Pages 328-331

INTERNATIONAL TREATIES

European Union

Green Paper on the Community patent

Opinion of the Economic and Social Committee*

On 25 June 1997 the Commission decided to consult the Economic and Social Committee, under Article 198 of the Treaty establishing the European Community, on

Promoting innovation through patents: Green Paper on the Community patent and the patent system in Europe (COM(97) 314 final).

The Section for Industry, Commerce, Crafts and Services, which was responsible for preparing the Committee's work on the subject, adopted its opinion on 6 February 1998. The rapporteur was Mr Bernabei.

At its 352^nd plenary session (meeting of 25 February 1998), the Economic and Social Committee adopted the following opinion by 128 votes to one with one abstention.

1. The Economic and Social Committee,

Whereas:

1.1 patents are an essential instrument for stimulating investment in the research and technology sector. Consistent and efficient European law on patents therefore represents an essential element for ensuring the competitiveness of enterprises in the European Union;

1.2 a fully integrated European innovation market requires a unitary European system for protecting industrial property, with a Community patent accessible particularly for small and medium sized enterprises which are innovative in high-technology terms or "precursors" as stressed in the Committee opinion (CES 986/97 of 1-2 October 1997) on the impact on SMEs of the steady reduction in funds allocated to RTD in the European Union;

1.3 the Community patent system covered by the 1975 Luxembourg Convention and by the 1989 Agreement relating to Community patents which have never come into operation, no longer seems adequate to achieve such unitary protection;

1.4 there is an urgent need to give the Community patent problem maximum priority, because of its economic aspects and implications for competitiveness and technological and industrial development in a global market;

1.5 there is therefore an urgent need to review the patent system and relaunch it on a basis which would enable it to take off effectively before the European Union is further enlarged;

Recommends to the Council, the Commission and the European Parliament that:

1.6 The Community patent be adopted on the basis of a Community regulation, to be adopted under Article 235 of the Treaty.

1.7 The Community patent must have a unitary character and must therefore cover the whole Community, whereas an à la carte or variable geometry Community patent would be unacceptable because it conflicts with the requirements of the single market.

1.8 The Community patent system must co-exist with national patents and the European patent. An applicant for a European patent must - in the stage before the granting of the patent - have the opportunity to convert his Community patent application into a European patent application.

1.9 The Community patent must involve accessible costs which make it comparable to a European patent requested for a limited number of countries. In particular, the initial costs should be reduced.

1.10 With a view to containing costs, the problem of translations should be tackled on the basis of the "global solution" evaluated by the EPO, as follows:

1.10.1 the patent application can be deposited in any of the EU languages, but with an obligation for it to be translated into one of the working languages (English, French or German);

1.10.2 the EPO prepares and publishes a detailed technical summary of the application in the language of the procedure, at the same time as the application is published. The EPO should arrange translation into the other two official languages and publish the text in the three aforementioned languages via Internet. In addition, the EPO should promptly forward these texts to the Commission departments (DG XIII) responsible for exploiting and disseminating research findings, to be translated into all the other Community languages and published through the CORDIS databank. The cost of translation would be borne by the EU as a cost of exploitation and dissemination of research findings. In any case, the Commission will need in future to make a general assessment of the cost of the language arrangements adopted in the context of an enlarged European Union.

1.10.3 when the patent is granted, the applicant should ensure translation of patent claims at his own expense;

1.10.4 prior to any legal action, the patent holder should arrange for the translation of the whole patent, again at his own expense.

1.11 The system of jurisdiction should be based on a limited number of national courts of first instance, competent to hear infringement cases and counterclaims for revocation, but with the limited power of declaring the patent non-opposable to the (alleged) infringer as regards that specific type of (alleged) infringement (purely "inter partes" effect). As an alternative, it could be laid down that national courts - competent to judge in the matter of infringements - can declare a Community patent invalid (when subject to a counterclaim for revocation) subject to the condition that the revocation would be suspended until confirmed by an appeal court.

1.11.1 The power to revoke a patent with "erga omnes" effect should be reserved even in the first instance to the EPO's cancellation division, or preferably a new court to be set up (subject to the remarks on the previous alternative).

1.11.2 A specialized chamber of the Court of First Instance of the EC should operate as court of second instance.

1.12 In the matter of fees, SMEs, universities and non-profit-making research bodies should enjoy preferential conditions; in addition, an active policy in favour of SMEs should be adopted, by setting up patent consultancy units attached to the representative organizations.

1.13 Consideration should be given to harmonization of the right of prior use.

1.14 Article 52(2)(c) of the European Patent Convention should be amended to make it possible to patent computer programmes.