EUROPEAN COMMISSION Internal Market and Services DG Knowledge-based Economy Industrial property Brussels, 09/01/06 Questionnaire On the patent system in Europe 1Errore. Nome della proprietà del documento
INTRODUCTION The field of intellectual property rights has been identified as one of the seven cross-sectoral initiatives for the Union's new industrial policy as set out in the Commission Communication launched on 5 October 2005. Stimulating growth and innovation means improving the framework conditions for industry, which include an effective IPR system. In 1997, the Commission launched the idea of a Community Patent in its Green Paper on promoting innovation. This was taken up by Heads of State and Government in the conclusions of the Lisbon European Council of March 2000, who called for a Community patent to be available by the end of 2001. The Community Patent proposal, establishing a unitary system of patent protection for the single market, has formally been on the table of the Council since 2000 but overall agreement is yet to be achieved. The Commission remains convinced that an affordable Community Patent would offer the greatest advantages for business: we owe it to industry, investors and researchers to have an effective patent regime in the EU. Commissioner McCreevy has stated his intention to make one final effort to have the proposal adopted during his mandate. Until the time and conditions are ripe for that effort, the interim period should be used to seek views of stakeholders on en effective IPR system in the EU. Views are therefore sought on the patent system in Europe, and what changes if any are needed to improve innovation and competitiveness, growth and employment in the knowledge-based economy. Please note that this consultation focuses on the overall legal framework. Accompanying measures, such as information, awareness raising or support training, are outside the scope of consultation. The document that follows contains a number of questions: In answering them we would invite you to be as detailed as you can. Supporting evidence and statistics are also welcome. On the basis of the feedback the Commission intends to organise a hearing in Brussels in early summer 2006. This consultation is open to all, and will be closed on 31 March 2006. The Commission services will publish a report on the outcome of this consultation. It will be available on the Internal Market and Services Directorate's General website. Please either email us at: Markt-D2-patentstrategy@cec.eu.int Or send your response by post to: Mr Erik Nooteboom Head of Unit Industrial Property Unit Internal Market and Services Directorate General European Commission 1049 Brussels Belgium PRIVACY STATEMT Please be sure to indicate if you do not consent to the publication of your personal data or data relating to your organisation with the publication of your response. The contact data provided by the stakeholder make it possible to contact the stakeholder to request a clarification if necessary on the information supplied. 2Errore. Nome della proprietà del documento
By responding to this consultation you automatically give permission to the Commission to publish your contribution unless your opposition to publish your contribution is explicitly stated in your reply. The Commission is committed to user privacy and details on the personal data protection policy can be accessed at: http://europa.eu.int/geninfo/legal_notices_en.htm#personaldata For further information please contact Ms Grazyna PIESIEWICZ at grazyna.piesiewicz@cec.eu.int or at +32.2.298.01.24. 3Errore. Nome della proprietà del documento
Section 1 - Basic principles and features of the patent system The idea behind the patent system is that it should be used by businesses and research organisations to support innovation, growth and quality of life for the benefit of all in society. Essentially the temporary rights conferred by a patent allow a company a breathing-space in the market to recoup investment in the research and development which led to the patented invention. It also allows research organisations having no exploitation activities to derive benefits from the results of their R&D activities. But for the patent system to be attractive to its users and for the patent system to retain the support of all sections of society it needs to have the following features: clear substantive rules on what can and cannot be covered by patents, balancing the interests of the right holders with the overall objectives of the patent system transparent, cost effective and accessible processes for obtaining a patent predictable, rapid and inexpensive resolution of disputes between right holders and other parties due regard for other public policy interests such as competition (anti-trust), ethics, environment, healthcare, access to information, so as to be effective and credible within society. 1.1. Do you agree that these are the basic features required of the patent system? We suggest rewriting the first feature as follows: Clear substantive rules on what can and what cannot be covered by patents, balancing the interests of patentees with the interests of the public in general, as passive users, and with the objectives of the patent system. By omitting the public as a key player a great mistake would noccur: the disclosure of an invention is addressed to the public in order to disseminate the technical knowledge (this is part of the price that the patentee has to pay in order to receive back from the patent system the exclusive right). The reference to public includes the real and possible competitors who have the right of exactly knowing the effective extension of the exclusive right granted to the patentee. By the way among the public there are also those patentee competitors who are likely to become active players at the judiciary stage. Cost-effectiveness must be considered not only from the right holder standpoint, but also with reference to patent system as a whole, including the public. A cost reduction (e.g. for translations) for the right holder that puts additional costs and burdens onto the public will not help competitiveness and is not in line with the basic principle according to which the applicant / right holder has to pay for obtaining and mantaining alive an IP right. It would be really absurd to force to public to pay money in translations for having access to the IP right of the competitors. 1.2 Are there other features that you consider important? 4Errore. Nome della proprietà del documento
Defence of the competitiveness of European enterprises, and especially SMEs, with respect to overseas competitors that own a substantial share of patent rights granted in or for EU member states In addition to the basic features, a patent system common to several countries should be in line with the provisions of the following basic laws:: - Constitutional principles of the Member States; - The European Union Treaty; - Declaration on the basic rights of European citizens (Nice Treaty-2000), to ensure that there will be no discriminatory treatment between European citizens. 1.3 How can the Community better take into account the broader public interest in developing its policy on patents? EPC is in force since 1978 and is based on three official languages (English, French and German), thus intrinsically raising a problem of discrimination for the European countries like Italy whose mother tongue is different. This situation was, however, partly compensated by the possibility for the national law to ask for a translation upon validating the granted European patent in the related country. As a matter of fact some situations of discrimination existed and still exist as regards the publication of patent applications (and consequently as regards the dissemination of technical information) and the proceedings before EPO (especially at the opposition and appeal level). An equitable patent system should avoid heavy discrimination situations both as regards the obtaining of a patent protection and as regards the disputes connected to I.P. rights. Consequently, any approach that would damage EC countries whose mother tongue is different from those officially adopted by EPC and in these countries the Small and Medium Size Enterprises (shortly SMEs) would not respect this basic principle of equity. By the way this lack of equity would also apply to the disputes between the right holders and other parties, under the point of view of the legal certainty, because the knowledge of the existing rights should be known beforehand and not only when a dispute has been already started. A patent system should clearly warrant the equity of access to the technical information and of competition, with a special attention to the weaker parties, like single inventors, University, Search Organisations, and SMEs. Consequently as regards the specific questions raised at the end of Section I, since easy dissemination and accessibility of technological information is a key point to promote innovation and technical progress, the EC policy on patents should clearly take it as the main point of interest. 5Errore. Nome della proprietà del documento
Section 2 The Community patent as a priority for the EU The Commission's proposals for a Community patent have been on the table since 2000 and reached an important milestone with the adoption of the Council's common political approach in March 2003 [http://register.consilium.eu.int/pdf/en/03/st07/st07159en03.pdf; see also http://europa.eu.int/comm/internal_market/en/indprop/patent/docs/2003-03-patentcosts_en.pdf]. The disagreement over the precise legal effect of translations is one reason why final agreement on the Community patent regulation has not yet been achieved. The Community patent delivers value-added for European industry as part of the Lisbon agenda. It offers a unitary, affordable and competitive patent and greater legal certainty through a unified Community jurisdiction. It also contributes to a stronger EU position in external fora and would provide for Community accession to the European Patent Convention (EPC). Calculations based on the common political approach suggest a Community patent would be available for the whole of the EU at about the same cost as patent protection under the existing European Patent system for only five states. Question 2.1 By comparison with the common political approach, are there any alternative or additional features that you believe an effective Community patent system should offer? Common political approach The common political approach is not in line with the basic European Union principle of the equality of rights amongst all European citizens. A Community Patent system must offer the same opportunities to: Have a patent granted; Enforce the patent; defend from a patent. The common political approach is not in line with the European Union principle of subsidiarity. The common political approach does not maintain the principle that the text of the Community Patent must be translated into each of the official languages of the Member States in order to allow it to become fully known to the public in general and to accrue the technological patrimony in each Member State s official language. In this way new inventions can be fostered. Taking into consideration the foreseen proposals for a Community patent (shortly CP), according to which one of the main features is that the translation into national languages of the granted patent is no longer requested, the main consequence would be that the above mentioned discrimination would become very serious, because it would affect not only the dissemination of technical information and the problems related to the proceedings before EPO, but would impose a very heavy burden on the citizens of the countries whose mother tongue is not that of the filing and prosecution proceedings. Anyone looking to develop new products and/or processes and/or machinery must carry out proper searches beforehand and that, especially in the case of SMEs, should involve the accessibility to patent documents in an immediately understandable way. 6Errore. Nome della proprietà del documento
Thus entities of the non-official language countries and especially SMEs would be in an unfavourable condition both from the cost and from the technical and commercial competition points of view. By the way the saving of translation costs would mainly favour patent owners extra- UE. Thus the CP might be a useful tool provided that the equity problems (as above shortly summarized) are solved and the other crucial question of the judiciary system and of the enforcement of I.P. rights is equally solved. Again, even if in principle it is correct that a unitary approach should be adopted as regards not only the court system but also and mainly the judgement criteria, the proposed solution of only one centralized court (first and second instance) would heavily discriminate the parties (especially individuals and SMEs) of most European countries. A heavy problem of costs, especially connected to the need of acting in a different language using foreign lawyers would exist and in case for instance of litigation between two SME of the same country it would be incredible to have the dispute carried out far from their country with much greater expenses, which (as it happens nowadays in countries like USA and UK) discourage the small and SMEs right holders from enforcing their rights. In this case too discrimination would de facto exist in favour of big and extra UE industries. To sum up it would not be sufficient to have the CP patent translated into the national language only in case of judiciary initiatives and disputes, because it would not solve the main problem of a reasonable industrial policy in the matter of innovation and technical development Alternative solution An alternative solution to the common political approach would consist in establishing a single right for a Group of designated Member States. By the solution it would be easy to transform the current European Patent, to be validated in a series of countries, into a Community Patent. As regards the jurisdictional system creating new structures, independent of the national courts, when the issues to be decided are very much bound up with national legal acts, facts or legal instruments (licences, contracts, prior rights, right to the invention, prescription) would lead to inappropriate and difficult to practice procedures. A reasonable alternative would be that of using the already existing national courts for the CTM and have the appeal dealt with by only one appeal court. In this way the current national jurisdictional structures existing for the 1 st instance and the appeal, as meanwhile established for Community Trade Marks and Designs, would be used. A final jurisdiction could be established, e.g. by creating a special Chamber of the Luxemburg European Court. As a practical measure a UE patent system should introduce a cost reduction to SMEs, University and Research Organisations for any fee related to patent prosecution and patent maintenance in a similar way as that provided for in the US Patent Act (one half of the fees). This initiative would foster innovation among SMEs, in particular in 7Errore. Nome della proprietà del documento
Europe, and the cost saving would be of the same order as that possibly achieved by the elimination of the translations. Furthermore, this initiative will favour UE enterprises more than extra UE enterprises. 8Errore. Nome della proprietà del documento
Section 3 The European Patent System and in particular the European Patent Litigation Agreement Since 1999, States party to the European Patent Convention (EPC), including States which are members of the EU, have been working on an agreement on the litigation of European patents (EPLA). The EPLA would be an optional litigation system common to those EPC States that choose to adhere to it. The EPLA would set up a European Patent Court which would have jurisdiction over the validity and infringements of European patents (including actions for a declaration of noninfringement, actions or counterclaims for revocation, and actions for damages or compensation derived from the provisional protection conferred by a published European patent application). National courts would retain jurisdiction to order provisional and protective measures, and in respect of the provisional seizure of goods as security. For more information see [http://www.european-patent-office.org/epo/epla/pdf/agreement_draft.pdf] Some of the states party to the EPC have also been tackling the patent cost issues through the London Protocol which would simplify the existing language requirements for participating states. It is an important project that would render the European patent more attractive. The European Community is not a party to the European Patent Convention. However there is Community law which covers some of the same areas as the draft Litigation Agreement, particularly the "Brussels" Regulation on Recognition and Enforcement of Judgments (Council Regulation no 44/2001) and the Directive on enforcement of intellectual property rights through civil procedures (Directive 2004/48/EC). [http://europa.eu.int/eurlex/pri/en/oj/dat/2004/l_195/l_19520040602en00160025.pdf] It appears that there are three issues to be addressed before EU Member States may become party to the draft Litigation Agreement: (1) the text of the Agreement has to be brought into line with the Community legislation in this field (2) the relationship with the EC Court of Justice must be clarified (3) the question of the grant of a negotiating mandate to the Commission by the Council of the EU in order to take part in negotiations on the Agreement, with a view to its possible conclusion by the Community and its Member States, needs to be addressed. Questions 3.1 What advantages and disadvantages do you think that pan-european litigation arrangements as set out in the draft EPLA would have for those who use and are affected by patents? Collision with basic principles The EPLA draft breaks with the current basic principle of territoriality established in the European Patent System. The EPLA draft gives rise to discriminatory treatment for those European citizens whose language does not happen to be one of the three official languages of the European Patent system. The EPLA draft establishes that suits relating to infringement or validity of European Patents are to be handled by the European Patent Court in the language in which the European Patent was granted, i.e., in one of the 3 languages privileged under the European 9Errore. Nome della proprietà del documento
Patent system and on the basis of the corresponding text worded in that privileged language. The EPLA draft is contrary to the principle of subsidiarity and the Brussels Community Regulation that provides that the Court has to be close to the defendant s domicile since the latter is, in general, the weaker party in litigations of this type. Disadvantages The EPLA draft puts those countries with an official language other than the 3 languages of the European system in an unfavourable position with respect to the other countries. The EPLA draft is not practical on establishing a new jurisdictional structure without legal competence for many of the factors and circumstances that can arise during patent infringement suits. EPLA draft would lead to the gradual disappearance of technology translated into the official languages of the countries adhered to the Agreement when these languages happen to be other than the 3 privileged ones, with impoverishment of these nonprivileged languages and a progressive changeover from the European Patent system to a single-language system. 3.2 Given the possible coexistence of three patent systems in Europe (the national, the Community and the European patent), what in your view would be the ideal patent litigation scheme in Europe? Provided that European Patent is not a right per se, whereby speaking about litigation on this right would not be proper, we consider it correct for the national Jurisdictions to handle litigations relating to national patents either obtained by the direct national route or obtained through the European Patent system. Future community patents should be handled by the jurisdictional system competent for Community Trademarks and Designs. 10Errore. Nome della proprietà del documento
Section 4 Approximation and mutual recognition of national patents The proposed regulation on the Community patent is based on Article 308 of the EC Treaty, which requires consultation of the European Parliament and unanimity in the Council. It has been suggested that the substantive patent system might be improved through an approximation (harmonisation) instrument based on Article 95, which involves the Council and the European Parliament in the co-decision procedure with the Council acting by qualified majority. One or more of the following approaches, some of them suggested by members of the European Parliament, might be considered: (1) Bringing the main patentability criteria of the European Patent Convention into Community law so that national courts can refer questions of interpretation to the European Court of Justice. This could include the general criteria of novelty, inventive step and industrial applicability, together with exceptions for particular subject matter and specific sectoral rules where these add value. (2) More limited harmonisation picking up issues which are not specifically covered by the European Patent Convention. (3) Mutual recognition by patent offices of patents granted by another EU Member State, possibly linked to an agreed quality standards framework, or "validation" by the European Patent Office, and provided the patent document is available in the original language and another language commonly used in business. To make the case for approximation and use of Article 95, there needs to be evidence of an economic impact arising from differences in national laws or practice, which lead to barriers in the free movement of goods or services between states or distortions of competition. Questions 4.1 What aspects of patent law do you feel give rise to barriers to free movement or distortion of competition because of differences in law or its application in practice between Member States? At present the national patent laws of all the European Union Member States have been harmonised with the European Patent Convention. Hence, in principle there should not exist aspects of the national legislations, capable of creating barriers to the free movement of goods or representing a distortion for competition. The practice of each national law is what can be different, depending on the different interpretations that may be made by the national Courts of the Member States. There are, in fact, some points of the Convention on the European Patent open to a different jurisprudential interpretation, depending on the Member States: Patentability of first and second uses, principally, use with pharmaceutical purpose Patentability of diagnostic methods Patentability of invention relating to computer programs Patentability of therapeutical methods Patentability of plant varieties or animal races 4.2 To what extent is your business affected by such differences? 11Errore. Nome della proprietà del documento
Not applicable 4.3 What are your views on the value-added and feasibility of the different options (1) (3) outlined above? (1) Bringing the main patentability criteria of the European Patent Convention into Community law so that national courts can refer questions of interpretation to the European Court of Justice. This could include the general criteria of novelty, inventive step and industrial applicability, together with exceptions for particular subject matter and specific sectoral rules where these add value. We support this option. Moreover the European Patent Convention should be converted into community directive for the part concerning patentability criteria. The current Convention on the European Patent has harmonized the patentability criteria in the member states. Once a community Jurisdiction will be into force, the existence of a centralized highest instance judicial body will produce a harmonisation of criteria that will avoid these distortions. (2) More limited harmonisation picking up issues which are not specifically covered by the European Patent Convention. The UE shall intervene in some area with directive for harmonising the rules on the internal markets such as it has been dome with the directive on the enforcement. (3) Mutual recognition by patent offices of patents granted by another EU Member State, possibly linked to an agreed quality standards framework, or "validation" by the European Patent Office, and provided the patent document is available in the original language and another language commonly used in business. Absolutely NO. 4.4 Are there any alternative proposals that the Commission might consider? That indicated in Section 2, suggesting to create a practical community patent based, on the one hand, on the Convention on the European Patent and, on the other hand, based on the current national jurisdictional structures. 12Errore. Nome della proprietà del documento
Section 5 General We would appreciate your views on the general importance of the patent system to you. On a scale of one to ten (10 is crucial, 1 is negligible): 5.1 How important is the patent system in Europe compared to other areas of legislation affecting your business? 9 5.2 Compared to the other areas of intellectual property such as trade marks, designs, plant variety rights, copyright and related rights, how important is the patent system in Europe? 9 5.3 How important to you is the patent system in Europe compared to the patent system worldwide? 9 Furthermore: 5.4 If you are responding as an SME, how do you make use of patents now and how do you expect to use them in future? What problems have you encountered using the existing patent system? Not applicable 5.5 Are there other issues than those in this paper you feel the Commission should address in relation to the patent system? N/A 13Errore. Nome della proprietà del documento
(1) If you would like the Commission to be able to contact you to clarify your comments, please enter your contact details. (a) Are you replying as a citizen / individual or on behalf of an organisation? Organisation (b) The name of your organisation/contact person: Collegio Italiano dei Consulenti in Proprietà Industriale (Italian section of FICPI: Federation International des Conseils ed Proprieté intellectuelle) (c) Your email address: eccetto@studiotorta.it (d) (e) Your postal address: C.so Magenta, 56 I 20123 Milano Your organisation s website (if available): www.ficpi.it (2) Please help us understand the range of stakeholders by providing the following information: (a) (b) (c) (d) (e) (f) (g) (h) (i) In which Member State do you reside / are your activities principally located? Italy Are you involved in cross-border activity? Yes If you are a company: how many employees do you have? Not applicable What is your area of activity? Consultants of large, medium and small enterprises and research organisation and University Do you own any patents? If yes, how many? Are they national / European patents? Not applicable Do you license your patents? Not applicable Are you a patent licensee? Not applicable Have you been involved in a patent dispute? Yes, each member of the organisation is involved as consultant. Do you have any other experience with the patent system in Europe? Yes through the EPC and the national offices and cross border litigations. 14Errore. Nome della proprietà del documento