12 August 2010

Hearing of EU Court of Justice on EU Patent System did not Address Representation before Patents Court

In 2007, the European Commission presented different options regarding the creation of a unified patent litigation system in Europe [COM (2007) 165 final]. The following discussion in the
Council Working Party on Intellectual Property based on various working documents presented by the Portuguese, Slovenian, French and Czech Presidencies, resulted in a first, preliminary Draft Agreement prepared by the Slovenian Presidency in May 2008 [Doc. 9124/08], which was then further elaborated and revised to yield the latest version of the Draft Agreement as proposed by the Czech Presidency on 23 March 2009 [Doc. 7928/09].

In the course of the discussions on creating a unified patent litigation system and due to requests by various delegations (and the French Presidency), an opinion by the European Court of Justice (ECJ) was requested on the compatibility of the envisaged Agreement with the EU Treaty [Doc 9076/09].
The related Oral Hearing of the ECJ took place on May 18, 2010 and showed that there exist doubts whether a number of essential issues of the Draft Agreement are compatible with the EU Treaty and related EU law, as already reported by eminent IP bloggers Jeremy Phillips (here) and Axel Horns (here).

For the sake of completeness and in completion of my earlier posting on the controvercy between lawyers and patent attorneys regarding the entitlement for representation before the future European and EU Patent Court (EEUPC), I briefly summarise the issues discussed at this important hearing below.

Apparently, the representation arrangement pursuant Art. 28 (2) Draft Agreement, according to which "parties may alternatively be represented by European Patent Attorneys [...] pursuant Article 134 EPC and who have appropriate qualifications such as a European Union Patent Litigation Certificate", has not been discussed or objected at the hearing. This fact may be interpreted in such a way that neither the ECJ Judges nor the EU member states (appear to) have any concerns about certified EU/European Patent Attorneys representing cases before the future EEUPC on their own.

The actually discussed issues were: 
  • The admissibility of the request for an opinion according to Art. 28 (11) TFEU (Treaty on the Functioning of the European Union or, more common, Lisbon Treaty);
  • The compatibility of the Draft Agreement with the Lisbon Treaty under consideration of whether or not treaties with third party states are required for the functioning of the internal market. Some EU member states completely negated the compatibility of the Draft Agreement, while others saw compatibility in view of Art. 353 TFEU;
  • If and under which conditions may European patents according to the EPC be integrated with EU patents in a conjoint agreement;
  • The Draft Agreement does not stipulate the possibility of an appeal on decisions of the EPO to the European Court of Justice. This issue has been especially emphasised by the Court and was controversally discussed. The Advocate General asked a number of questions regarding legal remidies to decision of the EPO issued in an examination proceedings for a EU patent.
  • The crucial translation arrangement has been excluded from the Draft Agreement and could thus not be covered in the hearing. However, based on the language regime of the European Patent Convention (Art. 14 EPC), a proposal for a translation arrangement of the European Commission has been published on June 30, 2010 (see earlier posting). 
For further reading, please refer to the official report for the hearing or the private notes of Mr Jochen Pagenberg, current President of EPLAW.

The opinion of the ECJ is not expected before the end of this year.