Dos and don'ts for patent practitioners in Europe

The European Court of Justice has decided that a proposed agreement creating a pan-European Patents Court is not compatible with the provisions of the treaties of the European Union, thereby raising serious doubts as to whether any such court will ever be established.

On a more mundane level, representatives before the European Patent Office (EPO) are coming to terms with the effect of all the rule changes that have been made in the last few years. It has become more important than ever to file at the EPO a patent specification fully meeting the European requirements, as opportunities for amendment are becoming seriously restricted.

The need for a European patents court

When a European patent is granted, it becomes a bundle of national patents, and infringement and validity of the patent is determined by individual national courts. There are many examples where the decisions on these important matters have differed from country to country.

Increasingly, judges in various European countries have tried to take notice of the judgments of others, but it is clear that the only way to ensure consistency of result throughout the countries where any particular European patent is in force is to have a European Patents Court.

The first serious proposals for a specialised supra-national European court with the power to determine issues of infringement and validity for a European patent were made in the early 1970s. Since that time, attempts to bring such a court into effect have been sidelined. However, a few years ago, the European Commission decided to move forward with the proposal, with unprecedented support from patent judges across Europe, including vociferous support from the English Appeal Court.

A great deal of work was undertaken, and there were discussions between interested parties in many countries. In December 2009, it looked as though, at last, the new pan- European court was only a short time away when the Commission unanimously adopted a proposal for it, as well as for a Community patent. This detailed proposal included draft regulations describing how the judges would be chosen, who could represent clients in proceedings and the rules of procedure.

However, it now looks as if the proposal has been kicked into the long grass by the European Court of Justice. It is not clear whether, after all this time, anyone will have the energy and commitment to pick up the proposals yet again and try to get the project moving forward.

The decision of the European Court of Justice

A number of governments, including Ireland’s, had sought an opinion from the Court of Justice as to whether the proposed European and Community Patents Court was compatible with the treaties of the European Union.

Noting that the founding treaties of the European Union established a new legal order, the court commented that the essential characteristics of that legal order “are in particular its primacy over the laws of the Member States and the direct effect of a whole series of provisions which are applicable to their nationals and to the Member States themselves”.

The court also noted that the proposed agreement for bringing the European Patents Court into effect would vest the Patents Court with exclusive jurisdiction for a significant number of actions in the field of patents and that jurisdiction would extend, amongst other things, to actions relevant to Community patents.

“To that extent, the courts of the contracting States, including the courts of the Member States, are divested of that jurisdiction and accordingly retain only those powers which are not subject to the exclusive jurisdiction of the PC.”

“For effectiveness at the EPO, therefore, the claims at the outset need to be couched in broad language and, if possible, functional language should be used. The claims should avoid relative and imprecise language.”

While the court did not see that there is any fundamental incompatibility between an International Court and European Union law, it felt that “the international court envisaged in this draft agreement is to be called upon to interpret and apply not only the provisions of that agreement but also the future regulation on the Community patent and other instruments of European Union law”.

Because of this, the opinion of the court was that the proposed agreement creating the European and Community Patents Court is not compatible with the provisions of the treaties of the European Union. Of course, this blows the Commission proposals out of the water, and we can only wait to see if there are any attempts to resurrect the idea.

New rules at the EPO

Since April 1, 2010, the EPO has required early amendment of a European patent specification to be consistent with the European rules. It is also now necessary to respond to search reports, rather than to examination reports.

Therefore, it is now mandatory to respond to the written opinion accompanying a search report on a European patent application by the following deadlines: