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05/07/2011

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This new text replaces the text of 23 March 2009 on a Draft Agreement on the European and Community Patents Court and draft Statute, available at http://register.consilium.europa.eu/pdf/en/09/st07/st07928.en09.pdf.

The changes include that
- The new agreement will be among EU states only; non-EU states and the EU itself will no longer participate.
- The provisions on referrals to the CJEU have been made more explicit, and sanctions have been provided for the EU states in case this new court violates EU law. However, as a result of the EU participating in neither this Agreement nor the EPC, the provisions on referrals to the CJEU cannot relate to this Agreement itself or the EPC, but only to EU law outside this Agreement. This includes the EU enforcement directive and competition law.
- Administrative appeals against EPO decisions under the unitary patent regulation go to the central division of the Unified patent court, see Article 12 of the draft unitary patent regulation and Article 15(1)(g) and 15a(3) of the present draft agreement. A further appeal will be possible to the Court of Appeal in view of the general appeal provision of Article 45.

Some points may deserve attention:

1. The agreement enters into force when a certain minimum of EU states has ratified (see Article 59). While some ideas have been floated, nothing has been put on paper yet as to how this should be combined with the unitary patent regulation for 25 states if the unified patent court starts for only e.g. 10 states if that minimum is set at 10.

2. The revocation in case of an Article 139 EPC issue (earlier non-prepublished national application affecting novelty) and in case of an Article 54(3,4) EPC1973 issue (earlier non-prepublished European application designating not all states designated in the later EP application that was filed before 13 December 2007) has not been dealt with satisfactorily in Article 38a. In particular, it is a problem that this unified patent court agreement is subject to EU law, thus subject to the unitary patent regulation, which provides that the unitary patent stands or falls as a whole even if only for one or a few states there is a novelty problem. The Community trademark regulation provides for a conversion into national trademarks in a similar situation, and here we should ask for either a similar conversion to a European bundle patent, or a change in the draft unitary patent regulation such that the unitary patent is allowed to have holes or dimples as was provided for in the Community Patent Convention.

3. Which technical judges do also have proven knowledge of civil law and procedure (see Article 10(3)? This is almost an empty set! With this requirement it will be impossible to get technical judges in all technical fields. If it is necessary that the technical judges have proven knowledge of civil law and procedure, why is it not required that the legally qualified judges have a proven knowledge of the technical field of the patent concerned: this would likewise result in an empty set.

4. It would make much more sense if the infringement provisions of the unitary patent regulation were moved to this draft agreement, just like this draft agreement provides for the revocation of unitary patents. This would take away the need for cumbersome and costly and lengthy CJEU referrals on this subject.

5. While the Brussels jurisdiction & enforcement Convention of 1968 allowed for special agreements on special subjects, in the corresponding Regulation 44/2001 that provision has been omitted. So, there is a conflict with Regulation 44/2001 that can only be repaired by introducing into that regulation a provision like that in the Brussels Convention.

6. If this new court is independent as any decent court should be, it is unclear to me how the EU states can give effect to Article 14d(1): “By virtue of the principle of sincere cooperation, set out in Article 4(3) TEU, the Contracting Member States shall ensure that the Court complies with their obligations under Union law.” The only tool the EU states have is to refrain from re-appointing judges who ignore EU law, but during their 6-year tenure, there is nothing the EU states can do.

7. As regards languages, the EPC is more liberal than the present text in that (apart from amendments to the application) any EPO language may be used without a need for translations; even other national languages of the EPC states may be used provided that a translation is filed. Under the draft agreement, parties are forced to use the official language(s) of the local / regional division, or the language of the patent in a case before the central division, and it is up to the court to waive translation requirements under Article 31(1).
It would make sense to provide that in proceedings before the central division any EPO language may be used, just like in EPO proceedings.
It would make sense to provide that all documents may always be filed in English or the language of the patent without having to translate them.
It would make sense to provide that in oral hearings before all divisions, parties are allowed to speak English.
Who is going to provide and pay for the translations mentioned in Article 31(3)? The provision is silly: if I am sued before a Danish local division, everything will be in Danish without my having any right to get translations or to file documents in English (unless Denmark decides that English may be used), but in case Denmark decides not to have a local division, the same case will go to the central division and I am entitled to request translations into Dutch.

8. A very real problem is formed by the provisions on the Courts finances: if court fees are supposed to fund the court (Article 18), the court fees will be prohibitive, which will constitute a denial of justice. So, just like national courts are paid by the tax payer, and national court fees only cover a part of a national court’s budget, most of this new European patent court’s budget should be funded from EP post-grant renewal fees.
For example: take the administrative appeals (e.g. the EPO believes that a renewal fee was paid too late and that re-establishment of rights cannot be allowed): an appeal before an EPO Board of Appeal is subject to an appeal fee of EUR 1180. This EPO appeal fee is said to cover only about 5% of the costs of an EPO appeal. This means that a cost-covering court fee for an administrative appeal before the unified patent court would be about 20 times as high, and thus be about EUR 24,000.

9. The above-mentioned issues on languages, court budget based on court fees, and administrative appeals affect access to justice, and in legalese, are difficult to reconcile with Articles 41(2) and 62(4) TRIPs Agreement.

10. Does it really make sense to shift all German patent litigation concerning EP patents to this new court, or should disputes between German parties continue to be handled by the German courts? After all, there are substantially (i.e. several hundreds) more German patent disputes than non-German patent disputes, and if all German cases are shifted to this new system, this may suffocate the new system as a multinational set-up is great for cross-border litigation but may not be as efficient for intra-German disputes as the current German system.

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