On April 13, 2011, the Commission published two proposed regulations. The first one concerns a European patent with unitary effect, the second one is regarding translation arrangements. In December 2009, the last attempt was made to realise the community patent when the EU Council adopted conclusions on an “Enhanced patent system for Europe”. The Commission adopted a proposal for a Council Regulation on the translation arrangements for the EU patent.
However, no agreement could be reached and at the Competitive Council, in December 2010, the failure of the project was confirmed: the necessary unanimous agreement on the translation arrangements could not be reached. As a reaction, the Commission proposed to launch an “enhanced cooperation”, as foreseen in the Treaties as a last resort if objectives of the Union cannot be attained within a reasonable period by the Union as a whole. At the outset, twelve Member States were prepared to take this route, and in the meantime thirteen more followed, leaving Spain and Italy as the only states staying aside. On April 13, 2011, the Commission published its proposals.
Two regulations are proposed. The first one is concerned with the creation of unitary protection. It is limited to the post-grant stage of proceedings before the European Patent Office (EPO). The European patent with unitary effect is offered as an option, while applicants remain free to obtain a national patent or a European patent taking effect in one or more of the European Patent Convention (EPC) signatory states.
The proprietor of the patent may request within one month after publication of the grant of the European patent the registration of the unitary effect of the patent. Unitary effect of the patent is defined in Article 3 of the draft as providing uniform protection and having equal effect in all participating member states. This has the consequence that the patent may only be limited, licensed, transferred, revoked or lapse in respect of all participating member states.
The draft contains a chapter on the effects of the patent which corresponds to Articles 29 to 31 of the Community Patent Convention of 1975 which in turn were the model for harmonising national legislation on infringing acts in the member states to the EPC.
The EPO is entrusted in particular with:
- administering the requests for unitary effect,
- making entries on patents with unitary effect within the European patent register, and
- collecting the respective renewal fees.
Within the Administrative Council a select committee within the meaning of Article 145 EPC is to be set up for ensuring governance and supervision of the EPO’s activities related to the tasks entrusted to it. Decisions of the EPO in carrying out the entrusted tasks are subject to legal review before a national court.
The level of renewal fees to be set by the Commission shall be progressive throughout the term of the patent and shall be sufficient to ensure a balanced budget of the European Patent Organisation together with the procedural fees to be paid during the pre-grant stage. 50 percent of the renewal fees minus the costs incurred by the EPO in administering the unitary patent protection shall be distributed among the participating Member States. Inter alia, the share of distribution to be set by the Commission should provide compensation for Member States having an official language other than one of the official languages of the EPO.
The second draft regulation is concerned with the translation arrangements for the European patent with unitary effect. Article 14(6) EPC provides that the European patent specification is published in the language of proceedings before the EPO, i.e. English, French or German, and that the specification includes a translation of the claims into the other two official languages. Article 65 EPC empowers the contracting states to prescribe a full translation of the patent to be supplied for validating the European patent. However, Article 3 of the draft regulation provides, without prejudice to the exceptions in Articles 4 and 6 of the draft, that no further translation is required. In accordance with Article 4, the alleged infringer or the competent national court may request a full translation.
Article 6 provides for a transitional scheme which may last up to 12 years from the entry into force of both regulations and will end before as soon as an expert committee concludes that high quality machine translations into all official languages of the Union are available. During the transitional period a full translation of the specification into English has to be filed with the request for unitary effect if the language of the proceedings before the EPO was not English. If the language of the proceedings was English, a full translation of the specification into any official language of the participating member states that is an official language of the Union is to be filed. According to the Commission, this costs less than € 2500. The translations are to be published by the EPO for information purposes only.
Article 5 provides for a compensation scheme of reimbursing all translation costs up to a ceiling for applicants from EPO Member States filing in one of the languages of the Union that is not an official language of the EPO. The costs are covered by the renewal fees paid for patents with unitary effect.
Both drafts are transmitted to the EU Council and the European Parliament for adoption. The regulation on the European patent with unitary effect requires a qualified majority of the participating 25 member states in the Council and a favourable vote in the Parliament; for the regulation on the translation arrangements the participating Member States must act unanimously in the Council after having consulted the Parliament.
The proposals try to break the deadlock arising from the fact that Spain and Italy have blocked any attempt to implement a language regime for the community patent resulting in an attractive solution for applicants. However, reducing translation costs would also have been possible by making further progress with the London Agreement, if it is assumed that there is the political will to achieve such progress and to put aside the interests of lobbying groups representing those whose business is the existing big translation machinery.
Compared to the London Agreement, the simplified form of the community patent as proposed now has the further advantage of common administration of the granted patent, in particular the central collection of renewal fees by the EPO.
But simplification also has its price. One element is lacking which has been essential in previous proposals: a common litigation system. This may be the result of the opinion of the Court of Justice of the European Union (CJEU) 1/09, dated March 8, 2011 concluding that the draft agreement for creating a unified patent litigation system (called ‘European and Community Patents Court’) was not compatible with the provisions of the EU Treaties. The Commission is still analysing this opinion. So far it has not become clear how to overcome the concerns of the CJEU. Without a clear framework about which court can decide on the validity of a unitary European patent under which circumstances and with effect to whom, a single European title may appear dangerous.
In addition to the two draft regulations, the Commission has published four additional documents, to be viewed at: http://ec.europa.eu/internal_market/indprop/patent/index_en.htm