EU Council agrees on next steps regarding the Community patent (EU patent)

8.12.2009

Key elements

On 4 December 2009 the EU Council reached agreement on a number of key elements constituting the future EU patent ¹ system:

• Proposal for a Council Regulation on the EU patent - General approach;
• Council conclusions on
  • renewal fees for EU patents and their distribution,
  • Enhanced Partnership under the EU patent system, and
  • certain features of the envisaged unified patent litigation system.

The basic concept underlying the future EU patent system is that the EU accedes to the European Patent Convention (EPC) and that the EPO grants EU patents. Such patents will be European patents having unitary effect in the territory of the European Union.

The main outstanding issues to be considered further are:

• the translation arrangement, and
• the EPC revision.
  

Proposal for a Council Regulation on the EU patent

The general approach to the draft Regulation on the EU patent mainly deals with post grant issues, eg the effects of the EU patent, compulsory licences, or the lapse and invalidity of the EU patent. It does not contain provisions on the translation regime as these will be dealt with in a separate regulation. The general approach will now be submitted to the European Parliament for discussion.

Regulation on translation arrangements

The translation arrangements of the Community patent will form part of a separate regulation to be elaborated on the basis of a proposal of the European Commission. The Regulation on the EU patent should come into force together with the separate regulation on the translation arrangements. The adoption of the latter requires unanimous agreement of the EU Council.

EPC Revision

Due to the fact that the EU is intended to accede to the EPC as a contracting party it will be necessary to amend the EPC at a Diplomatic Conference. Furthermore, institutional issues, such as the establishment of a Select Committee of the Administrative Council which is exclusively composed of the EU member states, and the voting rights of the EU and its member states, or the parallel designation of EU member states and the EU in a patent application will have to be regulated in the EPC. The revised EPC will have to be ratified by all  EPC contracting states. At present, there are 36 contracting states.

Renewal fees

Concerning the renewal fees and their distribution the EU Council agreed that the Select Committee of the Administrative Council should, once the Regulation on the EU patent enters into force, fix both the exact level of the renewal fees and the distribution key for their allocation. It is foreseen that the EPO retains 50% of the renewal fee income.

Enhanced Partnership

As regards the Enhanced Partnership it is suggested in the conclusions that it should enable the Office to make regular use, where appropriate, of the result of any patent search carried out by a central industrial property office of the EPC contracting states on a national patent application, the priority of which is claimed in a subsequent filing of a European patent application. This utilisation will be carried out in accordance with the already established utilisation scheme of the European Patent Network (EPN) among the EPC states. The Enhanced Partnership should be based on a European Standard for Searches (ESS), containing criteria for ensuring quality which are based on the agreed quality systems of the EPN. In addition to searches, the ESS should include standards on inter alia training, tools, feedback and assessment.

Unified Patent Litigation System

As regards the features of the envisaged unified patent litigation system, it is proposed in the conclusions to establish such a system through an agreement including EU member states and EPC contracting states which are not members of the EU. The envisaged treaty will establish a patent court which has exclusive jurisdiction in respect of infringement and validity issues concerning European and EU patents. This so called "European and EU Patents Court (EEUPC)" should be comprised of a Court of First Instance, a Court of Appeal and a Registry. The Court of First Instance should be comprised of a central division, as well as local and regional divisions in the contracting states to the agreement. The draft agreement is currently being examined by the European Court of Justice which has to deliver an opinion on the compatibility of the draft agreement with the EC Treaty. The opinion is expected at the earliest by summer 2010.

Further information

• Council of the European Union - Conclusions on an enhanced patent system in Europe (PDF, 154 KB)
• Community patent: Background information
  

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¹ The "Community patent" is now called the "EU patent" under the Lisbon Treaty.