6. COMMUNITY PATENT
Draft Council Regulation on the Community Patent.
Commission working document on the planned Community patent jurisdiction.
|Legal base:||(a) Article 308; consultation; unanimity|
|Document originated:||(b) 30 August 2002
|Deposited in Parliament:
||(b) 17 September 2002|
|Department:|| Trade and Industry
|Basis of consideration:
||(a) Minister's letter of 31 January 2002|
(b) EM of 14 October 2002
|Previous Committee Report:
||(a) HC 23-xxviii (1999-2000), paragraph 2 (1 November 2000), HC 152-xix (2001-02), paragraph 4 (13 February 2002)
|To be discussed in Council:
||No date set|
|Committee's assessment:||Legally and politically important
|Committee's decision:||Not cleared; further information requested
6.1 We considered the draft Council Regulation on the
Community patent (document (a)) on 13 February 2002 when we noted
that, as an alternative to the patents which may be obtained in
each of the Member States or by an application to the European
Patent Office (EPO), the Community patent would provide a single
unitary right in all the Member States. The proposed Community
patent would offer an alternative route for obtaining patent protection,
which would operate alongside the national and EPO systems.
6.2 We noted that negotiations were continuing on an
acceptable language regime for the Community patent system, with
some Member States, including the United Kingdom, content to use
the existing three languages (English, French and German) of the
EPO, but with other Member States pressing for all the official
languages of EC Member States to be used. In relation to jurisdiction,
we noted that the draft Regulation envisaged a centralised and
specialist Community jurisdiction which would consider, to the
exclusion of other courts, certain kinds of patent litigation
between private parties. We also noted that most Member States
wished to see a Community-wide jurisdiction operating at first
instance, but that some other Member States (notably Germany and
France) wished the national courts to have jurisdiction at first
instance, with the Community jurisdiction applying only at second
instance or on appeal.
6.3 The Treaty of Nice contains provisions amending the
EC Treaty by inserting a new Article 225a EC which permits the
Council, acting unanimously and after consulting the European
Parliament, to create judicial panels to hear and determine at
first instance certain classes of action or proceeding brought
in specific areas. The Treaty of Nice also inserts a new Article
229a EC which permits the Council, using the same procedure as
in Article 225a, to adopt provisions to confer jurisdiction on
the Court of Justice in disputes relating to the applications
of acts creating Community industrial property rights.
6.4 In anticipation of the entry into force of those
provisions, the Commission has prepared a Working Document (document
(b))setting out its thinking on the question of jurisdiction over
the Community patent.
The Commission Working Document
6.5 The Commission Working Document (document (b)) is
not a formal proposal, since the legal basis (Articles 225a and
229a EC) is not available until the Nice Treaty enters into force.
The paper sets out the 'elements of a Community Patent jurisdiction'
comprising three parts. The first is concerned with conferring
jurisdiction on the Court of Justice to determine disputes between
private parties, under the powers conferred by Article 229aEC.
The second part deals with establishing a judicial panel, attached
to the Court of First Instance, to exercise the above jurisdiction.
The final part deals with the changes which are necessary to the
Statute of the Court of Justice to allow for a special appeal
chamber to be established as part of the Court of First Instance.
6.6 The basic elements of the proposed system for Community
patent jurisdiction may summarised as follows. First, the paper
suggests the creation of a centralised and specialised Community
patent court as a 'judicial panel' as provided for in Article
225aEC, with appeals lying to the Court of First Instance. This
patent court would have exclusive jurisdiction, at first and second
instance, to determine actions for revocation, invalidity and
infringement, as well as having power to grant provisional measures.
Secondly, the 'judicial panel' would consist of legal and technical
members appointed by the Council. The Commission paper envisages
the panel sitting in two sections, each consisting of two legal
members and one technical member,
and that the panel might deal with around 120-150 cases a year.
Thirdly, the judicial panel would have the same seat as the Court
of First Instance, but with the possibility of regional chambers
should the workload so require.
The Government's view
6.7 In her Explanatory Memorandum of 14 October 2002
the Parliamentary Under-Secretary of State for Competition, Consumers
and Markets at the Department of Trade and Industry (Miss Melanie
Johnson) explains that a unitary patent will offer a further route
for acquiring patent protection in Europe and will assist UK companies
to develop in the single market. The Minister adds that the unitary
nature of the Community patent will reduce the administrative
burden for business and its establishment alongside existing patent
protection will increase choice and allow greater flexibility
of use by companies for their patent portfolios.
6.8 The Minister further explains that the question of
jurisdiction is of paramount importance to the legal certainty
sought by the Community patent system, and comments that the unitary
Community jurisdiction envisaged in the Commission's working document
should prevent the possibility of inconsistent decisions. The
Minister notes that the Commission working paper envisages the
creation of regional chambers but comments that it will be important
to ensure that arrangements for such chambers do not foster a
divergence of approach which would undermine the single Community-wide
jurisdictional system, which the Minister regards as the main
advantage of the Community patent.
6.9 The Minister notes that the Commission working paper
does not propose that the Community judicial panel should have
jurisdiction over compulsory licensing of Community patents, but
points to a view that certain compulsory licensing situations,
particularly where the scope of the patent is to be interpreted,
should be dealt with by the panel.
6.10 The Minister remarks that the implications of the
proposed system for existing national courts, including specialist
patent courts, are not clear at this stage and that much will
depend on the degree to which the Community patent is seen as
more attractive than the national or European patent. The Minister
explains that there have been extensive consultations on the draft
patent Regulation, and that consultation on the detail of the
Commission's working document has begun and will continue as the
negotiations progress. The Minister informs us that most respondents
have cited arrangements for jurisdiction which command the confidence
of UK industry, together with low costs for acquiring and enforcing
Community patents, as the key elements of a successful scheme.
6.11 We thank the Minister for her helpful Explanatory
Memorandum. We note that the Commission Working Document is not
a formal proposal for legislation, but that it is nevertheless
likely to establish the broad outlines of jurisdictional arrangements
for asserting rights under the Community patent.
6.12 Whilst we generally welcome the ideas expressed
in the document, we ask the Minister for an account, in due course,
of the views of the persons she has consulted, particularly on
the question of conferring a compulsory licensing jurisdiction
on the envisaged judicial panel. We shall hold document (b) under
scrutiny pending the Minister's reply.
6.13 With regard to document (a) we shall continue
to hold this under scrutiny pending deposit of a revised version
of the draft Council Regulation together with an Explanatory Memorandum.
225a EC provides that the members of the panel must be persons
'who possess the ability required for appointment to judicial
office'. It would therefore appear that the technical member must
also be legally qualified. Back