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The aim of creating a Community patent is to give inventors the option of obtaining a single patent which is legally valid throughout the European Union. The creation of such a patent could enable a substantial reduction in patenting costs (in particular those relating to translation and filing), simplified protection of inventions throughout the European territory as the result of one single procedure, and the establishment of a single centralised system of litigation.
In the European Union (EU), patent protection is currently provided by two systems, neither of which is based on a Community legal instrument: the national patent systems and the European patent system.
The national patent has undergone de facto harmonisation with the signing of several international conventions, including the Convention on the Grant of European Patents (the Munich Convention) in 1973 to which all EU Member States have acceded.
The Munich Convention lays down a single procedure for the granting of European patents. The Convention established the European Patent Office ("the Office") to grant patents which then become national patents subject to national rules. At present, 31 countries are members of the European Patent Organisation.
Although the Munich Convention creates a single system for granting patents, there is still no Community patent belonging to the Community legal order. A single patent for the whole Community could help Europe transform research results and new technological and scientific know-how into industrial and commercial success stories. The aim is also to help Europe catch up on the United States and Japan in terms of private R&D investment.
The proposal for a Regulation is the outcome of the discussions held in drawing up the Green Paper of June 1997 on the Community patent and the European Patent System, the main points of which were presented in the Communication from the Commission of 5 February 1999 entitled "The follow-up to the Green Paper on the Community patent and the patent system in Europe".
General functioning of the new Community system
The purpose of the proposed system is not to replace the existing national and European systems but to stand alongside them. Inventors will remain free to choose the type of patent protection best suited to their needs.
The main thrust of this proposal is the creation of a "symbiosis" between two systems: the Regulation on the Community patent and the Munich Convention.
The Regulation will supplement the Munich Convention. The Community patent will be issued by the Office as a European patent, specifying the territory of the Community instead of individual Member States. Implementation of this Regulation will require the Community to accede to the Munich Convention, and a revision of that Convention to enable the Office to grant a Community patent.
Once this Regulation has been adopted, the external jurisdiction for the Community patent will come under the exclusive jurisdiction of the Community.
Main features of the Community patent
The Community patent is unitary and autonomous, i.e. it has equal effect throughout the Community. It may only be granted, transferred or declared invalid for the whole of the Community.
Conditions for granting the patent
The conditions for granting the patent, for example the conditions of patentability, are set out by the Munich Convention.
Right to the patent
The right to the Community patent belongs to the inventor or his successor in title. If the inventor is an employee, the right to the patent is determined in accordance with the law of the State in which the employee is mainly employed or, if that State cannot be determined, with that of the State in which the employer has his place of business.
Provisions also exist for obtaining a patent with joint proprietorship and for the change of proprietorship of the Community patent.
Application for a Community patent
The application is made under the provisions of the Munich Convention. The Office examines the application and publishes it and the patent, if granted, in the Register of Community Patents and/or the Community Patents Bulletin.
Effects of the Community patent
The Community patent confers on its proprietor the right to prohibit, without his consent:
- the direct use of the invention, in particular making it, offering it, putting it on the market, importing it, etc.;
- the indirect use of the invention, through supplying it, etc.
Limitations of the effects of the Community patent
The rights conferred by the Community patent do not extend to a number of areas detailed in the proposal for a Regulation, such as acts done privately and for non-commercial purposes.
Moreover, these rights do not extend to acts concerning the product covered by the patent carried out within the territories of the Member States, after that product has been put on the market in the Community by the proprietor of the patent or with his consent, unless there are legitimate grounds for doing so.
The rights of the patent do not apply to the prior use of the invention. Therefore, if a person, in good faith and for business purposes, uses the invention or makes effective and serious preparations before the filing date, this person has the right to continue such use or to use the invention as planned during the preparations.
The Community patent may be licensed in whole or in part for all or part of the Community.
These licences may be exclusive or non-exclusive. The rights conferred by the Community patent may be invoked against a licensee who breaches any restriction in the licensing contract.
Licences of right
The proprietor of a Community patent may authorise any person to use the invention, as a licensee, in return for appropriate compensation as fixed by the Commission.
This authorisation is given, and can also be withdrawn, by written communication to the Office and this entails a reduction of annual fees for renewing the patent.
The Member States are not empowered to grant licences of right in respect of a Community patent.
The Commission may grant a compulsory licence for lack or insufficiency of exploitation of a Community patent or in the case of dependent patents. It can also authorise the use of a Community patent in some specific situations: in times of crisis, in other situations of extreme urgency, or in a situation where it is necessary to remedy a practice deemed after a judicial or administrative process to be anti-competitive.
Renewal of the Community patent
Annual fees must be paid to the Office to renew Community patents. The amount of these fees will be fixed by means of an implementing regulation on fees, which will be adopted by a regulations committee.
Surrender of the Community patent
The Community patent may be surrendered only in its entirety. Surrender must be declared in writing to the Office by the proprietor of the patent, and only takes effect once entered in the Register of Community Patents.
Lapse of the Community patent
The Community patent is valid for twenty years, calculated from the date of filing of the application. The patent will lapse if the renewal fee or any additional fee has not been paid on time.
Invalidity of the Community patent
The grounds for invalidity include the following:
- the subject-matter of the patent is not patentable according to Articles 52 to 57 of the Munich Convention;
- the patent does not disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art;
- the subject-matter of the patent extends beyond the content of the application as filed.
The patent is invalidated retroactively, except in decisions on infringement which have acquired the authority of res judicata and been enforced prior to the invalidity decision; nor does the retroactive effect of the invalidity affect contracts concluded and performed prior to the invalidity decision. However, in certain circumstances, it is possible to claim back sums paid under the relevant contract.
Any person may initiate invalidity proceedings, except in the case where the right of the proprietor of the patent to obtain the patent would be contested. In this case, the initiator of the application must be the person entitled to be entered in the Register of Community Patents as the sole proprietor of the patent or by all the persons entitled to be entered as joint proprietors.
Invalidity proceedings may be brought even if the Community patent has lapsed.
The patent may be invalidated either in whole or in part.
The proposal provides for the creation of a centralised Community Intellectual Property Court to guarantee unity of law and consistent case law.
This court will comprise chambers of first instance and appeal.
Jurisdiction of the Community Intellectual Property Court
The centralised court will have exclusive jurisdiction for some actions, including disputes relating to the infringement and the validity of the Community patent. The court will deal in particular with disputes between private parties and will be empowered to impose sanctions and award claims for damages.
An action for infringement must be based on a presumed infringement of the rights conferred by the patent.
This action may be brought by the proprietor of the patent or, in some cases, by the beneficiary of a licence.
Request for limitation
At the request of the proprietor, a Community patent may be limited in the form of an amendment to the claims, the description or the drawings. The request is only admissible with the agreement of a person who has a right in rem or a licence recorded in the Register of Community Patents.
The Commission's capacity to act before the Community court
The Commission has the power to act if the Community's interest is at stake.
It may refer an action for invalidity of a patent to the court and intervene in any proceedings brought before the court.
Sanctions and claims for damages
The Community court may impose various sanctions. If a Community patent has been infringed, the court may issue the following orders:
- an order prohibiting the defendant from continuing with the acts which infringed the patent;
- an order to seize the products resulting from the infringement;
- an order to seize the goods, materials, etc., which enable the invention to be used.
Jurisdiction of the national courts
The national courts will have jurisdiction which does not come within the exclusive jurisdiction of either the Court of Justice or the Community Intellectual Property Court. The national courts will therefore deal, for example, with:
- actions relating to the right to a patent over which an employer and an employee are in dispute;
- actions relating to levy of execution on the Community patent.
The national arbitration rules of the Member States will remain in force.
A Community patent may not be declared invalid in arbitration proceedings.
A patent must be granted, in accordance with the Munich Convention, in a language of the proceedings before the Office (English, German or French) and must be published in that language with a translation of the claims into the other two languages (Italian and Spanish).
A translation of the Community patent into all the Community languages is not necessary, although the proprietor of the patent has the option of producing and depositing translations of the patent in other official languages of the Member States. These translations will then be made available to the public. This measure is taken to avoid high costs which might dissuade from using the Community patent.
At present, it seems difficult to reach a final agreement on the dossier. The main stumbling block is the issue of the translation of the claims in the patent. The text does in fact stipulate that the claims in the patent - this being the shortest but most important section as it defines the limits of the protection - should be translated into all official EU languages. As things stand at present, the European ministers are unable to agree on a compromise regarding the issue of knowing who will decide on the legal validity of the translation and how to deal with the effects of a mistranslation.
A second bone of contention relates to determining the length of the period for filing translations. This is a key issue as, under the arrangements proposed, the Community patent shall be deemed not to have taken effect if the translations are not filed within the deadlines set.
REFERENCES AND PROCEDURE
COM(2000) 412 final
OJ C 337 E, 28.11.2000