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The EPO's reply to the Commission's questionnaire on the patent system in Europe

The EPO welcomes the European Commission's initiative to launch a public consultation on the patent system in Europe. The EPO believes it may usefully contribute to the consultation by replying to those questions which relate to areas where it can draw on its experience and legal and technical expertise. The replies below have been limited accordingly.

The Community patent as a priority for the EU

1. At its most basic level, since the very early days of the European Community, the steady support for a Community patent from all those involved in drafting the EPC and later setting up and operating the EPO can be explained as follows:
   
   The EPC only serves the purpose of rationalising the patent granting procedure. After grant, the European bundle patent issued by the EPO falls into patents conferring only national protection. Like national patents, they leave intact the territorial limits of property rights within the EU. They erect property rights borders around individual Member States.
   
   By contrast, a unitary Community patent would provide a uniform supranational patent for the entire Internal Market. Its crucial significance lies in providing protection which traverses the national borders of the Member States, embracing and covering the entire EU. This is of absolutely vital importance to the founding principle of the Internal Market - the free movement of goods - and to create a level playing field for competition. The Community patent is therefore an indispensable element of a harmonised economic area such as the Internal market. Following the creation of Community IP rights protecting trademarks, industrial designs and plant varieties, it is hardly acceptable to exclude patent law, as a core area of protection of industrial property, from the legal framework of the EU.


2. In addition, the Community patent project has been supported by the EPO as it has the potential to overcome practical shortcomings of the incomplete European patent system often incriminated by users.


3. The Commission's proposal for a Council Regulation on the Community patent dated 1.8.2000 (COM(2000) 412 final) represents a worthwhile and sound draft which duly addresses the needs and expectations of users.


4. Negotiations in the Council in the years 2000-2003 resulted in the Common political approach (CPA) dated 3.3.2003 which represents a political compromise between the various views and interests of the Member States. Regarding future work, it is necessary that any proposal for a Community patent be again accorded with the needs and expectations of users in Europe. With reference to the Commission's initial proposal for a Community Patent Regulation, it must in particular be affordable and provide legal certainty to economic operators. From the EPO's point of view, it is crucial that implementation of the granting procedure for Community patents be simple and that additional tasks (in particular relating to the centralisation of the post-grant phase) do not place undue financial burdens on the EPO. The EPO is ready to maintain close relationship with the institutions of the Community in developing a well functioning Community patent system.

The European Patent System and in particular the European Patent Litigation Agreement

What advantages and disadvantages do you think that pan-European litigation arrangements as set out in the draft EPLA would have for those who use and are affected by patents?

1. Following discussions in the Working Party on Litigation, the EPO acting as Secretariat to the Working Party has prepared a document presenting
   • the disadvantages for users of the present national system for litigation of European patents,
     
   • the advantages of the EPLA for states, users and the patent system in Europe
   • some cost estimates for litigation of European patents (today before national courts and before a future European Patent Court). The cost estimates show that, although litigation before a future European Patent Court will not be inexpensive, it will in any case be cheaper to litigate before a European Patent Court than to engage, as today, in parallel litigation before two or more national courts. The document is available at http://www.epo.org/patents/law/legislative-initiatives/epla.html
2. The EPO has supported the work of the Working Party on Litigation because there is an urgent need to remedy the shortcomings of the current system for litigation of European patents, with its well-known problems arising from multiple litigation which involves high costs, legal uncertainty, cross-border litigation and forum shopping.

Since 1980, the EPO has granted 800 000 European patents of which many are still in force in the EPC Contracting States. A future Community patent system will not include any jurisdictional arrangement for these European patents nor for the many European patents that the EPO will in all likelihood continue to grant for the next generations. A workable litigation scheme for European patents is therefore urgently needed by the users of the European patent system, now and for the future. The optional EPLA provides for a European Patent Court which could be fully operational a few years after adoption by a Diplomatic Conference.

Given the possible coexistence of three patent systems in Europe (the national, the Community and the European patent), what in your view would be the ideal patent litigation scheme in Europe?

As the European patent and the Community patent will be granted by the same office (the EPO) on the basis of the same substantive patent law, ideally, one common supranational court should deal with litigation concerning both types of patents, according to common rules of procedure. The European Patent Court as planned under the EPLA, although competent only for litigation involving European patents, could put to the test the concept of a European supranational patent court dealing with infringement and nullity issues under uniform procedural rules. The experience thus gathered could certainly be of benefit when developing the court system for the future Community patent.

The competence of national courts for litigation relating to national patents will remain. Yet harmonisation could be furthered by enabling national courts to seek non-binding opinions - from a future common supranational court - on any point of law concerning harmonised national patent law, as is already foreseen in the draft EPLA.

Approximation of national law

1. In order to create equal conditions for European and national patents, all EPC Contracting States have harmonised national substantive patent law with the provisions of the EPC when joining the European Patent Organisation. In addition, the definition of infringing acts in the draft Community Patent Conventions has also in general been included in national patent law. More recently, Directive (EC) 48/2004 on the enforcement of intellectual property rights has addressed important procedural issues. Essential elements of patent law are therefore already today harmonised in Europe.
   
   Nevertheless, a major shortcoming of the existing European patent system is the diverging interpretations of harmonised European and national patent law by different national courts, in the absence of a common European court which could provide a uniform interpretation of harmonised patent law.


2. As harmonisation of substantive patent law has already been achieved in Europe, the main advantage of bringing the EPC's patentability criteria into Community law would be to confer on the European Court of Justice (ECJ) competence to issue preliminary rulings on these matters.
   
   However, this competence for the ECJ would not amount to create a truly European patent court of final instance, since the ECJ only has competence to answer theoretical legal questions and lay down principles of interpretation. These principles would then have to be applied by national courts in the various EU Member States, and in practice there would be a serious risk of diverging jurisprudence due to different applications of these principles by various courts in the Member States.
   
   As regards an approximation instrument dealing with exceptions for particular subject matter and specific sectoral rules, experience suggests that it is very difficult and not always expedient to draft legislation relating to the limits to patentable subject-matter and to specific technical areas. The establishment of a common European court dealing with patent matters seems more likely to yield progress in these areas, as it will lead to a harmonised interpretation of patent law in Europe.

Mutual recognition of national patents

The concept of mutual recognition of national patents appears unclear and problematic.

First, forcible legal grounds stand in the way of such a scheme:

• To allow the recognition in all EU Member States of national patents following an unspecified "approval" procedure by the EPO, an additional transfer of sovereign rights, going beyond the existing arrangement in the EPC, from EU Member States to the European Patent Organisation would be necessary. This would require a revision of the EPC, which all 31 EPC Contracting States would have to ratify even though only the group of EU Member States would be concerned.
• For mutual recognition at the level of the EU Member States - with or without participation of the EPO - an adequate legal instrument would also have to be found. Whether Community law provides a proper basis for this must be further studied.
• The centralised European patent granting procedure to which the Member States of the European Patent Organisation have agreed enables applicants who so wish to seek Europe-wide patent protection in 31 states, on the basis of one application, processed in one of the three official languages, after a full search and examination by highly specialised patent examiners. This centralised European route coexists with national granting or registration procedures. To devise an additional route for obtaining patent protection in Europe via a mutual recognition scheme would add considerably to the complexity of the patent system in Europe without bringing any tangible benefits for users of the patent system or the public.

Second, the functioning of such a scheme would not be satisfactory:

• For the time being, the patent offices of the 25 EU Member States carry out procedures ranging from simple registration of incoming applications to full search and examination. Even patent offices with search and examination systems differ considerably as to size and capacity. To ensure that national patents which were to be recognised Europe-wide would satisfy certain uniform standards, the EPO would have to carry out a complete re-examination of the applications. This would not lead to efficiency in the patent granting process in Europe.

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