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.

    50/144 (page 18)
    18 February 1998] [Continued 4.1 Translations The translation issue remains a major problem—it was in 1975 and 1989, and remains so today. Further, it is a far greater problem for patents than for trade marks. The words and terms used in the specification and claims, and how they are understood by the ordinary skilled addressee, determine the scope of protection, and validity, of the patent. So expert translators, to ensure that the proper words and terms are used, would naturally be essential. Otherwise, the same patent could end up having different effects in different jurisdictions. Use of such translators would naturally be very expensive. In our view, a Community patent system in which full translation is a pre-requisite would simply not be used. Other organisations are better placed to comment on this issue (including the Chartered Institute of Patent Agents), but from our perspective, a system which used a single working language would have major attractions; and our members would favour the obvious choice of English as that working language. 4.2 Judicial Arrangements There are clearly potential benefits in having validity and infringement dealt with on a “one stop shopping” basis—with one court determining these issues for the whole of the EU. However there are also major risks, particularly if the decision is made by a court with limited experience of patent matters. We accept that this could in theory be overcome by ensuring designated patent courts in all Member States are (where necessary) trained to an appropriate level, but question whether that would be possible in practice, at least in the short term. We also understand that, with a single Community-wide appeal court, the risk of decisions from courts which may be perceived as being inexperienced in patent matters having lasting effects are limited, as those decisions could be dealt with by that single appeal court. However this in itself is going to raise similar difficulties to those said by the Commission to exist under the current system—for example increased costs of having to go on appeal, and the uncertainty whilst the appeal proceedings are pending. Given current delays in obtaining decisions from the Court of First Instance and the European Court of Justice, significant periods of uncertainty seem likely. There are proposals in the Green Paper which seek to address these issues. However we have grave concerns about these too. The first proposal is to limit the jurisdiction of national courts to matters of infringement, leaving validity to be dealt with by the EPO. National Infringement proceedings will be stayed pending the outcome of the validity proceedings at the EPO and, presumably, on appeal to the CFI and the ECJ. Our concerns about this proposal are these: (a) The same court will no longer deal with validity and infringement at the same time. These two issues are dealt with together in almost all EU jurisdictions at present. This has long been, and remains, widely regarded as desirable because the scope of a patent claim and its enforcement are regarded as inseparable; it was reflected in the improvements introduced into the CPC at the 1989 revision. (b) It will lead to increased costs, as the scope of the claim will have to be considered in two separate sets of proceedings. (c) There will be inevitable, and potentially very substantial, delay. The main cause of the delay will be the length of time taken by the EPO to make decisions—under the current system, opposition and appeal proceedings routinely taken five years or more to be determined. Secondly, there will be inevitable delay as a result of the need to have two separate sets of hearings—on top of the delays at the EPO in dealing with validity, there would then be further delays in reviving the national infringement proceedings and seeing them through to trial. The second proposal is to limit the effect of a decision by a national court on validity, so that it affected only the national patent. This, it seems, is in effect the same as the current system. We question therefore the point of introducing the new system, if its effect is no different from that which currently applies. On balance, we believe that a new central court will have to be established, with jurisdiction to deal with both validity and infringement of a Community patent. The question then is whether that court should deal with disputes at first instance, or whether it should act as a central appeal court. We see major problems with the former suggestion, not least of which is the practical one of how a single court could handle the very substantial number of cases which national patent courts currently deal with. (We estimate that over 400 patent cases are decided by national courts every year, and we do not see how it would be possible for that number of cases could be dealt with by a single court.) There is also the question of procedure. Patent cases are dealt with in a wide variety of different ways by national courts at present (e.g., the UK courts retain discovery and cross examination of live witnesses at trial, whereas neither of these procedures is generally used on the Continent). We therefore favour the alternative, namely a central appeal court. This would probably have to form part of the European Court of Justice system, possibly forming a new division of the Court of First Instance. New arrangements would need to be adopted so that appeals from national patent courts could be referred straight to