Wednesday, 1 June 2011

That non-paper on the Unified Patent Litigation System: a helpful explanation

It's not often that you find footnotes in a PatLit piece, but this neat summary by Will Corbett and Kevin Mooney (Simmons & Simmons) has that slightly scholarly air to it. Thanks, Will and Kevin, for shedding some light on the darkness that is the recent non-paper:
"In advance of the 30 and 31 May meetings of the European Union’s Competitiveness Council, the EU Presidency presented a note to the Council[1]. The note attached a non-paper of the European Commission setting out a credible strategy to revise Europe's patent litigation system, following a recent opinion[2] from the Court of Justice of the European Union (CJEU) regarding the compatibility of a draft international agreement[3] with the EU Treaties[4].

In response to the CJEU's concerns, the non-paper proposes that the Commission have the right to bring proceedings against Member States, should the new patents court fail to refer EU law issues to the CJEU, and also that private parties could claim damages from Member States for breaches of EU law. Subject to these amendments, the Commission believes that no further changes are required to the draft agreement to ensure compatibility with the EU Treaties.

The international agreement would establish a court system with jurisdiction over a new European patent having unitary effect in multiple EU Member States. The same court would also have jurisdiction over ‘classical’ European patents. The Commission has recently published two draft Regulations[5] setting out how the unitary patent will work. Such a unitary patent is anticipated in the existing European Patent Convention (EPC)[6], hence no new EU patent right is required. The Commission does not propose that the EU become a party to the new international agreement, nor accede to the EPC. The international agreement would now be restricted to EU Member States, thus placing the new courts firmly within the EU’s judicial system. Any new EU Regulations or international agreement is likely to make it clear that there is no intention to either expand or restrict the jurisdiction of the CJEU.

The 30 and 31 May discussions pave the way for further work with the Council aiming to agree a general approach at an extraordinary Competitiveness Council meeting to be devoted to unitary patent protection on 27 June. It is hoped that the text of the two parallel EU patent Regulations could be agreed during the Polish Presidency of the EU (the second half of 2011), with the international agreement agreed during the Danish Presidency (the first half of 2012). The unitary patent Regulations would not be adopted without the international agreement, and it may also be necessary to amend other EU Regulations[7]. This timeline reflects the Commission's goal of issuing the first EU-wide patents in 2013[8], however, one should not underestimate the level of technical legal detail (such as a regime for the service of documentation) that still needs to be agreed before that longstanding goal is finally achieved (discussions having begun nearly 40 years ago).


[1] Creating a Unified Patent Litigation System - Orientation debate (Council of the European Union document 10630/11)
[2] Opinion 1/09 of the Court of Justice of the European Union
[3] Draft Agreement on the European and Community Patents Court and Draft Statute (7928/09)
[4] Such as the Treaty on the Functioning of the European Union
[5] Proposal for a Regulation of the European Parliament and of the Council implementing enhanced cooperation in the area of the creation of unitary patent protection (9224/11) and Proposal for a Council Regulation implementing enhanced cooperation in the area of the creation of unitary patent protection with regard to the applicable translation arrangements (9226/11)
[6] See Article 142 EPC
[7] Such as Council Regulation (EC) No 44/2001 of 22 December 2000 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters
[8] COM(2011) 206 - Key action 3".


Anonymous said...

Although, undoubtedly a postive move for those seeking a single EU patents court, one cannot help but wonder if this is the Commission's first major step in attempting to pull the EPO formally into the EU? It certainly marginalises the non-EU EPC states. i

Steve Peers said...

This is an excellent explanation. A few further points:

a) most Member States at the Council meeting on 30 May supported the non-paper (especially the UK and Germany), or at least discussions on the basis of it, but some still wanted to examine the issue in further detail or consider other options, such as jurisdiction conferred on the ECJ (Luxembourg)

b) the non-paper suggests that Italy and Spain can join in to the court as regards litigation over European patents, but both these States poured scorn on the non-paper at the Monday meeting

c) as an international treaty among Member States only, drafts will be proposed by the Member State holding the Council Presidency (not the Commission), the Commission would not be negotiating on behalf of the EU, and the European Parliament has no role - except it might use its powers over the parallel EU legislative proposal to try to influence the debate

d) since the EU would not be a party, the draft treaty could not be sent to the ECJ for advance checking as regards compatibility with EU law, and its conclusion could not be challenged in the ECJ by means of an annulment action. But the Commission (unlikely) or Spain and Italy (more likely) could bring infringement actions on that ground, against the Member States which signed it.

e) in the current drafts the patent regulations will only apply when the treaty comes into force (which is not the same thing as them being 'adopted' at the same time) - but some Member States have questioned this

f) most importantly - this is a big chance for advocates of the EPLA, to argue that Member States should have the option if they wish to apply the treaty to litigation over European patents alone, pending its application to the unitary patent - if there are ratification problems in some Member States, this situation could become permanent. This would be possible if the parallel amendments to Reg 44/2001 which the Commission says it will propose provide for it. EPLA advocates should lobby selected Member States, the Commission and the EP.