Legal provisions of COM(2003)827 - Proposal for a Council Decision conferring jurisdiction on the Court of Justice in disputes relating to the EC patent - Main contents
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This page contains a limited version of this dossier in the EU Monitor.
| dossier | COM(2003)827 - Proposal for a Council Decision conferring jurisdiction on the Court of Justice in disputes relating to the EC patent. |
|---|---|
| document | COM(2003)827  |
| date | December 23, 2003 |
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52003PC0827
Proposal for a Council Decision conferring jurisdiction on the Court of Justice in disputes relating to the Community patent /* COM/2003/0827 final - CNS 2003/0326 */
Proposal for a COUNCIL DECISION conferring jurisdiction on the Court of Justice in disputes relating to the Community patent
(presented by the Commission)
Table of Contents
EXPLANATORY MEMORANDUM
1. Background
2. The Community patent
3. The Community patent jurisdiction
4. Transitional period
5. Need for a Community intervention
6. Proposed Provisions
COUNCIL DECISION conferring jurisdiction on the Court of Justice in disputes relating to the Community patent
LEGISLATIVE FINANCIAL STATEMENT
Title of action: Proposal for a Council decision conferring jurisdiction on the Court of Justice in disputes relating to the Community patent
1. BUDGET LINE(S) + HEADING(S)
2. OVERALL FIGURES
3. BUDGET CHARACTERISTICS
4. LEGAL BASIS
5. DESCRIPTION AND GROUNDS
5.1. Need for Community intervention
5.1.1. Objectives pursued
5.1.2. Measures taken in connection with ex ante evaluation
5.2. Action envisaged and budget intervention arrangements
5.3. Methods of implementation
6. FINANCIAL IMPACT
7. IMPACT ON STAFF AND ADMINISTRATIVE EXPENDITURE
8. FOLLOW-UP AND EVALUATION
8.1. Follow-up arrangements
8.2. Arrangements and schedule for the planned evaluation
9. ANTI-FRAUD MEASURES
IMPACT ASSESSMENT FORM THE IMPACT OF THE PROPOSAL ON BUSINESS WITH SPECIAL REFERENCE TO SMALL AND MEDIUM-SIZED ENTERPRISES( SMEs)
Contents
Title - of proposal
Document reference number
The proposal
The impact on business
Consultation
EXPLANATORY MEMORANDUM
1. Background
In the Community, patent protection has long been provided for in two ways, neither of which is based on a Community instrument: National patents are granted by national patent offices on the basis of legislation of the respective Member State. The protection conferred is limited to the territory of that Member State and in case of dispute the patent right has to be enforced before the competent national courts. European patents are granted by the European Patent Office established by the Convention on the Grant of European Patents (European Patent Convention) of 5 October 1973 providing for substantive patent law and a single procedure of grant. Once granted, the European patent confers protection on the territory of those Contracting States which are designated by the right holder. Whereas the harmonised patent law of the European Patent Convention is essentially limited to the phase up to the grant of the European patent, its effects are determined according to the respective national patent law of each designated Contracting State. In case of dispute, litigation must also take place before the competent national courts. This situation, where the patent right is only granted in or with effect for individual Member States of the European Union including for the right holder the risk to be forced to enter into multiple litigation in a number of Member States on the same patent issue with possibly even variable results has long been criticised as inappropriate and unsuitable for the needs of the European industry operating within the common market. Member States have already in the past undertaken great efforts to redress this situation in a Community context. The Community Patent Convention intending to create a unitary Community patent title was signed on 15 December 1975 in Luxembourg followed by the 15 December 1989 agreement relating to the Community patent including a protocol on the settlement of litigation concerning the infringement and validity of Community patents. However these agreements never entered into force.
2. The Community patent
The European Council held in Lisbon in March 2000 launched a general programme to increase the competitiveness of the Union's economy and took up the issue again. As one concrete measure for improvement, the Council called for the creation of a Community patent system to address existing shortcomings in the legal protection for inventions thus giving an incentive for investments in research and development and contributing to the competitiveness of the economy as a whole. In the wake of the Lisbon European Council, the Commission put forward on 1 August 2000 a proposal for a Council regulation on the Community patent [COM(2000) 412 final] containing the relevant provisions applying to Community patents, in particular the provisions for the creation of a unitary Community patent title including the rights conferred by it, the possible actions for the enforcement of these rights, the grounds for invalidity as well as the mechanisms for the administration of granted Community patents such as their yearly renewal. It is foreseen that the grant of Community patents will be carried out by the European Patent Office. For this purpose the Community must accede to the European Patent Convention thereby charging the European Patent Office with the task of granting Community patents. Thus the European Patent Office will grant European and Community patents according to the same standards of the European Patent Convention ensuring uniformity and legal security of patent law in Europe. At the same time the European Patent Office's high expertise as an examining patent office can be put to use for the Community patent.
3. The Community patent jurisdiction
The establishment of a Community patent jurisdiction is a key element of the Community patent system. The Community patent title covering the territory of all Member States will not only be governed by the uniform provisions of Community law contained in the regulation of the Council on the Community patent. It will, at the latest by 2010, after a transitional period during which national courts will retain jurisdiction for the subject matter, also be enforceable before a Community jurisdiction whose decisions enjoy Community wide effect.
The legal basis to be used for the establishment of a Community patent jurisdiction was introduced into the EC Treaty by Article 2 (26 ff.) of the Treaty of Nice amending the Treaty on European Union, the Treaties establishing the European Communities and certain related acts which entered into force on 1 February 2003, inserting Article 229a and Article 225a into the EC Treaty. It is proposed that the Community patent jurisdiction will be established by two Council decisions based on those Articles.
In order for the Court of Justice to assume jurisdictional responsibilities with regard to the Community patent, that jurisdiction must be conferred on it. Article 229a of the EC Treaty allows the Council to adopt provisions to confer jurisdiction to the extent that it shall determine on the Court of Justice in disputes relating to the application of acts adopted on the basis of the EC Treaty which create Community industrial property rights. The present decision sets out that conferral of jurisdiction with regard to the Community patent and at the same time specifying the extent of the conferral (Articles 1 and 2). As provided for by Article 229a of the EC Treaty the Council shall recommend the provisions conferring jurisdiction on the basis of that Article to the Member States for adoption in accordance with their respective constitutional requirements (Article 3).
The Commission put before the Council a separate proposal for a decision based on Articles 225a, 245 of the EC Treaty proposing the establishment of a judicial panel to be called 'Community Patent Court' which would, within the Court of Justice, exercise at first instance the jurisdiction in disputes relating to the Community patent. That decision also contains the necessary provisions with a view to accommodating the new function of the Court of First Instance as appeal instance according to Article 225(2) of the EC Treaty against decisions of the Community Patent Court.
4. Transitional period
As agreed by the Council in its 3 March 2003 common political approach, the Community jurisdiction shall be established at the latest by the year 2010. Until that time national courts of Member States will have jurisdiction. This would be relevant for those Community patents which come into effect before the establishment of the Community patent jurisdiction. The Community patent regulation will contain special provisions governing this transitional period. It is foreseen that each Member State designates for this purpose a limited number of national courts to exercise the jurisdiction which will at the end of the transitional period be conferred on the Court of Justice. According to Article 2 of the present decision, legal actions of which national courts have been seised at the time when the conferral of jurisdiction on the Court of Justice will take effect will be decided by the competent national courts.
5. Need for a Community intervention
The present decision relating to jurisdictional aspects of the Community patent system intends to redress the existing shortcomings of the current situation of patent protection in the Union. The objective is to establish Community wide patent protection which can be enforced before one single court operating to uniform standards. This objective can only be achieved at a Community level.
6. Proposed Provisions
Article 1 - - Conferral of jurisdiction on the Court of Justice
Under point (a), the Court of Justice shall have jurisdiction in disputes relating to the infringement and the validity of the Community patent. Which actions relating to those disputes are allowed will be governed by the Community patent regulation. The draft Community patent regulation foresees in this respect an action to stop infringement (Articles 33, 43) as well as an action for the declaration of non-infringement (Article 34). The Court may also order the confiscation of infringing items or other appropriate penalties (Article 43). Concerning the validity of a Community patent, the draft regulation provides for an invalidity action (Article 31) and a counter claim for invalidity (Article 32).
Where a Community supplementary protection certificate extending the period of protection of an invention protected by a Community patent has been granted, disputes relating to its infringement or validity shall also come under the jurisdiction of the Court of Justice. In this regard, the Commission intends to come forward with a proposal for the creation of a Community supplementary protection certificate extending the protection conferred by Community patents in the way as is the case for national patents under Council regulation (EEC) No 1768/92 of 18 June 1992 concerning the creation of a supplementary protection certificate for medicinal products [OJ L 182, 2.7.1992, pp. 1-5] and regulation (EC) No 1610/96 of the European Parliament and the Council of 23 July 1996 concerning the creation of a supplementary protection certificate for plant protection products [OJ L 198, 8.8.1996, pp. 30-35].
Under point (b), jurisdiction is conferred for disputes relating to the use of the invention after the publication of the Community patent application and the right based on prior use of the invention. In that respect, the draft Community patent regulation allows a claim for reasonable compensation against any person who, in the period between the publication of the Community patent application and the grant of the Community patent, has made such use of the invention that would be prohibited by virtue of the granted Community patent (Articles 11, 35). Furthermore the draft Community patent regulation provides for a right based on the prior use of the invention (Articles 12, 36). Where the invention was used before the filing date of a Community patent, the prior user has the right to continue use of the invention for his business purposes and may invoke this right against the Community patent or a Community supplementary protection certificate.
Under point (c), jurisdiction is also conferred with regard to interim measures in the subject matter conferred. To the extent that the Court of Justice has jurisdiction relating to the Community patent, circumstances may require appropriate interim measures to be ordered under Article 243 of the EC Treaty before a decision in main proceedings can be made. The conferral of jurisdiction for interim measures is not limited to orders of interim measures in pending cases making such orders possible even before main proceedings are brought. Also, the Court of Justice shall have jurisdiction for evidence-protection measures which will be provided for in the context of the Commission proposal for a Council decision establishing the Community Patent Court and concerning appeals before the Court of First Instance.
Under point (d), jurisdiction is conferred to award damages or compensation in the situations for which jurisdiction is conferred under number one to three of this Article. Claims falling into this category are granted in Article 44 of the draft Community patent regulation awarding e.g. claims for damages of the holder of the Community patent in particular in the case of an infringement of a Community patent but also claims of third parties against the right holder where the latter has unduly exercised his rights and caused prejudice to those parties. Finally, in the context of the Commission proposal for a Council decision establishing the Community Patent Court and concerning appeals before the Court of First Instance, a claim for compensation for injuries caused by provisional or evidence-protection measures is foreseen.
Under point (e), jurisdiction is conferred for orders of a penalty payment in case of non-compliance with a decision or order of the Community Patent Court constituting an obligation to act or to abstain from an act. The Community Patent Court itself should be able to order such a penalty payment for non-compliance with its decisions or orders. If for example the Community Patent Court orders a defendant to stop infringement, it should at the same time be able to make an order whereby the non-compliance would be sanctioned by an obligation to pay a certain sum of money. If such an order necessitated a separate application to the courts of Member States, valuable time could be lost in ensuring that the decision of the Community Patent Court is respected.
In so far as this decision does not confer jurisdiction on the Court of Justice, national courts retain their jurisdiction. Article 46 of the draft Community patent regulation clarifies in this regard that national courts remain competent for any action for which exclusive jurisdiction is not conferred on the Court of Justice which for example is the case in disputes concerning the ownership of a Community patent.
Article 2 - - Transitional provision
Article 3 - - Adoption by Member States
Article 4 - - Entry into force
2003/0326 (CNS)
Proposal for a COUNCIL DECISION conferring jurisdiction on the Court of Justice in disputes relating to the Community patent
THE COUNCIL OF THE EUROPEAN UNION,
Having regard to the Treaty establishing the European Community, and in particular Article 229a thereof,
Having regard to the proposal from the Commission ,
OJ C
Having regard to the opinion of the European Parliament ,
OJ C
Having regard to the opinion of the European Economic and Social Committee ,
OJ C
Whereas:
(1) The European Council held in Lisbon in March 2000 called for the necessary steps to be taken to increase the competitiveness of the European Union in a modern knowledge based economy underlining the importance of effective Community-wide patent protection.
(2) The system of patent protection has been characterised by patents granted either by a national patent office in a Member State or by the European Patent Office with effect in a Member State, and by enforcement of those patents before the national courts of the Member State concerned.
(3) Innovative European industry relies on effective Community-wide legal protection for its inventions. The creation of a Community patent system comprising a unitary Community patent title and the possibility of enforcing such a right before a Community jurisdiction to be established at the latest by 2010 after a transitional period in which national courts retain competence will provide the missing elements for the system of patent protection in the Union.
(4) Council Regulation (EC) No .../2003 of ... 2003 on the Community patent creates a Community patent title. Holders of such a title enjoy Community-wide protection of an invention according to the uniform standards of that Regulation.
OJ L
(5) The Court of Justice should be vested with jurisdiction in certain disputes relating to Community patents.
(6) The jurisdiction conferred on the Court of Justice is to be exercised by the Community Patent Court by virtue of Council Decision No .../2003 , adopted on the basis of Articles 225a and 245 of the Treaty. Those Articles allow for the establishment of judicial panels attached to the Court of First Instance to hear and determine at first instance certain classes of action brought in specific areas.
OJ L
(7) By virtue of Article 225(2) of the Treaty, the Court of First Instance has jurisdiction to hear and determine actions and proceedings brought against decisions of the judicial panels set up under Article 225a of the Treaty. Decisions given by the Court of First Instance on appeal against decisions of the Community Patent Court may, exceptionally, pursuant to Article 225(2) of the Treaty, be subject to review by the Court of Justice, where there is a serious risk to the unity or consistency of Community law,
HAS DECIDED AS FOLLOWS:
Article 1 - Conferral of jurisdiction on the Court of Justice
The Court of Justice shall have exclusive jurisdiction over the following:(a) infringement or validity of a Community patent and a Community supplementary protection certificate;
(b) the use of the invention after the publication of the Community patent application or the right based on prior use of the invention;
(c) interim and evidence-protection measures in connection with the subject matters conferred;
(d) damages or compensation in the circumstances set out in points (a), (b), and (c);
(e) the ordering of a penalty payment in case of non-compliance with a decision or order constituting an obligation to act or to abstain from an act.
Article 2 - Transitional provision
The Court of Justice shall not have jurisdiction over those disputes of which a national court is already seised on the date at which this Decision enters into force.Article 3 - Adoption by Member States
The Council recommends the provision contained in Articles 1 and 2 of this Decision to the Member States for adoption in accordance with their respective constitutional requirements. Members States shall notify the Council as soon as possible of the measures to be taken and their adoption.Article 4 - Entry into force
This Decision shall enter into force after the notification to the Council by the last Member State of its acceptance of this Decision on the date of the publication in the Official Journal of the European Union of the ruling by the President of the Court of Justice that the Community Patent Court and the patent appeal chamber within the Court of First Instance have been constituted in accordance with law.