In first discussions with the interested circles and experts the EU Commission announced that it will continue its work for a patent jurisdiction system and is planning amendments of the Draft Agreement of 23 March 2009 (St07928) which shall comply with the Opinion of the Court of Justice of the European Union (CJEU) in order to achieve compatibility with the EU Treaties.

Membership limitation

At a meeting of the Expert Group in Brussels the Commission agreed in its interpretation of the Court Opinion with publications of practitioners that it will not be possible as planned to let countries join as members of an international court which are not members of the EU. Users see this as an undesired modification of the original concept. The Commission is considering whether one can remedy this problem by a kind of “Patent Lugano Convention” in order to connect EFTA countries with the EU court system if they wish so. Details have not yet been disclosed.

Legal basis for the jurisdiction system

The Commission regards Article 352 TFEU as a basis for the intended Agreement which requires ratification by the Member States and unanimity in the Council. Suggestions from industry to establish the court system rather by way of a regulation would not be a way to move forward, according to the Commission, since Member States feel that they need the approval of the national parliaments. The Commission nevertheless would like to speed up the procedure. It intends to propose a quorum by specifying a number of countries which would be necessary for the establishment of the Court. Those who sign after the expiration of the deadline would have to join later.

Implementation of referral rules into the Agreement

The most important question which met with the greatest reservations in the Expert Group is the degree of involvement of the CJEU in the future patent procedure. The EU Commission intends to amend the Draft Agreement by including the rules from Art. 267 et seq. TFEU (Treaty on the Functioning of the European Union, the former Lisbon Treaty) with strict obligations for the judges and sanctions in case of violations of EU law. Such sanctions also include damage claims which can be raised by private parties against Member States and even against the Patent Court itself.

Members of the Expert Group warned against such amendments for several reasons. The most evident result is a considerable delay of the patent infringement proceeding. While the infringement procedure under the Draft Agreement provides for a first instance and a second (and last) instance before the Court of Appeals, a referral of a legal question to the CJEU would double the number of instances.

A referral, in accordance with the general practice, would first open a new – third – instance before the CJEU which would last two to three years. This includes a hearing before the CJEU and the preparation of the conclusions of the Advocate General. When the CJEU has issued its decision and the “case” comes back to the Court of Appeals, another - the fourth - instance before the Appeal Court will start. The parties will discuss with the Appeal Court what the effect of the CJEU’s answer will have for the outcome of the infringement case. With an exchange of one or two briefs by the parties and another hearing the minimum of this part of the proceeding will be six months; in trademark cases this often takes up to twelve months. This means that the expected duration of about three years in the two instances of the Patent Court as it had been calculated so far will more than double.

Limitation of the EU legal order for patent law

Even if the number of cases might in theory be very low, it must be expected that in view of the threat of damage claims looming above the heads of the patent court judges, the number of referrals would considerably increase compared with the situation of the national courts today. But the number of referrals will also largely depend on the definition of what part of patent law must be counted as “EU patent law” from which questions for a referral could arise.

After some discussion the experts suggested that by the creation of the unitary patent and the jurisdiction system the present scope of the EU legal order in the field of patent law should neither be restricted nor expanded. As a result, rules which deal with substantive patent law should only be included into the Agreement and the Regulations if this is absolutely necessary. For this reason the Commission agreed to delete Articles 6 and 7 of Draft Regulation 215/3 on direct and indirect use as well as Article 8 concerning the limitation of the effects of the unitary patent.

The experts also requested that in order to avoid any uncertainty there should be an exhaustive and binding enumeration of the patent law rules which belong to the EU legal order (such as the Biotech Directive, the Enforcement Directive and a few procedural rules). Similarly, non-exhaustive examples of patent fields which do not belong to the EU legal order, in particular of substantive patent law, should also be added, such as the patentability requirements, revocation grounds and rules on claim interpretation and scope of protection contained in the EPC, to name only a few examples; not to forget the harmonized rules of the Member States which have been implemented into the national patent laws from the Strasbourg Convention, or the text of the Community Patent Convention of 1975 which has never entered into force.


Some members of the Expert Group, although they were in favour of a clear delimitation of the legal areas which would be subject to referrals, expressed concerns that, in spite of such legislative clarifications, parties interested in delaying proceedings could nevertheless do so. They could, for example, argue in a patent infringement case that the patent was granted in violation of the (EPC) patentability requirements and that the allegedly invalid patent would constitute an infringement of the competition rules of the EU Treaty, a matter for which the CJEU has jurisdiction. On such and similar grounds referrals could be obtained fraudulently, and it could be expected that the CJEU might nevertheless deal with questions of patentability and other rules of EPC substantive law, which means that uncertainties will remain.

The Commission will now work on proposals for the above amendments and it remains to be seen what the views of the users are.

This article reflects the personal opinion of its author. Dr. Jochen Pagenberg LL.M. is member of the advisory committee of the German Federal Ministry of Justice set up to discuss matters of European patent law. He has served for many years as an expert and sole attorney of the European Working Party for the European Patent Litigation Agreement (EPLA) and has been appointed as a member of the Expert Group as one of five attorneys from the EU. In 2009 Jochen Pagenberg was elected President of the European Patent Lawyers Association (EPLAW) after having served as its vice-president for four years. He is chairman of the special committee on European patent litigation of the AIPPI.