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INTERNATIONAL TREATIES

European Union

Green Paper on the Community patent

Further to the Green Paper on the Community patent and the patent system in Europe presented by the European Commission in June 19971, a hearing of the interested parties was held in Luxembourg on 25 and 26 November 1997 which was attended by more than 220 participants representing a broad spectrum of mainly European non-governmental organisations interested in the European patent system.

The conclusions of that hearing have been summarised by the European Commission as follows2:

(1) There is a clear need for a new unitary Community patent covering the whole territory of the Community. This would reinforce the functioning of the Single market, greatly facilitate the management of patent rights and should enhance the enforcement of these rights.

(2) The Community patent should have a unitary character, having equal effect throughout the Community. It should be granted, transferred, revoked or allowed to lapse only in respect of the whole Community.

(3) A Community patent should be established preferably in the form of a Community Regulation, in order to facilitate its adoption and implementation.

(4) The Community patent must be affordable, its costs being comparable with a European patent covering a small number of Member States and also be comparable to a US patent.

(5) On the language question, many representatives from industry support a radical solution. This consists of using only one language for the granting procedure, with no translation of the granted patent afterwards. Other groups are in favour of less radical solutions. A number of interventions stressed the use of all national languages.

(6) The judicial system should provide for legal certainty. The enforcement of the patent, including considerations of validity, should be uniform and predictable throughout the Community. Decisions should be made within reasonable periods. In this context, a majority of the groups represented at the hearing favour the creation of a specialised European patent court. The minimum requirements recommended being the creation in each country of a specialised patent court with appeals being heard by a specialised European patent court. Infringement and validity questions should be dealt with together. Preliminary injunctions covering the whole Community should be available at reasonable cost.

(7) The question of prior use should be harmonised at Community level.

(8) The European patent should coexist with the Community patent and should be further improved. Initial filing fees should be reduced and the due date of designation fees should be postponed to the date of patent grant. Translation requirements should be reduced and further reduction of fees should be contemplated. Centralised filing of the translations at the European Patent Office should be further explored.

(9) The European Patent Office must pursue its task of managing the European patent as a centralised patent granting authority but should also run any future Community patent. Co-operation between the Commission and the European Patent Office should be reinforced.

(10) Existing national patents and national patent offices must be maintained. Their role should be tailored to local needs. The income they receive from fees of European patents should serve to reduce costs and support activities directly linked to innovation. A limited number of representations supported the idea of decentralising activities away from the EPO to the national patent offices.

(11) The present legal environment concerning software-related inventions does not ensure sufficient transparency and should therefore be clarified. The deletion of Article 52(2)(c) of the European Patent Convention is supported, as is further action to ensure a harmonized approach throughout Europe.

(12) The question of employee's inventions does not seem to be a first priority for action at Community level but would benefit from further study. The preparation of model clauses and arbitration procedures seems to be an appropriate way forward.

(13) Formalities such as forms, periods, etc. should be streamlined at Community level and unnecessary administrative burdens suppressed.

(14) As regards patent agents, the principles of free movement of services and freedom of establishment should apply fully to this profession. Some further harmonisation might also be necessary to ensure consistency throughout the Community. Certain associations are in favour of a right of access to the courts for patent agents.

(15) Legal cost insurance is a valuable concept which should be further studied. It is potentially useful for SMEs. The private sector could lead on this with the Community facilitating exchange of information and experience.

(16) Reduced fees for SMEs are supported by a number of associations provided that the scope of the scheme is clearly defined.

(17) The particular situation of research organisations and other non-profit organisations should be considered in the context of the modernisation of the patent system.

The Green Paper has also been submitted for opinion to the EC's Economic and Social Committee and the European Parliament. Once their opinions have become known, the Commission will decide in the course of 1998 on the appropriate follow-up to the Green Paper, as well as on the nature and contents of any measures to be taken at Community level.