On Wednesday June 11, 2008, the EU Working Party on Intellectual Property (Patents) will have another meeting (see invitation Document CM 2046/08). The agenda for that day comprises:
Discussion of the Draft Agreement on the European Union Patent Court (9124/08 PI 24 COUR 19): examination of Part III (Articles 22 to 56); and
Draft Council Regulation on the Community Patent: first exchange of views on the revised proposal (9465/08 PI 25)
Said Document 9465/08 conveys a revised proposal for a Council Regulation on the Community patent . Changes to the previous version of the proposal (Document 7119/04) have been based on recent discussions in the Working Party on Intellectual Property (Patents). Obviously the word processors used by the EU Commission and by the Slowenian EU Presidency still do not have a redlining function; it is quite tedious to find out where the differences between both versions are. A few remarks so far:
The amended text of the recitals now emphasises that a cost effective, legally secure Community patent will in particular benefit Small and Medium-Sized Enterprises (SMEs) and would be complementary to the Small Business Act for Europe. The creation of such a unitary title should make access to the patent system easier, less costly and less risky, in particular for SMEs. Moreover, it is stressed in the amended text that the availability of a unitary title providing for equal protection throughout the entire territory of the European Union will enhance and help raise effectiveness of the fight against counterfeiting and patent infringement to the benefit of inventors, businesses and society at large. A complete geographical coverage without any loopholes will ensure effective patent protection at all external borders of the EU and will help to prevent the entry of counterfeit products into the European Single Market on the basis of Council Regulation (EC) No 1383/2003 of 22 July 2003 concerning customs action against goods suspected of infringing certain intellectual property rights and the measures to be taken against goods found to have infringed such rights.
Again in the recitals, the amended text makes cleat that the EPO will play a central role in the administration of Community patents and will alone be responsible for examination of applications and the grant of Community patents. Nevertheless, the topic of a European Patent network is conceptually introduced: the paper assures that all National Patent Offices will likewise have an important role to play, inter alia by giving advise and support to potential applicants for Community patents, in particular SMEs, by receiving applications, by forwarding applications to the EPO, and by disseminating patent information. National Patent Offices shall be compensated for these activities. In particular, applications for Community Patents can be filed directly with the EPO or via the National Patent Office of a Member State. In order to facilitate access to the patent system, in particular for SMEs, in those Member States who do not have a language in common with one of the EPO's languages, it should be possible for applicants to file an application in the working language of the National Patent Office, where this is an official language of the EU. When the applicant files in a non-EPO language he/she shall designate one of the official EPO languages as language of proceedings. The costs related to translations shall be borne by the system ('mutualisation of costs'). The level of procedural fees for processing an application for a Community Patent shall be the same regardless of where the application is filed and will be related to costs for handling the Community Patent.
It is further anticipated in the recitals that the EPO should also be entrusted with the task of administering the Community patent in the post-grant stage, for example, as regards the collection, distribution of annual fees to National Patent Offices and the management of the Register of Community Patents.
To the extent that this Regulation does not provide otherwise the substantive law applicable to the Community patent, for example as regards patentability, the scope of patent protection and the limitation of the effects of the patent, will be governed by the pertinent provisions of the Munich Convention and national law where this complies with Community law.
The Community patent shall constitute a third option. Applicants shall remain free to apply instead for a national or a European patent. The amended Regulation is without prejudice to the right of the Member States to grant national patents and shall not replace Member States' laws on patents or European patent law as established by the Munich Convention.
It is further stipulated in the recitals that the renewal fee for a Community Patent must not exceed the level of the corresponding renewal fees for an average European Patent and will be progressive throughout the life of the Community Patent. Renewal fees for Community Patents will be payable to the EPO, which will keep not more than 50 percent to cover its costs. The remaining amount will be distributed among the National Patent Offices of the Member States in accordance with a distribution key. The key for distribution shall reflect a basket of fair, equitable and relevant criteria, which should relate to patent activities and the size of the market. They should also apply balancing factors, in particular where Member States do not have an official language in common with the EPO and where Member States have a disproportionately low level of patent activities and there is a need for promotion of innovation. The Council shall agree on the relevant criteria for the level of renewal fees and for the fixing of the distribution key. A Select Committee of the Administrative Council of the EPO shall, once the Community patent enters into force, implement these criteria and fix both the level of the renewal fees and the precise distribution key for their allocation.
Art. 2 Para. 1 now makes explicitly clear that the Community patent is a patent designating the Community which is granted by the EPO under the provisions of the Munich Convention. Para. 4 states that the provisions of the Munich Convention shall apply to the Community patent to the extent that this Regulation does not provide for specific rules.
Concerning Licences pf Right, Article 20 now states that on written request by one of the parties, the Community Patent Court shall determine the appropriate compensation or review it if circumstances have arisen or become known which render the compensation determined obviously inappropriate.
Apparently provisions for providing compulsory licenses as given by Art. 20 and 21 of the original version have been scrapped. However, this might be covered by Recital 6 stating that Any negative effects of a monopoly created by a Community patent should be prevented through a system of compulsory licences. This is without prejudice to the application of Community competition law by the Commission or national authorities. However, the European Union Patent Court should be entrusted with the grant of compulsory licences in situations not falling under Community competition law.
Article 24a now says that applications for a Community patent shall be filed in one of the languages referred to in the Munich Convention. However, applicants may instead choose to submit their application in one of the official languages of their Member States, which shall be an official language of the EU. In the latter case the application shall be translated into one of the official languages of the EPO which should be designated by the applicant as language of proceedings. The translation costs concerned shall be borne by the system.
Obviously certain financial provisions are made in order to make sure that national patent Offices will not have to suffer should the EU Community Patent later become a huge success comparable to the EU Community Trade Mark administrated by OHIM. There appears to be, however, no sound justification for such measure beyond national egoism of EU Member States.
And, there might be some background behind the complete shift of the issue of compulsory licences to the field of competition law which deserves a broader discussion.
Also, Article 24a seems to be a bit odd. The crux appears to be that the translation costs concerned shall be borne by the system. Wow! Does that mean that EPO will refund the applicant's translators bills? I am in doubt: I am afraid that in plaintext this means that someone from within the European Patent Network will do the translation work, free of charge for the applicant. In the effect this might mean that the applicant will lose control of the translation process and its quality characteristics.
Who says that the EPO will play a governing role or get budgetary control? The EPO will only be contracted by the EU to carry out the examination. That is the plan, no!? So no translation burden for the EPO.
Great blog. There are some interesting developments here.
The EU's plan is not to "do the translations" themselves, but to have machine translation (MT) do it. Now, MT technology has come a long way and can give a gist of the contents of a document but I'm not sure you'd want to develop something based on it. Thus the machine translations will have no value legally -- the court will rely on human translations. I have some posts at my blog on the state of translation technology.
The effects of these new proposals and how the translation component will be handled deserves more attention.
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Dipl.-Phys. Axel H Horns is Patentanwalt (German Patent Attorney),
European Patent Attorney as well as European Trade Mark Attorney. In particular, he is Member of:
CM 2046/08). The agenda for that day comprises:
Patents
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