Associazione Italiana dei Consulenti ed Esperti in Proprietà Industriale di Enti o Imprese

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1 Associazione Italiana dei Consulenti ed Esperti in Proprietà Industriale di Enti o Imprese info@aicipi.it Segretario Dr.ssa Maria PODESTA m.podesta@chiesigroup.com Presidente Dr. Francesco MACCHETTA francesco.macchetta@bracco.com Tesoriere Dr. Daniele PIERACCIOLI daniele.pieraccioli@dompe.it AICIPI s position on the Proposal for a Regulation on the Community Patent - second revised draft Interistitutional file 2000/0177 (CNS); 9691/03PI49 dated June 11, 2003 Following AICIPI notes of May 16, 2003 on the first draft of the proposal, dated April 16, 2003, here are some comments on the modifications brought in by this second draft and some more general additional thoughts on the key features of the system proposed. We appreciate this opportunity of express our views and reiterate our availability to further discuss and make additional comments and proposition with the competent Authorities and interested circles. The Whereas part of the draft now specifically contains a reference to the possibility for the national Patent Offices (NPO) to carry out novelty searches in their own language (2b) and the mutualisation of costs (5) for applications filed in a language other the three EPO official languages. AICIPI would like to observe that the possibility of having the search done by the NPO should not be applicable to European patent applications with any designation other than the Community (as this is something specifically designed for and only for Community patent applications) and that such limited novelty searches in the NPO language should only supplement and not replace the EPO search. As for the mutualisation of costs, actually this will trigger a general increase in the fees charged by the Office that all the Applicants will eventually pay. The costs are one of the possible killing factors of the Community Patent system and it does not appear therefore sensible to make any proposal that might bring to an increase thereof. Furthermore this possibility is open only in case of a Community patent and therefore no refund to the Applicant should be given until he has the choice to switch from a Community to a European patent (thus at least up to the deadline laid down in Art. 24a paragraph 3) and managing this twin parallel system would confuse both the Applicants and the Office. Art.1 AICIPI approves the content of this Article according to which a Community Patent can be obtained by simply designating the Community in a European patent application. According to the current EPO designation system and provisions, this clearly means that at any time during pendency of the application the Applicant will be entitled to give up the Community designation, thus effectively switching to a European patent application for any given number of EU countries. This possibility is particularly welcomed by AICIPI. Also, the possibility of converting a European patent application designating all the Community Member States filed before entry into force of the Community patent system into an application for a Community patent, when it comes into force should also be included, at least for a given transitional period. Associazione Italiana dei Consulenti ed Esperti in Proprietà Industriale di Enti o Imprese Codice Fiscale

2 Art. 7 AICIPI is worried by the content of the paragraph appearing in square brackets at the beginning of this article and strongly requests its definite deletion. For clarity and fairness to all parties, the requirements concerning the translation of the claims in fact should be kept separate to the maximum possible extent from the rights conferred by the patent as granted. See also our comments to Art. 24c. Art 8a AICIPI appreciates the deletion of this article that was present in the earlier version. Art. 9(b.1) AICIPI appreciate the deletion of this paragraph that was present in the earlier version Art Article 11.2 has not been modified and AICIPI reiterates the request that the sentence in the language which that person has accepted or designated be deleted and substituted with in one of the official languages of that State also to be in line with Art. 67 EPC and avoid any conflict with it. Art.12 AICIPI reiterates its desire for the introduction of provisions identifying with more precision which are the extensions of the prior activity that could be allowed under the prior user rights, as the terms the use in question and the use as planned are considered to be too vague. Art. 15 It will be necessary to provide in the future Regulations for a simplification of the transfer verification process by bringing it in line with the EPO procedure (cfr. Art. 71 and R. 20(1) EPC), e.g. by accepting certified documents, e.g. notarial certificates, that while having the necessary data, they themselves do not bear the signatures of the parties but are based on documents that are recognized by the certifying authority as bearing the signatures of the parties. 2/6

3 Artt. 20, 21 and 22. It is noticed that preference has been given to the Community Patent Court to be the body deciding on requests for Licenses of right. As indicated in our previous comments AICIPI would however prefer the Commission to be such a body, given the administrative nature of any such act, while leaving the Community patent Court to be in a position to act as an Appellate instance for those who are adversely affected by a decision on a License of Right. Art. 21(4) AICIPI still has problems in seeing the compatibility of this norm with the principles on nondiscrimination among technical fields of the TRIPs Agreement. Art. 24(b). AICIPI notes with satisfaction that the content of this Article goes into the direction previously voiced by it and considers that the two year time period for completing it, that has been repeatedly indicated, be adequate. Art. 24c AICIPI notes that this Article is entirely in square brackets and strongly voices for its complete deletion. AICIPI is very much worried that the immediate effect of any such provision is squarely in contradiction with the desired unitary character of a Community patent.the basic principle here should be in fact that a Community patent should have the same legal effects in all the Member States. This aim can only be achieved if the authentic text of a Community patent is the text provided for in Art. 70, paragraph 1 and 2, of the EPC. AICIPI therefore requests the deletion of this article and warns those taking decision on this point that introducing any such provision may have such a killing effect on the system that not many potential users may find a reason to use it. 3/6

4 Art. 27(1) AICIPI would like to reiterate its request to introduce in this paragraph an explicit mention that Supplementary Protection Certificates can be granted under EU Regulation 1768/92 and 1610/96, based on Community Patents. Art. 28 AICIPI notes that this Article has not been changed from the previous version and would like to reiterate its requests. In particular AICIPI requests that this article contain a provision allowing, possibly within a given time, for the conversion of a Community patent that is at risk of invalidity because of a prior national right of the kind defined in the current article, into a European patent that can be validated if the patentee so wishes in all those EU States where the invalidating prior national right does not exist. The Regulations should define in detail an easy procedure by which the Patentee itself, who has become aware of the invalidating prior national right, may request the conversion of its possibly invalid Community patent into a European one, designating less than all the EU States. In a sense, this provision has a high degree of similarity with what is currently available under Art.24b. The only differences are on the time scale, that might be longer and on the scope of application, i.e. existence of a prior national right of the type identified here that, to the contrary, is very much stricter. In the annex the entire original argument is reported for your reference, Art.28(3) AICIPI reiterates its request that the terms in accordance with the EPC are introduced after limit the patent by modifying the claims, at the end of the first sentence. The limitation procedure according to the EPC (EPC 2000) appears in fact the proper and adequate tool to affect this limitation while preserving the unitary character of the affected patent. Art.33(2) AICIPI reiterates the previous request to equate the beneficiary of a license of right to a nonexclusive licensee. Equating it to an exclusive licensee, as it is done by the current version of this article, seems to be unsupported in law as well as in practice. Having a licensee or right with more extensive rights than a non-exclusive licensee does not seems to serve any good purpose. The 4/6

5 objective of the license of right is in fact that of rendering available the object of the patent to the public not to create or protect a licensor of right from a possible legitimate competition. The full reasoning developed last time is reported in the Annex. Art. 34 AICIPI favors a modification of paragraph 2 of this Article, now in brackets, to specifically provide for the possibility of contesting the validity of a Community patent in a declaratory action for noninfringement. Art. 40 AICIPI favours the deletion of the sentence in square brackets, at most a sentence giving the faculty of allowing the intervention of the Commission to the Court may be considered. Art. 44 AICIPI welcomes the deletion of paragraph 4. AICIPI also welcomes the introduction (now still in square brackets) of the sentence relative to the undeserved profits made by the infringer and support the deletion of the relative square brackets. On the other end, AICIPI share the views of those who believe that damages should be fully compensatory but not punitive in principle and therefore supports the deletion of the sentence in square brackets relating to the good or bad faith of the parties. Paragraph 3 is still problematic in our view, in relation to the introduced terms or languages. We believe that in principle it should not make any difference if a State has only one official language or a multitude of official languages, also to respect the principle of equality of the citizens of the Union. Therefore, the only possible fair and correct solution in case of multiple official languages is that the notification (or official publication in the Patent Bulletin ) occurs in one of the official languages of that State. Also in this case, the full argument developed earlier is reported in the annex. 5/6

6 Art. 45 AICIPI reiterates its view that the wording of this Article needs to be clarified, at a minimum in that a positive statement is made to the extent that an infringement action can be proposed at any time during the life of the patent (even after five years have lapsed from the date the patentee became aware of the infringing acts), while damages may not be recovered in any case for infringing acts occurred more than five years before the date the action was initiated. Additionally, it should be clarified that a prior user defense is possible at any time. Milano, Francesco Macchetta President, AICIPI 6/6