N. 5, November 2002 
IP & RTD: Articles 
Community Patent Regulation - Background and current status
Mercedes García Pérez
Attorney. Howrey Simon Arnold & White, LLP, Brussels
 
The recent activity on the Community patent began in 1997 when, prompted by interested groups, the Commission commenced a broad consultation procedure on the subject with the publication of a Green Paper, together with a follow-up paper in which the Commission set out different initiatives. The proposal gained much needed political impetus and importance following the express realisation at the European Council Summit in Lisbon 2000, that an inexpensive, practical and enforceable Community patent right was a key part of the EU's goal to surpass the US in economic terms by 2010. Without such a right, it was argued, Europe would be at a competitive disadvantage in terms of R&D investment.

In August 2000, the Commission formally introduced its proposal for a Council Regulation on the Community patent, following the consultation procedure, which is used inter alia in areas where the Community lacks specific powers but action becomes necessary to achieve any objective of the Treaty of Rome. This is the case of all IP legislation, as the Treaty does not attribute legislative powers to the EU Institutions in this field (except for the negotiation of international agreements). With this legal basis, however, unanimity within the Council is required, which is key, because unless and until all nations are satisfied with the proposal, it gets delayed; and most of the issues holding up the proposal are very much national political issues.

The Council sent the Community patent proposal to the Parliament and to the ESC in September 2000. Although consultation to the ESC was not compulsory in this case, it was considered appropriate given the great importance of the proposed piece of legislation to the business community. The opinion of the ESC was published in May 2001, backing the Commission's proposal but expressing some concerns about the enforcement procedures, in particular as regards access to justice by small and medium-sized enterprises (SMEs). Meanwhile, the Committee on Legal Affairs of the European Parliament debated the draft report and issued the final Report on 26 February 2002. The Parliament as a whole accepted the proposal, and tabled some non-binding amendments relating inter alia to the position of national patent offices and languages under the proposed new regime.

Thus, the discussions are currently taking place at Council level only. The last discussions took place on 21 May 2002 on a compromise text prepared by the Spanish Presidency. However, there are no time limits and the Council is encountering difficulties in reaching an acceptable compromise.

There are four issues that remain controversial: (i) litigation and jurisdictional system applicable; (ii) language; (iii) the role of national patent offices; and (iv) membership of the European Patent Convention; the first two being the most controversial. Taking into account the considerable importance Member States attach to the jurisdictional system, the Council will continue its discussions on this issue, on the basis of further input from the Commission. Most of the debate revolves around whether there should be a central European patent court, and if so, what form it should take. Some nations propose national courts' jurisdiction at first instance, but such a proposal is unacceptable to many users because of the spread of experience, and inexperience, across EU courts in patent matters. There is concern that valuable patent rights could be lost in a court with relatively little patent experience.

As regards language, the European Patent Office (EPO), which would be the granting office for the Community Patent, currently works in three languages (English, French and German). An application may be filed in any one of these, although all claims must be translated into these three languages. For enforcement, however, a translation into the relevant language(s) has to be filed with the national offices, which is a significant burden.

Reaching a compromise on this issue is politically difficult. There are some countries where large parts of the patent profession earn their living via translation. In other countries, agreeing to "abandon" their language is not easy. But one of the main purposes of the Regulation is to reduce the cost of patent applications, and to do that, translation costs must be reduced.

Proposals have ranged from one language, to the three EPO languages, to all EU official languages (11, rising to 19!). The European Parliament has also suggested using the regime adopted for the Community Trade Mark, allowing filing in any official language with any one of 5 sub-official languages being nominated for the proceedings, including opposition. This is still unworkable for patents, because of the large amount of text included and because the EPO would be required to work in two further languages at least.

A sensible compromise has to be reached; otherwise, we will end up with a patent that is expensive to acquire and cumbersome to maintain. Users will vote with their wallets, and their feet, and simply not use it, with all that implies for the EU's economic aspirations.