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Friday, October 31, 2003

New compromise proposal concerning pending legislative proposal for a Council Regulation on the Community patent.

The Presidency of the EU Council has published a

compromise proposal concerning Recital 6 and Articles 9a, 20, 21, 22, 24a to 24d, 44 and 53a of the pending legislative proposal for a Council Regulation on the Community patent. This paper is addressed to COREPER. It comprises statements concerning Government use of Community patents, licences of right, the grant of compulsory licences, conditions applicable to compulsory licences, and compulsory translations of the Community patent.

In particular, it is proposed that any provision in the law of a Member State allowing non-commercial use of national patents by or for the government may be applied to Community patents, but only to the extent that the use is necessary for essential defence or national security. The patentee should be informed as soon as reasonably possible about the act and be compensated in respect of the act by the government concerned. Any dispute over the amount of compensation shall be decided by the national courts of the Member State concerned.

Moreover, the Community Patent Court may grant a compulsory licence for lack or insufficiency of exploitation of a Community patent to any person filing an application four years or later after the patent application was filed and three years or later after the patent was granted if the patent proprietor has not exploited the patent in the Community on reasonable terms or has not made effective and serious preparations to do so, unless he provides legitimate reasons to justify his inaction. In determining the lack or insufficiency of exploitation of the patent, no distinction shall be made between products originating within the Community and imported products. It is mooted that On request, the Community Patent Court may grant a compulsory licence in respect of a first patent to the proprietor of a national or Community patent or to the proprietor of a plant variety right who cannot use his patent (second patent) or his national or Community plant variety right without infringing a Community patent (first patent), provided that the invention or new plant variety claimed in the second patent or plant variety right involves an important technical advance of considerable economic significance in relation to the invention claimed in the first patent. The Community Patent Court may take any measure it regards as useful to verify the existence of such a situation. In the case of a compulsory licence in respect of a dependent patent or plant variety right, the owner of the first patent shall be entitled to a cross-licence on reasonable terms to use the patented invention or protected plant variety. In times of crisis or in other situations of extreme urgency, including those relating to public health, the Community Patent Court may authorise at the request of a Member State the exploitation of a Community patent. However, the proposal says that In the case of semi-conductor technology, exploitation shall be possible without the authorisation of the right holder only in said situations of extreme urgency.

With regard to the discussion on translation requirements the proposal says that when the patent is granted, the applicant shall file a translation of all the claims into all the offical languages of the Community, unless a Member State agrees to dispense with a translation into its language. The translation shall be filed, at the choice of the applicant, either directly with the Office or via the national patent office of a Member State which has as its official language or one of its official languages the language of the translation. However, the proposal is open with regard to the question on the application of terms for preparing and filing or translations into Community languages other than those required for the granting of the patent under the provisions of the Munich Convention. The proposal actually is mooting to require that such translations are produced and filed at the Office within a maximum of six, nine, or twelve months of the granting of the patent. Such translations, which have been carried out by a person authorized under the law of a Member State shall be deemed in the Community to be in conformity with the original, until proved to the contrary.

As provided by the proposal, the holder of the patent may, by a request filed with the Office within a specified time limit and under the conditions specified by the provisions of the Munich Convention, opt for the Community Patent to be converted into a European Patent designating one or more Member States.

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