The Community patent and the patent system in Europe, with evidence / House of Lords, Select committee on the European Communities.

  • Great Britain. Parliment. House of Lords. Select Committee on the European Communities.
Date:
1998
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Licence: Open Government Licence

Credit: The Community patent and the patent system in Europe, with evidence / House of Lords, Select committee on the European Communities. Source: Wellcome Collection.

    48/144 (page 16)
    18 February 1998] [Continued 7.2 We also believe that although a Regulation would allow the new patent system to be brought into force more rapidly than under a Convention, there would be a possibility that it might be brought in with some defects still unresolved. Q8. What are the implications for the development of patent laws and policy at the national and wider international level? Is further harmonisation desirable, necessary, inevitable? 8.1 The Chartered Institute believes that international harmonisation of patent laws is essential; unfortunately it is not inevitable! In particular there is a need for US laws with their “first to invent” system to harmonise with those of the rest of the world which have a “first to file” system. 8.2 There is a need for convergence of judicial decisions within the EU. Although the provisions for harmonisation of the law of patent infringement were placed in the Luxembourg Convention of 1975, we understand that not all member states have adopted them into their national laws. It would be desirable to ensure harmonisation of this aspect of substantive patent law under EU Regulation or under a new International Convention. 8.3. We believe that the provisions concerning prior secret use or possession under current national patent systems are contrary to Article 30 and not justifiable under Article 36 of the Community Treaty because they serve to discriminate between residents of a particular State as regards those in other Member States. This arises because an act of prior use or possession, which is itself insufficient to invalidate a later patent claim because it does not constitute an enabling disclosure made available to the public, provides the prior use, or a person who has made serious and effective preparations for such a use, with a right to continue that act or projected act but only in the State where that prior, or projected, act was performed. It is suggested that any such prior user right should be a right to continue that use anywhere within the Community. This could be made the subject of a regulation for harmonising the principles for patent infringement in all EU Member States. Q9. What should be the relationship between any Community Instrument and the European Patent Convention? 9.1 This question hinges at the possibility of integrating the EPO into Community law. This would be a mammoth change requiring much of the EPC to be replaced by, for example, an EU Regulation—as much as the Community Trade Mark system is governed by the Trade Mark Regulation, working through the Office for the Harmonisation of the Internal Market (OHIM). If there were to be a Patent Regulation, it might also be necessary to contemplate a Harmonisation Directive, as has been done with Trade Marks, and as is proposed in respect of Designs. Incorporating the EPC and EPO into the Community could provide an opportunity to make amendments and substantive patent law. 9.2 A totally new structure would be required, most obviously the Administrative Council would have to be replaced. The Chartered Institute (which represents patent attorneys with responsibility for filing both patent and trade mark applications) does not regard the structure of OHIM as an acceptable model for any Community oversight of the EPO. A particular problem with OHIM is the regulations which the Commission applies to the finances; in particular, it appears that the Office is not allowed to carry over surpluses earned in one year to meet the demands of the next year and proper investment in resources, human and machine. Obviously, the office must be responsible to a Community body in the same way that the EPO is responsible to the Administrative Council. But we would not want to see oversight of the EPO by a Community organ becoming a stranglehold. 9.3 In the absence of even a rough outline of a possible EU/EPO structure, it is difficult to make any judgement. We therefore predicate that questions of substantive law would be the prerogative of the Council of Ministers and that day-to-day operation of the EPO would remain with the President. That leaves the vital area of administration. We believe that an investigation is necessary. An analysis of what the present Administrative Council actually does, accompanied by a comparison of its activities with its remit should be carried out. This should ask: — Are there existing problems? — Are there problems we can see over the next few years? — What level of Community organ would be appropriate to deal with each item of practice? — Can we forsee advantages/disadvantages if such Community organ(s) replace the Administrative Council? In parallel with such an investigation, one could take the answers to the first two questions and ask: — Could the existing Administrative Council structure be improved? — What advantages/disadvantages would follow from such an improvement? Then we could compare the two pictures: one the EU structure, the other the improved “existing” structure and ascertain if the change to Community control would be likely to produce a sufficiently positive result.