the community patent being postponed4. The reaction to this Achilles' heel of the internal market leads us to analyse the Proposal for a Decision of the Council attributing jurisdiction to the Court of Justice on disputes regarding the community patent and the future prospects opened up by the combination of the latter with the Proposal for a Regulation of the Commission on the Community Patent5.

4. The concrete objective of the Proposal for a Decision of the Council is to establish a court called the "Community Patent Court", attached to the ECJ. This specialised court would act as a first instance court, with a broad range of exclusive competencies in disputes regarding the Community patent.

A second Decision, the proposal of which should be presented by the Commission, will complete the system with two types of appeals (Legislative Budget Sheet, paragraph 1). Firstly, the decisions of this specialised body could be appealed before the Court of First Instance. Secondly, the possibility exists for an exceptional appeal to be made to the ECJ, in the event that there is a serious risk of harming the unity or coherence of Community Law (Considering 7 of the Council's Proposal).

5. The above point of the Council's Proposal contemplates the gradual implantation of a new jurisdictional system as agreed upon by the Council itself, in its common political statement of 3 March 2003 (available at www.cde.ua.es). The Community Patent Court would assume its exclusive competencies (art.1) by 2010 at the latest, following a transitional period during which the national courts would retain their jurisdiction in the field (art. 2 and Considering 3).

In order to ensure that the transfer of competencies is the least traumatic possible, the future Regulation on the Community Patent will include provisions requesting each Member State to designate, to such effects, a limited number of national courts to exercise the competencies that, at the end of the transitional period, will be attributed to the Community body. The disputes that are under way at that time will not come under the Community Patent Court's jurisdiction. Thus, the national courts before which they were presented would decide such cases.

6. Once established, in accordance with art.1 of the Proposal for a Decision of the Council, the specialized patent court of the Court of Justice will have exclusive jurisdiction, in parallel to art.30 of the Proposal for a Regulation on the Community Patent, over the following disputes:

  1. The infringement or validity of community patents and community certificates of addition. The particular legal actions for resolving such disputes are referred to the future Regulation on the Community Patent. According to the Proposal for a Regulation of the Commission, such actions would be: an infringement action (arts. 33 and 43), an action for declaration of non-infringement (art. 34), an embargo or other sanctions regarding the production of objects which infringe a community patent (art. 43), an invalidity action (art. 31), or a counterclaim for a declaration of invalidity (art. 32).

  2. Using an invention after publication of a community patent application or the rights based on the prior use of an invention. On the one hand, arts. 11 and 35 of the Proposal for a Regulation provide for the possibility of requesting reasonable indemnisation from any third party that, between the date of publication and grant of a community patent application, has exploited the invention as would be prohibited under the initial grant. On the other hand, arts. 12 y 36 of the Proposal for a Regulation establish rights based on the prior use of the invention: if the invention has been used prior to the presentation date of the community patent, the prior user would have the right to continue using the invention for the purposes of its company and to enforce its rights against the community patent or Community certificate of addition.

  3. Provisional measures and measures for the protection of proof as regards the attributed jurisdiction. The attribution of exclusive jurisdiction to the Community Patent Court as regards provisional measures is not limited to ordering provisional measures in pending cases, but encompasses the adoption of such measures even before the main action has begun.

  4. Indemnisation for damage relating to the situations set out in letters a, b y c. Art. 44 of the Proposal for a Regulation on the community patent sets out the applications belonging to this category. These include applications for damages from the holder of the community patent in the event of infringement of the latter, or applications by third parties against the patent holder, in the event that the latter exercises his rights inappropriately. The Proposal for a Decision of the Council refers, in addition, to claims for indemnisation for harm caused by the provisional measures for the protection of proof, both in the proceedings before the Community Patent Court and the appeals pending before the Court of First Instance.

  5. The imposition of coercive fines in case of failure to respect a decision or order that constitutes an obligation to act or to abstain from acting. The Community Patent Court has jurisdiction to impose coercive fines for failure to respect its decisions or orders. In a field like the patent field, in which speed is key to the adequate administration of justice, if these orders had to first pass through the courts of the member States, they would be delayed in such a way as to make it impossible to guarantee the effectiveness of the decisions of the Community body.

7. In order to guarantee that the system functions correctly, whenever the national courts are presented with actions on subjects which are the exclusive competency of the Community Patent Court, they should be automatically declared incompetent (art. 51.1 of the Proposal for a Regulation of the Commission on the Community Patent).

As regards cases in which the Community Court isn't exclusively competent, and the Proposal for a Regulation does not provide specific solutions, the national courts would come into play. Given the amplitude of the competencies exclusively attributed to the Community Court, the national courts would intervene in cases where the actual patent right is in question, cases of infringement of patent licenses or any other means of transferring a patent (art. 46 of the Proposal for a Regulation).

8. A few brief considerations in form of conclusion. As expressed in paragraph 5 of the Explanatory Statement and in paragraph 5 of the paragraph 5 of the Legislative Budget Sheet, the Proposal for a Decision of the Council forms part of a much larger global project: establishing the Community Patent. It is a legal system for the protection of inventions that can be enforced before a single court, with uniform rules and decisions affecting the whole Community.

The complexity implied by the coexistence of the national patent, the European patent and the "no nata" Community patent is a real revolution for the competitiveness of European companies. The implantation of a real community patent system with an adequate geographical scope and providing, among others, a minimum of ease of obtention and legal security would be a considerable advance. Its implantation would generate benefits for community companies, in particular for SMEs, would have a positive impact on inventions, and would improve the competitive position of European industry worldwide.

9. Setting up a Community Patent Court is a key element in this system. Firstly, it would enable possible contradictions to be avoided which might otherwise lead to the multiplication of national precedents within the European patent system. Secondly, it would guarantee the uniform execution of the legal decisions regarding the Community patent throughout the EC. Thirdly, only a centralised community legal body can guarantee uniformity of the Law and the coherence of jurisprudence, absolutely essential requirements for resolving the lack of legal security presented by patent law in Europe at this time. Without such security, it is highly difficult to calculate and compensate the costs - in the context of today's researchers, always high - of the research and development process which precedes obtaining a patent.





1. European Patent Convention signed in Munich 5 October 1973. In force in Spain as from 1 October 1986, B.O.E. 30 September 1986. («)


2. C. OTERO GARCÍA-CASTRILLÓN, Las patentes en el comercio internacional, Madrid, Dykinson, 1997.(«)


3. Vid. document COM (1999) 42 final, of 5 February 1999, and the Conclusions of the Lisbon European Council of 23 March 2000, available at www.uaipit.com («)


4. Vid. G. CAÑAS, "El desacuerdo sobre la patente comunitaria dificulta el despegue de la investigación", at www.elpais.es visited 12 June 2001.(«)


5. Proposal for a Regulation of the Council on the Community Patent, COM (2000) 412 - C5-0461/2000 - 2000/0177(CNS). D.O.C.E., C 337, of 28 November 2000. («)