Commission working document on the Planned Community Patent Jurisdiction (COM(2002) 480 final)
The Commission has published a working document which seeks to address the issue of jurisdiction under the Community Patent system. The working document sets out the background to the issue of jurisdiction and suggests a draft form of Council decision. The draft decision is split into three sections:
i) Conferral of jurisdiction on the ‘Community Patent Court’ (“CPC”) under Article 229a of the EC Treaty;
ii) Establishment of the CPC and its underlying practice;
iii) Changes to the Statute of the Court of Justice to create a specialised appeal court at the Court of First Instance.
This article summarises the main provisions of the draft decision and the background notes to that decision and attempts to highlight some of the ways the current draft may affect patent practice.
Regulatory background to jurisdiction
Article 229a and Article 225a were introduced into the EC Treaty (amongst other articles) by the Nice Treaty. The Nice Treaty has not yet been ratified by all countries and hence the proposed conferral of jurisdiction on the CPC can not take place under the current proposals until the Nice Treaty has been fully ratified. However 14 out of the 15 Member States have already ratified the Treaty and in Ireland, the 15th state, a second referendum has resulted in a vote in favour of ratification.
Article 229a is designed to create the legal basis to confer jurisdiction on the Court of Justice in disputes relating to the application of acts which create Community industrial property rights. Article 229a requires unanimity from the Council of Ministers in order to confer jurisdiction on any court for matters relating to industrial property rights. Given the likely impact of the draft decision on national proceedings and current patent procedure, and the difficulties already encountered in relation to the community patent itself, it is likely to take some time to obtain unanimity, if such is possible at all.
Article 225a allows for the establishment of judicial panels to hear and determine at first instance certain classes of actions or proceedings brought in specific areas with the possibility of an appeal to the Court of First Instance
The Proposals in summary
The working document starts from the premise that a centralised community court system specialised in patent matters will best ensure unity of law and consistency of approach. Any procedure should be quick, inexpensive and uniform, effectively the same criteria as would apply ideally to the Community Patent itself. Achieving such quick and inexpensive patent proceedings is a difficult goal to attain particularly given the often technical and complex nature of many patent disputes. The Commission refers to the technical complexity of such matters throughout the working document and is clearly seeking a way to minimise the effect of such technical complexity on community patent proceedings.
|Provisions at a glance |
Appeal to a special patent appeal chamber within the Court of First Instance.
- Central court called the Community Patent Court (“CPC”) in Luxembourg.
- Regional chambers of central court to be set up as and when workload of the CPC exceeds certain levels.
- Court to hear all applications for provisional measures, invalidity and infringement actions, declarations of non-infringement, use of the invention after publication of the Community patent application, prior user rights and an application for a declaration of lapse.
- Disputes relating to infringement and validity of the patent will be dealt with at the same time.
- Jurisdiction would not cover review of EPO decisions or compulsory licences.
- The CPC will comprise both legal and technical members.
The proposals in more detail
Composition of the Court
The draft decision proposes that the court will comprise legal and technical members. This creates a hybrid legal and technical panel. A case would normally be heard by two legal members and one technical member with the technical members intended to assist the court with the understanding of technical aspects. The Commission notes suggest that the technical member will not override expert evidence and hence appears to have more of an advisory role. However inevitably the non-technical members of the court will be influenced by the technical understanding of the technical members and it may be very difficult for such technical members to present an unbiased understanding to the other court members.
The working document mentions the need for technical members in three fields: physics, chemistry and mechanics. There is no suggestion in the draft that these fields can be varied as the case demands. For example a case on genetics may benefit from a geneticist or a biotechnologist and by the time the CPC comes into existence there are likely to be significantly more biotechnological patents in existence. However on the current proposals the technical member of the board is likely to be either a physicist or chemist in such cases. The working document requires that the technical members have experience in patent law which would suggest the post may be filled by patent agents.
It is suggested that the legal members be lawyers experienced in patent law rather than law more generally. The aim is to create a specialised patent court which is able to deal with the demands raised specifically by patent cases.
An alternative suggestion to the mix of technical and legal judges in the working document is the use of so called “Assistant Rapporteurs”. These rapporteurs would be involved in deliberations and would produce reports to the panel but would not be involved in the decision making itself. Such rapporteurs would have a role more similar to the Advocate General in the Court of First Instance. However the Commission considers this less ideal and it would be likely to prove more time consuming by introducing an additional stage into the proposed proceedings.
Structure of CPC
The structure has been the subject of lengthy discussions. The working document starts from the premise that the CPC should be completely centralised and that at least at the start the workload would be limited. The central CPC may hear a matter outside Luxembourg, for example where both parties are in the same Member State and that Member State is able to provide the necessary forum. However in practice it is likely that the majority of cases will be heard by the CPC in Luxembourg. It is unclear from the working document how it is proposed that the CPC will support itself, the panel of judges or any administrative staff. The setting up of a completely new centralised court system rather than utilising existing court systems is likely to take some time.
As the workload of the CPC increases the working document suggests provision for regional chambers. The first regional chamber would be introduced when the number of cases before the central chamber in one calendar year exceeded 150. Thereafter, a further regional chamber would be established in another Member State each time that the number of cases before the central chamber in one calendar year again exceeded 150. The working document proposes that such regional chambers would be set up in those Member States “to which the highest proportion of Community patent litigation can be linked on the basis of the parties involved in litigation before the central chamber”. This is to be assessed according to the domicile of parties involved in CPC cases. It is proposed that Member States may group together for the purpose of establishing a regional chamber and satisfying the proportionality requirement.
Delaying the provision of regional chambers until the workload has exceeded certain levels is unlikely to find favour with certain Member States such as Germany. It will be interesting to see how many Member States object. In addition given that regional courts can not be set up until the CPC workload reaches certain set levels and that there will inevitably be some delay in setting up regional courts, this may result in the CPC receiving more cases than it can handle and a backlog being created in the system.
The working document provides that where regional chambers are set up, jurisdiction for any CPC case would be exercised by the central CPC in Luxembourg unless an alternative applied, for example:
(a) The regional court would exercise jurisdiction over actions against a defendant domiciled in the Member State where the regional court is established. This appears to override the central court jurisdiction; or
(b) infringement proceedings can also be brought before the regional chamber established in the Member State where the harmful event occurred. In such cases it will also be able to hear parallel infringement cases where the acts of infringement occurred in other Member States. Jurisdiction in such a case is not expressed to be exclusive, the claimant will have a limited choice as to where to bring the action.
The regional courts can also become competent to exercise jurisdiction if, for example, an action is brought by way of counterclaim. So if an infringement action is brought in a regional court that regional court will also be seised of any counterclaim for invalidity of the relevant community patent. This does not prevent the respondent starting completely separate invalidity proceedings elsewhere although should the respondent do so this may raise issues under the lis pendens provisions of the current draft decision (Article 10).
Representation in front of the CPC
The current draft working document incorporates relevant articles from Title III of the Statute of the Court of Justice into the CPC procedure (Article 15). This requires that parties be represented by lawyers. Draft Article 17 varies this by allowing the lawyer to be assisted by a technical adviser. The technical adviser must be a professional representative whose name appears on the list maintained by the European Patent Office. The ability of the technical advisor to speak at CPC proceedings is not set out in the draft working document, this is left for the Rules of Procedure.
The Patentanwaltskammer in Germany has already sent a letter objecting to the representation provisions and these provisions are also likely to be unpopular with patent agents in other Member States.
Rules of procedure
As mentioned above the working document suggests incorporation of Title III of the Statute of the Court of Justice in relation to CPC procedure. However the Statute provides limited guidance on procedure and much is left to the ECJ procedural rules. Title III gives a vague outline of the likely procedure. For example the procedure will be part oral and part written. It does not go into any details as to how the procedure will work. For example there is no indication whether there will be provision for cross-examination of witnesses or whether there will be any provision for experimental evidence.
The working document suggests that the nominated CPC judges would be responsible for drafting the relevant rules of procedure. Much of the detailed procedural rules will therefore not exist until after the creation of the CPC panel. This leaves substantial uncertainty as to how the court will operate in practice and whether the system will be based on a continental or UK model.
The working document proposes that the CPC will conduct proceedings in the official language of the Member State where the defendant is domiciled. There are exceptions to this proposal but such exceptions are likely to be limited in practice. The court is allowed to hear evidence or witnesses in a language other than the language of the proceedings, however everything must then be translated. The basis for the language provisions is that the defendant should be protected and therefore have the opportunity to defend the case in the language it feels most comfortable with. In practice this is likely to cause substantial difficulties. For example, the patent may well be in a different language from the proceedings and thus presumably require translation. Documents may also be in other languages and require translation. Depending on the language spoken by the presiding judges, the proceedings themselves may require translation. In addition as the system appears to rely on the building up of a body of case law, the CPC judges will need to have access to decisions irrespective of the language of the proceedings. The language provisions have already proved to be a stumbling block for the community patent itself and may well prove equally difficult to agree in relation to jurisdiction.
The Commission proposes that appeal from the CPC be to the Court of First Instance. An appeal would be possible based both on matters of fact and law. New evidence or facts would only be admissible where the introducing party could not have been expected to introduce that evidence or fact in the CPC proceedings. Where an appeal is lodged it will have suspensory effect unless otherwise declared by the CPC. This may well encourage appeals for the purpose of obtaining some suspensory effect.
Enforcement of CPC decisions in Member States is proposed to be according to Articles 244 and 256 of the EC Treaty. These provisions provide for verification of the authenticity of the decision by the relevant national authority. Following verification, enforcement of the decision is then governed by the rules of civil procedure applicable in the Member State in which the enforcement is being carried out. Depending on the remedies available in CPC proceedings, this may require amendment to national enforcement provisions.
It seems clear that the draft jurisdiction proposals are unlikely to be accepted in full by all Member States. The representation, regional court and language issues are likely to be particularly difficult to resolve. As for the community patent provisions themselves, it is likely to be time consuming to negotiate workable alternatives.
Written by Kerry Griffin. First published in WIPR November 2002.