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REPORT     *
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26 February 2002
PE 294.978 A5-0059/2002
on the proposal for a Council regulation on the Community patent
(COM(2000) 412 – C5-0461/2000 – 2000/0177(CNS))
Committee on Legal Affairs and the Internal Market
Rapporteur: Ana Palacio Vallelersundi
PROCEDURAL PAGE
 LEGISLATIVE PROPOSAL
 DRAFT LEGISLATIVE RESOLUTION
 OPINION OF THE COMMITTEE ON INDUSTRY, EXTERNAL TRADE, RESEARCH AND ENERGY

PROCEDURAL PAGE

By letter of 8 September 2000 the Council consulted Parliament, pursuant to Article 308 of the EC Treaty, on the proposal for a Council regulation on the Community patent (COM(2000) 412 - 2000/0177 (CNS)).

At the sitting of 2 October 2000 the President of Parliament announced that she had referred this proposal to the Committee on Legal Affairs and the Internal Market as the committee responsible and the Committee on Budgets and the Committee on Industry, External Trade, Research and Energy for their opinions (C5-0461/2000).

The Committee on Legal Affairs and the Internal Market had appointed Ana Palacio Vallelersundi rapporteur at its meeting of 25 May 2000.

It considered the Commission proposal and draft report at its meetings of 5 March 2001, 29 May 2001, 26 June 2001, 17 September 2001, 22 October 2001, 6 November 2001, 18 February 2002 and 19 February 2002.

At the last meeting it adopted the draft legislative resolution by 28 votes to 8.

The following were present for the vote: Giuseppe Gargani (chairman);Willi Rothley, Ioannis Koukiadis and Bill Miller (vice-chairmen);Klaus-Heiner Lehne (acting rapporteur on behalf of Ana Palacio Vallelersundi); Richard A. Balfe (substitute), Paolo Bartolozzi, Luis Berenguer Fuster (for Carlos Candal), Maria Berger, Ward Beysen, Isabelle Caullery (for Brian Crowley), Michel J.M. Dary (for François Zimeray), Willy C.E.H. De Clercq (substitute), Bert Doorn, Raina A. Mercedes Echerer (for Neil MacCormick), Francesco Fiori (for Mónica Ridruejo), Janelly Fourtou, Marie-Françoise Garaud, Evelyne Gebhardt, Fiorella Ghilardotti, José María Gil-Robles Gil-Delgado (for Nicole Fontaine), Malcolm Harbour, Heidi Anneli Hautala, The Lord Inglewood, Othmar Karas (substitute), Kurt Lechner, Toine Manders, Manuel Medina Ortega, Angelika Niebler (for Rainer Wieland), Elena Ornella Paciotti (substitute), Marianne L.P. Thyssen, Rijk van Dam (for Ole Krarup), Michiel van Hulten (for Arlene McCarthy), Theresa Villiers (for Joachim Wuermeling), Diana Wallis and Stefano Zappalà.

The opinion of the Committee on Industry, External Trade, Research and Energy is attached; the Committee on Budgets decided on 14 September 2000 not to deliver an opinion.

The report was tabled on 26 February 2002.

The deadline for tabling amendments will be indicated in the draft agenda for the relevant part-session.


LEGISLATIVE PROPOSAL

Proposal for a Council regulation on the Community patent (COM(2000) 412 – C5-0461/2000 – 2000/0177(CNS))

The proposal is amended as follows:

Text proposed by the Commission(1)   Amendments by Parliament
Amendment 1
Recital 2

The Munich Convention on the Grant of European Patents of 5 October 1973 (hereinafter referred to as the "Munich Convention") established the European Patent Office (hereinafter referred to as "the Office") and entrusted it with the task of granting European patents. The expertise offered by the Office should be used in the granting and administration of the Community patent.

The Munich Convention on the Grant of European Patents of 5 October 1973 (hereinafter referred to as the "Munich Convention") established the European Patent Office (hereinafter referred to as "the Office") and entrusted it with the task of granting European patents. The expertise offered by the Office should be used in the granting and administration of the Community patent.

 

The national patent authorities must be enabled to carry out some of the work of dealing with Community patent cases, including the investigation of novelty, for the European Patent Office, provided that the national patent authorities meet quality standards agreed in advance. The granting of Community patents remains the sole responsibility of the EPO.

Justification

Close contacts with the national patent authorities are crucial, particularly if small and medium-sized enterprises are to be guaranteed easy access to patent information. For this reason it should be made possible to combine the Community advantages of a strong European Patent Office with the strengths of the national patent authorities: geographical proximity, local knowledge, local language, facilitation of cooperation between the private and public sector, etc.

This amendment seeks to ensure that the European Patent Office will contribute as far as possible to improving the innovative infrastructure in Europe and enhance growth and employment in accordance with the Lisbon objectives.

The amendment seeks to forestall the negative effects on existing innovative infrastructures in a number of European countries of having the treatment of cases centralised in the European Patent Office. Permitting the authorities to request the national patent authorities to carry out searches or investigations will enable the national patent authorities to retain their powers and know-how with a view to promoting innovation.

Amendment 2
Recital 5 a (new)
 

(5a)   A balance must be struck between the right of all citizens of the European Union to have any file processed in their own language, the principle of legal certainty making the content of the patent readily available and the need to guard against cost increases. This balance is present in the formula established for the language arrangements under the Regulation on the Community trade mark.

Justification

The language arrangements provided for under the Munich Convention are inadequate and in no way reflect existing language arrangements in the EU.

Amendment 3
Recital 7

(7)   For reasons of legal certainty, all actions relating to certain aspects of the Community Patent should come under the jurisdiction of one court, and the decisions of that court should be enforceable throughout the Community. Exclusive jurisdiction for a certain category of actions and applications relating to a Community patent, and in particular for actions relating to infringement and validity, should therefore be given to the Community intellectual property court. Judgements of a Chamber of First Instance of that court should be subject to appeal to a Chamber of Appeal of that court.

(7)   All actions relating to certain aspects of the Community Patent should come under the jurisdiction

-   in the first instance of Community Patent courts (CPC) of Member States and

-   In the second instance of the European Chamber of intellectual property (ECIP) established under art. 225a, 229a CT (Nice).

(7)a.   The use of existing national courts with experience in patent cases as first instance courts (CPC) for Community Patent litigation follows, for the first instance, the example of the Community trademark Regulation. Thus, the factor speed, cost effectiveness, local language, closeness to users and use of existing infrastructure and expertise are best taken care of.

 

(7)b.   The number of the CPC per Member State should be limited. CPC for two or more Member States can be created by agreement between Member States.

 

(7)c.   The unitary application of community law will be safeguarded by the control of the CPC by the ECIP acting as an appeal-court. The ECIP may give leave to an appeal to the Court of First instance regarding important questions of law.

 

(7)d.   In patent-cases two instances considering factual (mostly technical) questions are indispensable. Therefore, the CPC and ECIP will decide on questions of fact and of law. The implementing Regulation may restrict the extent to which ECIP considers the factual basis for the decision of the CPC.

 

(7)e.   The ECIP, acting as a central appeal court, is a "first instance" court within the meaning of Art. 225a CT (Nice), because the European Court structure, which consists of the European Court of Justice (ECJ), the Court of First Instance (CFI) and the European Chamber for Intellectual Property (ECIP), is involved "for the first time" by an appeal from a CPC, which in itself is not part of the European Court structure. This, again, follows the example of the Community Trademark System, where the CFIis deciding on actions against the decisions of the appeal boards of the Interior Market Bureau (Alicante), thus acting as a second (or even: third) Instance.

Justification

Amendment 4
Recital 8

(8)   The court ruling on infringement and validity should also be able to rule on penalties and compensation for damage on the basis of common rules. Those powers are without prejudice to the powers to apply any rules on criminal liability and unfair competition provided for under the Member States' national law.

(8)   The CPC ruling on infringement and validity should also be able to rule on penalties and compensation for damage on the basis of common rules. Those powers are without prejudice to the powers to apply any rules on criminal liability and unfair competition provided for under the Member States' national law.

Justification

Amendment 5
Recital 9

(9)   The rules for proceedings before the Community intellectual property court are laid down in the court's statute and rules of procedure.

(9)   The rules for proceedings before the CPC and ECIP are laid down in Implementing Regulations.

Justification

Amendment 6
Article 1a (new)
 

1.   With regard to the Community patent, the national patent offices may, under the terms laid down in the implementing regulation provided for in Article 59 of this regulation, provide advisory services on application procedures for the Community patent, receive patent applications and forward them to the European Patent Office, and disseminate information on the Community patent.

 

2.   National patent offices which so request within the framework of the European Patent Convention may, in their respective working languages, undertake other tasks relating to Community patent applications, particularly in the field of search and research operations. These activities shall not affect the uniformity of the Community patent, which in all cases must be granted by the European Patent Office.

Justification

In some Member States, the national patent offices have large staffs and infrastructures, something which should be turned to advantage after the creation of the Community patent. Efforts should be made to ensure that they take part in relevant aspects of Community patent applications. All this must be done in such a way as to ensure the quality and uniformity of the Community patent. The necessary procedures for such participation should be laid down in the Munich Convention.

Amendment 7
Article 1 b (new)
 

1b.   In the context of the application procedure for a European patent, the national patent offices shall support the applicant in entering a Community patent under the terms laid down in the implementing regulation provided for in Article 59 of this regulation.

 

In particular, they shall receive patent applications, forward them to the European Patent Office, and provide advisory and research services. They shall also provide information services in relation to the legal form which a Community patent should take. The Community patent shall in all cases be granted by the European Patent Office.

Justification

Most of the national patent offices have the staff and technical capacity to carry out these duties. These capacities should be exploited in order to tighten up the procedure for the granting of a Community patent as far as possible. The average length of proceedings for a patent application at the EPO is already 7 years. This would increase still further if all duties connected to the granting of a Community patent were to be transferred to it as well.

Amendment 8
Article 9, paragraph 1 b

b)   acts done for experimental purposes relating to the subject-matter of the patented invention;

b)   acts done for experimental purposes relating to the subject-matter of the patented invention including the experiments and tests necessary for registration purposes.

Justification

This is intended to facilitate the registration of medicinal products, for example. There is as yet no legislation of this kind in Europe, and as a result many thousands of jobs are located outside Europe. This applies in particular to the manufacture of imitation products after the patent protection on a medicinal product has expired.

Amendment 9
Article 25, paragraph 1

1.   Annual renewal fees in respect of Community patents shall be paid to the Office in accordance with the implementing regulations referred to in Article 60. These fees shall be due in respect of the years following the year in which the Community Patent Bulletin referred to in Article 57 mentions the grant of the Community patent.

1.   Annual renewal fees in respect of Community patents shall be paid to the Office in accordance with the implementing regulations referred to in Article 60. A certain part of the fees shall be paid in order to finance the Member States’ duties in connection with patent information in accordance with the significance of the national patent office. These fees shall be due in respect of the years following the year in which the Community Patent Bulletin referred to in Article 57 mentions the grant of the Community patent.

Justification

National patent offices should assist the EPO; this will involve expenditure, the cost of which ought up to a point to be reimbursed. However, as the field is governed by Community law, the Member States do not in principle have an entitlement to any part of the fees. Accordingly, the Regulation must make it clear that the allocation of funds to national patent offices should not exceed an amount which is appropriate to the limited scope of their duties. In this way, renationalisation of the administration of the Community patent can be avoided and centralisation, which is a fundamental element of the European patent system, can be guaranteed.

Amendment 10
Article 30, paragraphs 3 and 4

3.   The actions and claims referred to in paragraph 1 come under the exclusive jurisdiction of the Community intellectual property court. In the first instance, they are brought before the Chamber of First Instance of that court.

3.   The actions and claims referred to in paragraph 1 come under the exclusive jurisdiction

a)   in the first instance of the Community Patent Courts (CPC) of Member States and

b)   in the second instance of the European Chamber for Intellectual Property (ECIP) created under art. 225a and 229a of the Treaty.

 

4.   Member States designate national courts with experience in patent litigation as CPC.

 

5.   The number of CPC in a Member State shall not exceed two.

 

6.   Member States may agree on a CPC in one of them acting as CPC for each of them.

4.   Subject to the provisions of the treaty and of this regulation, the terms and procedures relating to actions and claims referred to in paragraph 1 and the rules applying to judgements given shall be established in the statute of rules of procedures of the Community intellectual property court.

7.   Subject to the provisions of the treaty and of this regulation, the terms and procedures relating to actions and claims referred to in paragraph 1 and the rules applying to judgements given by CPC and EICP shall be established by the implementing Regulation referred to in art. 59

Justification

Amendment 11
Article 39

Appeals

Appeals

1.   An appeal to the Chamber of Appeal of the Community intellectual property court shall lie from judgements of the Chamber of First Instance of that court in respect of proceedings arising from the actions and claims referred to in the provisions of this section.

1.   An appeal to the ECIP shall lie from judgement of the CPCs of Member States in respect of proceedings arising from the actions and claims referred to in the provisions of this section.

2.   The action shall be brought before the Chamber of Appeal within two months of the date of notification of the judgement in accordance with the statute of the Community intellectual property court.

2.   The action shall be brought before the ECIP within two months of the date of notification of the judgement in accordance with the statute of the Community intellectual property court.

3.   The Chamber of Appeal shall have jurisdiction to rule on the facts of a particular case as well as on points of law and to annul or alter the contested decision.

3.   The ECIP shall have jurisdiction to rule on the facts of a particular case as well as on points of law and to annul or alter the contested decision.

4.   The action shall be open to any party to proceedings before the Community intellectual property court adversely affected by its decision.

4.   The action shall be open to any party to proceedings before the Community intellectual property court adversely affected by its decision.

5.   The action shall have suspensive effect. However, the Chamber of First Instance may declare its judgement enforceable while, if necessary, subjecting enforcement to the provision of security.

5.   The action shall have suspensive effect. However, the CPC may declare its judgement enforceable while, if necessary, subjecting enforcement to the provision of security.

 

6.   The ECIP may give leave to an appeal to the Court of First Instance regarding important questions of law.

Justification

Amendment 12
Article 40

Commission's capacity to act

Commission's capacity to act

1.   Where necessary in the Community's interest, the Commission may bring invalidity proceedings against a Community patent before the Community intellectual property court.

1.   Where necessary in the Community's interest, the Commission may bring invalidity proceedings against a Community patent before the CPC which has jurisdiction regarding the Member State where the owner has his seat.

2.   The Commission may also, under the condition referred to in paragraph 1, intervene in all proceedings before the Community intellectual property court.

2.   The Commission may also, under the condition referred to in paragraph 1, intervene in all proceedings before any CPC or before the ECIP.

Justification

Amendment 13
Article 41

Extent of jurisdiction


In the proceedings referred to in Articles 33 to 36, the Community intellectual property court shall have jurisdiction in respect of acts committed and activities undertaken in a part or in the entirety of the territory, zone or space to which this Regulation applies.

Extent of jurisdiction


1.   In the proceedings referred to in Articles 33 to 36 brought before the CPC for the Member State, in which the defendant has his seat, the CPC shall have jurisdiction regarding the actions and claims referred to in art. 30, paragraph 1. Regarding infringement procedures and actions for a declaration of non-infringement that CPC has jurisdiction for the entirety of the territory, zone or space to which this Regulation applies.

 

2.   Paragraph 1, first sentence, applies to all CPC for Member States where the patent is infringed, or, in the case of an action of non-infringement, where the patent is alleged to be infringed. Regarding infringement procedures and actions for a declaration of non-infringement that CPC has jurisdiction only for that Member State.

Justification

Application of the rules of the Brussels Convention.

Amendment 14
Article 42

Provisional or protective measures

The Community intellectual property court may take any necessary provisional or protective measure in accordance with its statute.

Provisional or protective measures


The CPC may take any necessary provisional or protective measure in accordance with its statute.

Justification

Amendment 15
Article 44

Actions or claims for damages


1.   The Community intellectual property court shall have the power to order the payment of compensation for the damage underlying the actions referred to in Articles 31 to 36.

Actions or claims for damages


1.   The CPC shall have the power to order the payment of compensation for the damage underlying the actions referred to in Articles 31 to 36.

Justification

Amendment 16
Article 46

Jurisdiction of national courts


The national courts of the Member States shall have jurisdiction in actions relating to Community patents which do not come within the exclusive jurisdiction of either the Court of Justice under the Treaty or the Community intellectual property court according to the provisions of Chapter IV, Section 1.

Jurisdiction of national courts


The national courts of the Member States shall have jurisdiction in actions relating to Community patents which do not come within the exclusive jurisdiction of either the Court of Justice under the Treaty or the CPC according to the provisions of Chapter IV, Section 1.

Justification

Amendment 17
Article 51

Obligations of the national court

Obligations of the national court

1.   A national court hearing an action or application referred to in Article 30 shall declare of its own motion that it has no jurisdiction.

1.   A national court, other than a CPC, hearing an action or application referred to in Article 30 shall declare of its own motion that it has no jurisdiction.

2.   A national court hearing an action or claim relating to a Community patent other than the actions referred to in Article 30 shall treat the patent as valid unless it has been declared invalid by the Community intellectual property court in a decision which has the authority of res judicata.

2.   A national court hearing an action or claim relating to a Community patent other than the actions referred to in Article 30 shall treat the patent as valid unless it has been declared invalid the CPC or the ECIP in a decision which has the authority of res judicata.

3.   A national court hearing an action or claim relating to a Community patent other than the actions referred to in Article 30 shall stay the proceedings if it considers a decision on an action or application referred to in Article 30 to be a prior condition for its judgement. Proceedings shall be stayed either by the court of its own motion, after hearing the parties, where an action or application referred to in Article 30 has been brought before the Community intellectual property court, or at the request of one of the parties, and after hearing the other parties, where proceedings have not yet been brought before the Community court. In the latter case, the national court shall invite the parties to bring such proceedings within a period prescribed by it. If such proceedings are not brought within the prescribed period, the proceedings before the national court shall continue.

3.   A national court hearing an action or claim relating to a Community patent other than the actions referred to in Article 30 shall stay the proceedings if it considers a decision on an action or application referred to in Article 30 to be a prior condition for its judgement. Proceedings shall be stayed either by the court of its own motion, after hearing the parties, where an action or application referred to in Article 30 has been brought before the CPC, or at the request of one of the parties, and after hearing the other parties, where proceedings have not yet been brought before the CPC. In the latter case, the national court shall invite the parties to bring such proceedings within a period prescribed by it. If such proceedings are not brought within the prescribed period, the proceedings before the national court shall continue.

Justification

(1)OJ C 337, 28.11.2000, p. 278.


DRAFT LEGISLATIVE RESOLUTION

European Parliament legislative resolution on the proposal for a Council regulation on the Community patent (COM(2000) 412 – C5-0461/2000 – 2000/0177(CNS))

(Consultation procedure)

The European Parliament,

–   having regard to the Commission proposal to the Council (COM(2000) 412(1)),

–   having been consulted by the Council pursuant to Articles 308 of the EC Treaty (C5-0461/2000),

–   having regard to Rule 67 of its Rules of Procedure,

–   having regard to the report of the Committee on Legal Affairs and the Internal Market and the opinion of the Committee on Industry, External Trade, Research and Energy (A5-0059/2002),

1.   Approves the Commission proposal as amended;

2.   Calls on the Council and Commission to ensure that at the next Diplomatic Conference to revise the European Patent Convention it is established that the language regime for the Community patent will be that provided for in Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark;

3.   Calls on the Commission to alter its proposal accordingly, pursuant to Article 250(2) of the EC Treaty;

4.   Calls on the Council to notify Parliament should it intend to depart from the text approved by Parliament;

5.   Calls for the conciliation procedure to be initiated should the Council intend to depart from the text approved by Parliament;

6.   Asks to be consulted again if the Council intends to amend the Commission proposal substantially;

7.   Instructs its President to forward its position to the Council and Commission.

(1)OJ C 337, 28.11.2000, p. 278.


OPINION OF THE COMMITTEE ON INDUSTRY, EXTERNAL TRADE, RESEARCH AND ENERGY

11 October 2001

for the Committee on Legal Affairs and the Internal Market

on the proposal for a Council regulation on the Community patent

(COM(2000) 0412 – C5-0461/2000 – 2000/0177(CNS))

Draftsman: Astrid Thors

PROCEDURE

The Committee on Industry, External Trade, Research and Energy appointed Astrid Thors draftsman at its meeting of 12 October 2000.

It considered the draft opinion at its meeting of 18 September 2001 and 10 October 2001.

At the last meeting it adopted the following amendments by 43 votes to 2, with 2 abstentions.

The following were present for the vote: Carlos Westendorp y Cabeza, chairman; Nuala Ahern, vice-chairman; Renato Brunetta, vice-chairman; Peter Michael Mombaur, vice-chairman, Astrid Thors, draftsman; María del Pilar Ayuso González (for Concepció Ferrer), Ward Beysen (for Colette Flesch), Guido Bodrato, Massimo Carraro, Gérard Caudron, Giles Bryan Chichester, Nicholas Clegg, Dorette Corbey (for Glyn Ford), Willy C.E.H. De Clercq, Harlem Désir, Francesco Fiori (for Umberto Scapagnini), Christos Folias, Norbert Glante, Cristina Gutiérrez Cortines (for Alejo Vidal-Quadras Roca), Michel Hansenne, Hans Karlsson, Wolfgang Kreissl-Dörfler (for François Zimeray), Werner Langen, Peter Liese (for Konrad K. Schwaiger), Rolf Linkohr, Caroline Lucas, Eryl Margaret McNally, Erika Mann, Angelika Niebler, Giuseppe Nisticò (for Roger Helmer), Reino Paasilinna, Elly Plooij-van Gorsel, John Purvis, Godelieve Quisthoudt-Rowohl, Bernhard Rapkay (for Mechtild Rothe), Daniela Raschhofer, Christian Foldberg Rovsing, Paul Rübig, Ulla Margrethe Sandbæk (for Yves Butel pursuant to Rule 153(2)), Esko Olavi Seppänen, Helle Thorning-Schmidt (for Elena Valenciano Martínez-Orozco), Claude Turmes (for Nelly Maes), Jaime Valdivielso de Cué, W.G. van Velzen, Dominique Vlasto, Anders Wijkman and Olga Zrihen Zaari.

SHORT JUSTIFICATION

I)   Main features of the functioning of the proposed system of a Community patent

The proposal for a Regulation is aimed at creating a new unitary industrial property right, the Community patent. Its purpose is to eliminate the distortion of competition, which may result from the territorial nature of national protection rights. Lower costs should be an important advantage of the Community patent.

The Community patent system will co-exist with the national and European patent systems. The inventor will be free to choose the type of patent protection best suited to his needs.

Due to the link between the Regulation on the Community Patent and the European Patent Organisation ("Munich Convention"), the latter will have to be modified in the framework of a future Diplomatic Conference which is planned to take place before 1st of July 2002. According to the proposal, the European Community will also have to accede to the Munich Convention.

Once the patent has been granted by the Munich Office, it will become a Community patent under the Regulation. Therefore the rules of the Regulation mainly refer to the Community patent once granted.

The Commission´s proposal provides for the creation of a centralised Community Intellectual Property Court, specialising in patent matters, particularly concerning validity and infringement of the Community patent.

II)   Key issues related to the proposed Community patent:

1)   Affordable cost of Community Patent

Translation costs

At present, an average European patent costs approximately EUR 30 000. The translations required by the Contracting States account for approximately 39% of the total cost. This fact is clearly a competitive disadvantage for the EU innovation system vis-à-vis third countries, such as Japan or the US. According to the Commission, the cost of the current European patent is three to five times higher than that of Japanese and US patents.

Fees and other procedural costs

The Commission has so far not been able to mention an exact amount of the fees associated with granting and renewal of a Community patent. Nevertheless, it seems to be clear that the fee should be clearly lower than the sum of the annual fees of the 15 Member States of the EU.

It is planned that the annual renewal fees for patents granted as well as their amount, will be determined in a Commission Regulation on fees which will be adopted according to the comitology procedure.

The proposed Regulation provides that the annual renewable fees in respect of the Community patent shall be paid to the European Patent Office in Munich (Art. 25 of the proposal). Nothing is said about the final use of these funds. According to the Commission it would be possible to create a system within the Convention which allows the EC and its Member States to decide on the final use of these funds. The flow-back of collected fees is, of course, also a vital question for the national patent offices.

2)   Language arrangements

One of the main purposes of this regulation is to create an affordable Community patent. Therefore a complete translation of all patent documents into all official languages of the European Community has to be avoided. Nevertheless your draftsman takes the view that there must be a certain minimum level of legal certainty for companies and inventors in the European Union.

A translation of the claims into all the other official languages of the European Communities could guarantee such a minimum level of legal certainty making sure that all operators in the European Community have the possibility of being informed about the main points of a Community patent. An amendment to this effect by the draftsman of the opinion was not adopted in committee.

The additional costs caused by this solution could be lowered by reducing the annual renewal fees to be paid by the proprietor of the patent. According to the Commission the renewal fees for an average European patent are currently three to five times higher than those of Japanese and US patents.

3)   The role of the National Patent Offices within the framework of the proposed system

According to the Commission's proposal, the European Patent Office in Munich will be the authority responsible for examining patent applications and granting Community patents. Nevertheless, the national patent offices have to play an important role in assisting inventors, companies and especially SMEs by providing them with the necessary information concerning the Community patent, especially the conditions governing the application for a Community patent. They can also help in the research on existing patents in the EC. As this service has to be offered as close as possible to the final user (companies, SMEs, inventors) it is very important that under the future system the national patent offices will dispose of the necessary financial and human resources.

In its Resolution on the Commission Green Paper on the Community patent and the patent system in Europe, which was adopted on 19 November 1998(1), the European Parliament called for the fees paid by users to be distributed to both the European Patent Office and the national patent offices and for the national offices to receive a percentage of the Community patent maintenance fees.

AMENDMENTS

The Committee on Industry, External Trade, Research and Energy calls on the Committee on Legal Affairs and the Internal Market, as the committee responsible, to incorporate the following amendments in its report:

Text proposed by the Commission(2)   Amendments by Parliament
Amendment 1
Recital 2

The Munich Convention on the Grant of European Patents of 5 October 1973 (hereinafter referred to as the "Munich Convention") established the European Patent Office (hereinafter referred to as "the Office") and entrusted it with the task of granting European patents. The expertise offered by the Office should be used in the granting and administration of the Community patent.

The Munich Convention on the Grant of European Patents of 5 October 1973 (hereinafter referred to as the "Munich Convention") established the European Patent Office (hereinafter referred to as "the Office") and entrusted it with the task of granting European patents. The expertise offered by the Office should be used in the granting and administration of the Community patent.

 

The national patent authorities must be enabled to carry out some of the work of dealing with Community patent cases, including the investigation of novelty, for the European Patent Office, provided that the national patent authorities meet quality standards agreed in advance. The granting of Community patents remains the sole responsibility of the EPO.

Justification

Close contacts with the national patent authorities are crucial, particularly if small and medium-sized enterprises are to be guaranteed easy access to patent information. For this reason it should be made possible to combine the Community advantages of a strong European Patent Office with the strengths of the national patent authorities: geographical proximity, local knowledge, local language, facilitation of cooperation between the private and public sector, etc.

This amendment seeks to ensure that the European Patent Office will contribute as far as possible to improving the innovative infrastructure in Europe and enhance growth and employment in accordance with the Lisbon objectives.

The amendment seeks to forestall the negative effects on existing innovative infrastructures in a number of European countries of having the treatment of cases centralised in the European Patent Office. Permitting the authorities to request the national patent authorities to carry out searches or investigations will enable the national patent authorities to retain their powers and know-how with a view to promoting innovation.

Amendment 2
Article 11
Rights conferred by the Community patent application after publication

1.   Compensation reasonable in the circumstances may be claimed from a third party who, in the period between the date of publication of a Community patent application and the date of publication of the mention of the grant of the Community patent, has made any use of the invention which, after that period, would be prohibited by virtue of the Community patent.

1.   Compensation reasonable in the circumstances may be claimed from a third party who, in the period between the date of publication of a Community patent application and the date of publication of the mention of the grant of the Community patent, has made any use of the invention which, after that period, would be prohibited by virtue of the Community patent.

2.   Reasonable compensation shall be due only if the applicant has either communicated to the person using the invention or filed with the Office a translation of the claims which the Office has made available to the public and which is in the official language of the Member State in which the person using the invention has his residence or principal place of business or, where that State has more than one official language, in the language which that person has accepted or designated, provided that the contested use constitutes infringement of the application according to the original text of the application and according to the text of the translation. However, if the person using the invention is able to understand the text of the Community patent application in the language in which it was made available to the public, reasonable compensation shall be due without communication of a translation.

2.   Delete

3.   When reasonable compensation is fixed, due account shall be taken of the good faith of the person who has used the invention.

3.   When reasonable compensation is fixed, due account shall be taken of the good faith of the person who has used the invention.

4.   The official language referred to in paragraph 2 shall be an official language of the Community.

4.   delete

Justification

One of the main purposes of this regulation is to create an affordable Community patent. Therefore a complete translation of all patent documents into all official languages of the European Community has to be avoided. Nevertheless there must be a certain minimum level of legal certainty for companies and inventors in the European Union. It must be clear that once a community patent has been granted there is also an effective legal protection including the possibility to bring an action for damages for infringement.

A translation of the claims in all the other official languages of the European Communities guarantees such a minimum level of legal certainty making sure that all operators in the European Community have the possibility of being informed about the main points of a Community patent. The additional costs caused by this solution could be lowered by reducing the annual renewal fees to be paid by the proprietor of the patent. According to the Commission the renewal fees for an average European patent are currently three to five times higher than those of Japanese and US patents.

Amendment 3
Article 25, paragraph 1

1.   Annual renewal fees in respect of Community patents shall be paid to the Office in accordance with the implementing regulations referred to in Article 60. These fees shall be due in respect of the years following the year in which the Community Patent Bulletin referred to in Article 57 mentions the grant of the Community patent.

1.   Annual renewal fees in respect of Community patents shall be paid to the Office in accordance with the implementing regulations referred to in Article 60. A certain part of the fees shall be paid in order to finance the Member States’ duties in connection with patent information in accordance with the significance of the national patent office. These fees shall be due in respect of the years following the year in which the Community Patent Bulletin referred to in Article 57 mentions the grant of the Community patent.

Justification

National patent offices should assist the EPO; this will involve expenditure, the cost of which ought up to a point to be reimbursed. However, as the field is governed by Community law, the Member States do not in principle have an entitlement to any part of the fees. Accordingly, the Regulation must make it clear that the allocation of funds to national patent offices should not exceed an amount which is appropriate to the limited scope of their duties. In this way, renationalisation of the administration of the Community patent can be avoided and centralisation, which is a fundamental element of the European patent system, can be guaranteed.

Amendment 4
Article 58
Optional translations

The proprietor of the patent shall have the option of producing and filing with the Office a translation of his patent in several or all of the official languages of the Member States which are official languages of the Community. Those translations shall be made available to the public by the Office.

The proprietor of the patent shall have the option of producing and filing with the Office a translation of all the documents concerning his patent other than those already filed in several or all of the official languages of the Member States which are official languages of the Community. Those translations shall be made available to the public by the Office.

Justification

As the draftsman proposes that the claims should be translated into all official languages of the European Community, it should be made clear that the proprietor of the patent has the possibility of producing and filing any optional translation of all the other documents concerning the patent if he considers this necessary. Nevertheless there will be no legal need for further optional translations as the claims have to be translated into all the official languages of the European Community giving to every company or inventor in the European Union enough information to find out if he is infringing a patent.

(1)
(2)OJ C 337, 28.11.2000, p. 278

Last updated: 8 March 2002Legal notice