European Union patents: a mission impossible? An assessment of the historical and current approaches.

• Author: Troncoso, Mauricio
• Position: International Intellectual Property Scholars Series

1. INTRODUCTION II. The First Approaches A. Original Design B. The CPC Amendments and Protocol of Litigation C. The Second Approach of the European Commission D. The Approach of the Paris Conference E. The Community Patent Regulation Proposal of 2000 III. 2000-2012: Twelve Years of Negotiations and Discussion A. The Debate after the 2000 Proposal B. Article 118 TFUE and its Consequences C. New Approach: The Enhanced Cooperation D. The Position of the ECJ 1. Arguments 2. Consequences E. The Reaction of the Opposing Member States IV. PROBLEMS OF THE NEW APPROACH: OVERVIEW A. An Incomplete Solution B. Mistaken Solution 1. Powers waived by EU to EPO a. Control of the Patent Policy b. Control of EPO Administrative Acts 2. Compliance with EU Law a. Compliance with Art. 118 TFEU b. Autonomy of the right c. The use of the Enhanced cooperation procedure i. The teleological objection: the circumvention of Art. 118 of the TFUE ii. The procedural objection: the non-fulfilment of the requirements established in Art. 20 TEU 3. The Applicability of Art. 142 of the EPC a. Infringement of This Article b. Consequences of the Infringement c. How to solve this infringement and whether it is possible to reach the goal of having a European Patent with Unitary Effect? 4. Other Criticisms a. Fragmentation of Patent Protection in Europe b. Fragmentation in the rules applicable to the European Patent with Unitary Effect c. Fragmentation of Jurisprudence V. Conclusion I. INTRODUCTION

   One of the hottest issues in Patent Law in Europe is the project to establish a "unique" patent for the European Union. Although its introduction would lead to unquestionable benefits in terms of the reduction of patenting costs (especially those relating to translations, filing, and fees) and legal uncertainty (the establishment of such a patent would simplify protection of inventions throughout the territory of the European Union), the project has run into political and legal obstacles since its inception. (2)

2. THE FIRST APPROACHES (3)

   1. Original Design (4)

      The original idea was to create a "Community patent," i.e., a single uniform patent for all Member States of the European Community. This idea was implemented through the Community Patent Convention (CPC) which concluded in 1975.

      Two years before, in 1973, the European Patent Convention (EPC) was concluded, the so-called "European patent" was established. The original purpose of the EPC Contracting States (at least, of those that were members of the European Community) was to use similar rules under the CPC.

      Why two different Conventions? There were/are countries that are part of the EPC, but not a Member State of the European Communities (and thus, not part of the CPC).

      Main differences between both Conventions:

      (a) The European patent, once granted, is a bundle of national patents, each governed by the domestic law of the States, which the holder of the right has designated (that means that once granted, these are treated as separate national patents, each of them may be subject to national translation and validation requirements and must be renewed individually in each country). The Community patent is (should have been) a single patent (i.e., when granted, it should have been automatically valid across all Member States).

      (b) The European patent is granted through a centralised procedure before the European Patent Office (EPO), but the nullity and revocation procedures and its enforcement fall within the jurisdiction of national courts. The Community patent application procedure was meant to be undertaken by the EPO, but the nullity and revocation procedures and its enforcement were assigned to some kind of centralised jurisdiction by the CPC and its successive amendments and protocols.

      Another main characteristic of the CPC was that upon being granted, the applicant had to submit translations of the Community patent to all Member States of the European Community within three months.

      This linguistic solution was questioned after the accession to the Community of countries with small populations, such as Greece, Denmark, and Portugal. This lack of proportion between the costs for patenting (due to this linguistic approach) and the geographical scope of protection was probably the principal reason that prevented countries with small populations from entering into the CPC.

   2. The CPC Amendments and Protocol of Litigation

      The CPC was re-negotiated in 1985. (5) In 1989, a new Agreement was signed and a Protocol on Litigation was added. (6) The 1989 Protocol on Litigation foresaw a complicated litigation procedure that consisted of two tiers. (7)

      The first tier was integrated by two different kinds of organisms. On one hand, certain national courts were designated as "patent courts of first instance," with the competence to rule on patent invalidity inter partes. On the other hand, a special "revocation division" of the EPO, meant to address invalidity estoppel in infringement procedures, was designated with the exclusive competence on erga omnes patent invalidity.

      The second tier was a "Common Court of Patent Appeals" with exclusive jurisdiction for interpreting the CPC provisions national courts of second instance, which were responsible for granting remedies, such as injunctive relief and damages.

   3. The Second Approach of the European Commission

      Despite all these efforts, the debate continued both at political and academic levels. (8) After eight years of discussions, numerous infringement suits across Europe, and increasing concerns over the importance of patent enforcement, a new impetus was given in order to solve the problems related to European patent litigation.

      In this context, the European Commission published a green paper on Promoting Innovation Through Patents in June 1997.9 The purpose of this document was to foster the debate about the best way to implement a future European patent system. In doing so, the Commission decided to abandon the previous proposals and propose a new system modelled after the European Trademark Regulation. (10)

   4. The Approach of the Paris Conference

      Two years later, in June 1999, an intergovernmental Conference of the EPC Contracting States took place in Paris. This Conference adopted another approach and defined four possibilities for structuring a European patent enforcement system. (11)

      Option one designated specific courts in every country as having jurisdiction over matters relating to patent infringement. Although such courts would themselves have competence regarding invalidity estoppel without needing to refer the case to the EPO, the ruling would only have an inter partes effect. That is, the patent would not be removed from the register if the court ruled the patent invalid. Patents could only be revoked by a new "revocation division" of the EPO, which would have exclusive jurisdiction over such. In order to obtain a definitive interpretation of Community Law, national courts would be able to refer preliminarily to the European Court of Justice (ECJ) in their interpretation of the CPC. Review of EPO revocation division decisions would also be an ECJ competence.

      Option two was to create a centralised Community patent court of second instance, in addition to the specific courts designated in every country. These national courts would have jurisdiction on infringement and invalidity estoppel matters (again, only inter partes) and the centralised Court would have the competence to review all appeals relating to these issues, thus making it comparable to the U.S. Federal Circuit Court of Appeals. The fact that the patent court of second instance would not have jurisdiction on procedural aspects, for example, injunctive relief, level of damages, and so on, would complicate this option to a certain extent. These issues would remain under the jurisdiction of the national courts of second instance.

      Option three provided for a deeper degree of harmonization. Once more, specific national courts would be designated as courts of first instance, but this time with a broader competence because they would have jurisdiction on invalidity estoppel issues with an erga omnes effect (i.e., they could nullify a patent, as in the U.S. system). Besides, all questions of procedure could be appealed to a centralised European patent court of second instance, not only those of substantive patent law. Cost savings could be made, and a separate revocation procedure before the EPO could be rendered unnecessary since this system would enable a single procedure to deal with revocation and invalidity. However, fifteen different procedural laws would need to be considered by the patent court of second instance. Such a consideration is most definitely not a simple matter.

      Option four was establishing a centralised European patent court. This would be the highest level of harmonization possible, in that such a court would work on its own rules of procedure and remedies, and would also be a court of both first and second instance.

   5. The Community Patent Regulation Proposal of 2000

      Following up on the green paper, the European Commission published a proposal for a Community patent in August 2000. (12) This proposal concerned both grant and litigation procedures.

      Cooperation with the EPO was the mainstay of the grant procedures. For this reason, the Community would sign the EPC and become a member of the European Patent Organization, so the applicant would have to choose the Community as the "designated country" to receive a Community patent. When granted, the patent would automatically be valid across all member states of the European Union (then fifteen, now twenty-seven).

      The proposal was novel in the way it solved the language issue: filing of the patent application was necessary in only one of the EPO's working languages (English, French, or German), while translation of the claims of the patent application only into the EPO's other two working languages was required with...