Considerations on 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 |
(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 i 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.
(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 i, 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.
(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.
Done at Brussels, [...]
For the Council
The President
[...]
LEGISLATIVE FINANCIAL STATEMENT
Policy area(s): Industrial property
Activity: Creation of the Community patent jurisdiction
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)
The Community patent jurisdiction is created by two Council decisions. The present decision, based on Article 229a of the EC Treaty, confers jurisdiction relating to the Community patent on the Court of Justice. The second decision, based on Articles 225a, 245 of the EC Treaty and for which the Commission tables a separate proposal, will contain the necessary provisions establishing the Community Patent Court and concerning appeals before the Court of First Instance. The budgetary consequences will follow from that second decision causing human resources and other administrative expenditures. Judges, the registrar, assistant rapporteurs and other staff have to be appointed, court rooms, office space and equipment must be provided for. The present proposal, however, exclusively deals with the conferral of jurisdiction on the Court of Justice and does not itself engage the budget of the Community. It will only enter into force once the court system has been set up, i.e. on the date of the publication of the ruling of the President of the Court of Justice that the Community Patent Court and the patent appeal chamber of the Court of First Instance have been constituted in accordance with law.
Consequently, the present proposal does not contain any figures on the financial implications of the Community patent jurisdiction. These detailed figures are contained in the legislative financial statement in the annex to the Commission proposal for a Council decision establishing the Community Patent Court and concerning appeals before the Court of First Instance.
2. OVERALL FIGURES
Not applicable (see no 1).
3. BUDGET CHARACTERISTICS
Not applicable (See no 1).
4. LEGAL BASIS
Article 229a of the EC Treaty.
5. DESCRIPTION AND GROUNDS
5.1. Need for Community intervention
5.1.1. Objectives pursued
The proposed Council Decision is part of the overall project to establish the Community patent system. By way of a revision of the European Patent Convention and an accession of the Community to it, the European Patent Office shall be empowered to grant Community patents which will confer rights on their holders according to the Regulation of the Council on the Community patent. Disputes concerning in particular the infringement and the validity of these rights shall, after a transitional period, be brought before a Community jurisdiction. These measures shall reform the system of patent protection in Europe which has been characterised by national patent titles to be enforced before national courts and make the necessary adaptations for the needs of the European industry which increasingly operates trans-nationally within the common market. The measures are designed to increase the competitiveness of the Union's innovative industries by creating a Community-wide uniform patent protection which can be enforced before a single Community jurisdiction rendering decisions with Community-wide effect.
Within this overall project, the Community patent jurisdiction shall be created by two Council decisions. The Commission presented a separate proposal for the establishment of a Community Patent Court and concerning appeals before the Court of First Instance. The objective of the present proposal is to confer jurisdiction relating to the Community patent on the Court of Justice which then will be exercised at first instance by the newly established Community Patent Court and by the Court of First Instance on appeal.
5.1.2. Measures taken in connection with ex ante evaluation
The necessity to create a patent system covering the Community as a whole has been recognised for decades. The first initiative to create such a system resulted in the European Patent Convention of 5 October 1973 which harmonised the grant of the European patent by the European Patent Office but did neither include provisions on the rights conferred by such a patent nor create a single jurisdiction to deal with disputes. This was still left to national legislation and national jurisdiction of the Contracting States. In a second initiative, EC Member States tried to create a Community patent on the basis of an international agreement including an integrated jurisdiction. The Community Patent Convention was signed on 15 December 1975 in Luxembourg followed by the 15 December 1989 agreement relating to the Community patent which included a protocol on the settlement of litigation concerning the infringement and validity of Community patents. The Convention, however, never entered into force. In the context of the Amsterdam European Council of June 1997 (action plan for the single market), the Commission published a Green Paper on the promotion of innovation by patents. The consultations on the Green Paper including the comments made in the hearing on 25 and 26 November 1997 showed a clear support for the creation of a Community patent system. Finally, the Lisbon European Council in March 2000 took up the issue and called for the creation of a Community patent system. The Council in its 3 March 2003 common political approach reached agreement on a number of key issues of the Community patent system including the jurisdictional aspects calling for the establishment of the Community Patent Court on the basis of Article 225a of the EC Treaty.
5.2. Action envisaged and budget intervention arrangements
Not applicable (see no 1).
5.3. Methods of implementation
Not applicable (see no 1).
6. FINANCIAL IMPACT
Not applicable (see no 1).
7. IMPACT ON STAFF AND ADMINISTRATIVE EXPENDITURE
Not applicable (see no 1).
8. FOLLOW-UP AND EVALUATION
8.1. Follow-up arrangements
The Council in its 3 March 2003 common political approach (point 5) foresees a review mechanism of the Community patent system including the jurisdictional arrangements. Regarding the present Decision, the jurisdiction conferred on the Court of Justice would have to be reviewed as to the subject matter in the light of experience gathered. The Commission will need to consult the Court of Justice and interested circles to collect data on the functioning of the Community patent jurisdiction and will have to evaluate the collected data and, where appropriate, suggest changes to the current decision.
8.2. Arrangements and schedule for the planned evaluation
On the basis of the common political approach adopted by the Council on 3 March 2003, the Commission will present a report on the functioning of all aspects of the Community patent including the jurisdictional arrangements five years after the grant of the first Community patent. Further reviews will be made periodically.
9. ANTI-FRAUD MEASURES
This does not apply. The proposal deals with the conferral of jurisdiction on the Court of Justice relating to the Community patent and does not cover a policy area with a risk of fraud.
IMPACT ASSESSMENT FORM THE IMPACT OF THE PROPOSAL ON BUSINESS WITH SPECIAL REFERENCE TO SMALL AND MEDIUM-SIZED ENTERPRISES( SMEs)
Title of proposal
Proposal for a Council decision conferring jurisdiction on the Court of Justice relating to the Community patent.
Document reference number
[...]
The proposal
1. Taking account of the principle of subsidiarity, why is Community legislation necessary in this area and what are its main aims?
The object of the Community patent system is to provide a Community wide patent protection which can be enforced before one single court operating to uniform standards and whose decisions enjoy Community wide effect. This objective can only be achieved at a Community level.
The impact on business
2. Who will be affected by the proposal?
- which sectors of business
All sectors of business that deal with technical inventions which can be subject to patent protection are concerned by the Community patent system. They can in case of conflict be party to litigation before the Community Patent Court and on appeal before the Court of First Instance to the extent that jurisdiction is conferred on the Court of Justice.
- which sizes of business (what is the concentration of small and medium-sized firms)
Potentially every size of business can be a party to Community patent litigation before the Community patent jurisdiction. For example, the holder of a Community patent may, as a plaintiff, wish to enforce his rights flowing from the Community patent title before the Community Patent Court. A third person may as a plaintiff wish to attack the validity of such a Community patent granting exclusive rights to its holder that he considers to be invalid. As defendant the right holder may wish to defend the validity of his patent or as a third person defend himself against an alleged infringement of a Community patent.
The Community patent system intends to make patenting of inventions more attractive especially for SMEs which will particularly increase the significance for this group. So far patenting is done in or with effect for individual Member States and the enforcement must take place before the national courts of the respective Member States their national patent law and their national legislation on the court procedure which is particularly cumbersome for SMEs. The Community patent jurisdiction will allow to enforce a unitary patent right valid in the entire Community in one single court procedure operating to common standards.
3. What will business have to do to comply with the proposal?
The effect for businesses will be felt only in cases of litigation over a Community patent. In that case they have to familiarise themselves with the proceedings before the Community patent jurisdiction.
4. What economic effects is the proposal likely to have?
The proposal will only have an economic effect in combination with the other legal instruments creating a Community patent system. The Community patent system as a whole will have a positive economic impact. In particular:
- on investment and the creation of new businesses
The Community patent system will have a positive impact on investments due to a better Community wide legal protection of inventions. The return on investments in innovative technologies will be more secure serving as an incentive for more investment. Moreover, since better legal protection will be rendered less costly, businesses will be able to make more efficient use of their existing budget for research and development which will lead to more inventions which in turn will stimulate investments to economically exploit these inventions. Since effective patent protection often serves as the legal basis for an economically successfully operating business, a more comprehensive, easier and less costly patent protection will promote the creation of new businesses.
- on the competitiveness of businesses
The Community patent system will make patent protection more effective, easier and less costly not only for those businesses that already make use of patent protection but also make patenting more easily accessible for other businesses and in particular for SMEs. The possibility to protect an invention and with it the associated investment into it with Community wide effect will increase the ability of all businesses that make use of this possibility to compete in the common market. Moreover, the competitiveness of European industry will be increased on a global scale compared to the major trading partners and competitors. Today patent protection for example in the United States or Japan is considerably less costly than in Europe under the national and the European patent system. Consequently US and Japan based companies can develop patented products at a considerably lower price which later are marketed world wide. The Community patent system intends to eliminate this obstacle for the competitiveness of the European industry.
- on employment
An increased investment in inventive technologies and a strengthened competitiveness of the European industry will lead to the creation of new jobs. The creation of new jobs can be expected across the full range of technical fields and their related industries. In particular the modern, innovative technologies which are playing a steadily increasing role in a knowledge based global economy will benefit.
5. Does the proposal contain measures to take account of the specific situation of small and medium-sized firms (reduced or different requirements etc)?
This does not apply. No distinction according to the size of companies can be made with regard the subject matter of jurisdiction conferred on the Court of Justice.
Consultation
6. List the organisations which have been consulted about the proposal and outline their main views:
The necessity to create a patent system covering the Community as a whole has been recognised for decades. The first initiative to create such a system resulted in the European Patent Convention of 5 October 1973 which harmonised the grant of the European patent by the European Patent Office but did neither include provisions on the rights conferred by such a patent nor create a single jurisdiction to deal with disputes. This was still left to national legislation and national jurisdiction of the Contracting States. In a second initiative, EC Member States tried to create a Community patent on the basis of an international agreement including an integrated jurisdiction. The Community Patent Convention was signed on 15 December 1975 in Luxembourg followed by the 15 December 1989 agreement relating to the Community patent which included a protocol on the settlement of litigation concerning the infringement and validity of Community patents. The Convention however never entered into force. In the context of the Amsterdam European Council of June 1997 (action plan for the single market), the Commission published a green paper on the promotion of innovation by patents. The consultations on the green paper including the comments made in the hearing on 25 and 26 November 1997 showed a clear support for the creation of a Community patent system. Finally, the Lisbon European Council in March 2000 took up the issue and called for the creation of a Community patent system. The Council in its 3 March 2003 common political approach reached agreement on a number of key issues of the Community patent system including the jurisdictional aspects calling for the establishment of the Community Patent Court on the basis of Article 225a of the EC Treaty.