Explanatory Memorandum to COM(2011)216 - Proposition de RÈGLEMENT DU CONSEIL mettant en œuvre la coopération renforcée dans le domaine de la création d'une protection par brevet unitaire, en ce qui concerne les modalités applicables en matière de traduction - Main contents
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| dossier | COM(2011)216 - Proposition de RÈGLEMENT DU CONSEIL mettant en œuvre la coopération renforcée dans le domaine de la création d'une ... |
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| source | COM(2011)216  |
| date | 13-04-2011 |
In the European Union (EU), patent protection currently can be obtained either through the national patent offices of the Member States, which grant national patents, or through the European Patent Office (EPO) in the framework of the European Patent Convention (EPC) i. However, once a European patent is granted by the EPO, it must be validated in each Member State where protection is sought. For a European patent to be validated in a territory of a Member State, national law may inter alia require that the patent proprietor files a translation of the European patent into the official language of that Member State i. Therefore, the current patent system in the EU, in particular in terms of translation requirements, involves very high costs and complexity. The overall cost of validation of an average European patent reaches 12 500 EUR if validated only in 13 Member States and over 32 000 EUR if validated in the whole EU. It is estimated that the actual validation costs are around 193 million EUR per year in the EU.
Both the Europe 2020 Strategy i and the Single Market Act i identified the creation of an economy based on knowledge and innovation as a priority. Both initiatives seek to improve the framework conditions for business to innovate by creating unitary patent protection in the EU Member States together with a unified European patent litigation system.
Despite of broad recognition of the competitive disadvantage European business faces in the absence of unitary patent protection, the Union has not been able to establish unitary patent protection. The Commission first proposed a Council Regulation on the Community patent in August 2000 i. In 2002, the European Parliament adopted a Legislative Resolution i. In 2003, the Council adopted a common political approach i, but a final agreement could not be reached. Discussions on the proposal were re-launched in the Council after adoption by the Commission of the Communication 'Enhancing the patent system in Europe' in April 2007 i. The Communication confirmed the commitment to the creation of a single Community patent.
The Lisbon Treaty introduced a more specific legal basis for the creation of European intellectual property rights. According to Article 118 i of the Treaty on the Functioning of the European Union (TFEU), measures for the creation of European intellectual property rights are to be established by the European Parliament and the Council acting under the ordinary legislative procedure. Article 118 i TFEU, however, sets out a specific legal basis for the language arrangements for European intellectual property rights, which are to be established under a special legislative procedure by the Council acting unanimously after consulting the European Parliament. Therefore, the translation arrangements for any unitary patent system in the EU must be established by a separate regulation.
In December 2009, the Council adopted conclusions on an 'Enhanced patent system for Europe' i and a general approach on the proposal for a Regulation on the EU Patent i. Translation arrangements, however, were not covered due to the abovementioned change in the legal basis.
On 30 June 2010 the Commission adopted a proposal for a Council Regulation on the translation arrangements for the EU patent i. The proposal was accompanied by an Impact Assessment report i analysing various options for the possible translation arrangements. Regardless of the significant efforts made by the Presidency of the Council, it was recorded at the Competitiveness Council meeting of 10 November 2010 that no unanimous agreement on the translation arrangements could be reached i. It was confirmed at the Competitiveness Council meeting on 10 December 2010 i that insurmountable difficulties existed, making a decision requiring unanimity impossible now and in the foreseeable future. It follows that the objectives of the proposed Regulations to establish unitary patent protection in the entire European Union can not be attained within a reasonable period by applying the relevant provisions of the Treaties.
On the basis of the request of twelve Member States (Denmark, Estonia, Finland, France, Germany, Lithuania, Luxembourg, the Netherlands, Poland, Slovenia, Sweden and the United Kingdom) the Commission submitted a proposal i to the Council for authorising enhanced cooperation in the area of unitary patent protection. All Member States specified in their requests that the Commission's legislative proposals within the enhanced cooperation should be based on the recent negotiations in the Council. Following the adoption of the proposal, Belgium, Austria, Ireland, Portugal, Malta, Bulgaria, Romania, the Czech Republic, Slovakia Hungary, Latvia, Greece and Cyprus also requested to join the cooperation. The proposal for the authorising decision was adopted by the Council, after obtaining the consent of the European Parliament, on 10 March 2011. The present regulation implements the enhanced cooperation in the area of the creation of unitary patent protection as authorised by Council Decision 2011/167/EU i.
In comparison to the Commission's proposal in 2000, this proposal builds on the existing system of European patents by providing unitary effect to European patents granted for the territories of the participating Member States. The unitary patent protection will be optional and co-exist with national and European patents. The proprietors of European patents granted by the European Patent Office, may submit a request to the EPO within one month after the publication of the mention of the grant of the European patent, asking for the registration of the unitary effect. Once it is registered, the unitary effect will provide uniform protection and will have equal effect throughout the territories of all participating Member States. European patents with unitary effect may only be granted, transferred, revoked or may lapse in respect of those territories as a whole. The participating Member States shall give the task of the administration of European patents with unitary effect to the EPO.
Contents
- CONSULTATIONS WITH THE INTERESTED PARTIES
- LEGAL ELEMENTS OF THE PROPOSAL
- BUDGETARY IMPLICATIONS
- History of the proposal
- Legal approach
- 3. IMPACT ASSESSMENT
- Sub-option 3.1 - the Commission proposes translation arrangements applicable in the area of unitary patent protection that correspond to its proposal of 30 June 2010, or
- 6. DETAILED DESCRIPTION
- Article 7 - Entry into force
In January 2006, the Commission launched a broad consultation on the future patent policy in Europe i. More than 2500 replies were received from a variety of stakeholders, including businesses in all sectors of the economy, business and SME associations, patent practitioners, public authorities and academics. Respondents were asking for a European patent system that provides incentives for innovation, ensures the diffusion of scientific knowledge, facilitates technology transfer, is available to all players in the market and is legally certain. The replies clearly showed stakeholders' disappointment with the lack of progress in the Community patent project. In particular, nearly all respondents (the users of the patent system) rejected the translation arrangements included in the Council's 2003 common political approach which laid down that the patent holder would have to supply a translation of the claims (having legal effect) into all official Community languages.
Stakeholders expressed an overall support for a 'unitary, affordable and competitive' Community patent. This message was repeated at a public hearing held on 12 July 2006, where a large variety of stakeholders stated their support for the creation of a truly unitary high quality patent. They, however, underlined that political compromises should not undermine the usefulness of the project. In particular, the representatives of small and medium-sized enterprises (SMEs) highlighted the importance of moderate patenting costs.
The issue of unitary patent protection was also addressed extensively in the consultation on the Small Business Act for Europe, which consisted of a range of initiatives targeted to help European SMEs i. Small and medium-sized businesses identified the high level of patent fees and the legal complexity of the patent system as major obstacles i. In their submissions to the consultation, businesses in general and SME representatives in particular requested a significant reduction of the costs of patenting for a future unitary patent i.
Recent position papers from various stakeholders refer to the unitary patent protection. European business associations, such as BusinessEurope i, UEAPME i and Eurochambres i confirm that businesses, both large and small, want simplified, cost-effective and accessible patent protection. National business organisations in many Member States and across industry sectors have raises identical issues i. Stakeholders underlined that any solution for the unitary patent protection should build on the existing mechanisms for granting patents in Europe and necessitate no revision of the European Patent Convention.
This proposal is accompanied by an impact assessment which identifies the main problems in the current European patent system: (i) high costs related to translation and publication of European patents, (ii) differences in the maintenance of patents in the Member States (annual renewal fees have to be paid each year in each country where the patent is validated); and (iii) administrative complexity of registering transfers, licences and other rights related to patents. As a consequence, access to comprehensive patent protection in Europe is so costly and complex that it is inaccessible to many inventors and companies.
The impact assessment analyses the impacts of the following options:
Option 1 (Base-line scenario) – the Commission takes no action,
Option 2 – the Commission continues to work with the other institutions towards an EU patent covering 27 Member States,
Option 3 - the Commission presents proposals for regulations implementing enhanced cooperation:
Sub-option 3.1 - the Commission proposes translation arrangements applicable in the area of unitary patent protection that correspond to its proposal of 30 June 2010, or
Sub-option 3.2 – the Commission proposes translation arrangements applicable in the area of unitary patent protection based on its proposal of 30 June 2010 and incorporating elements of a compromise proposal discussed by the Council.
The analysis carried out in the impact assessment has demonstrated that option 3 with sub-option 3.2 is the preferred option.
These problems can only be addressed at EU level, as without an EU legal instrument Member States would not sufficiently be able to establish legal effects attached to patents that are uniform in several Member States.
Council Decision 2011/167/EU authorised the Member States listed in its Article 1 to establish enhanced cooperation in the area of the creation of unitary patent protection.
Article 118 i TFEU provides for a specific legal basis to establish language arrangements applicable to European intellectual property rights providing uniform protection throughout the Union by means of regulations adopted by a special legislative procedure with the Council acting unanimously after consulting the European Parliament.
This proposal has no impact on the Union budget.
Article 1 – Subject matter
This Article defines the subject matter of this Regulation.
Article 2 – Definitions
This Article provides for definitions of the main terms used in this Regulation.
Article 3 – Translation arrangements for the European patent with unitary effect
This Article provides that where the specification of a European patent with unitary effect has been published in accordance with Article 14 i of the EPC, no further translations are required. Article 14 i of the EPC provides that the specification of a European patent is published in the language of the proceedings before the EPO and includes a translation of the claims into the other two official languages of the EPO. Further translations are only requested in case of a dispute in accordance with Article 4 and during a transitional period under Article 6. A request for unitary effect is to be submitted in the language of the proceedings.
Article 4 – Translation in the case of a dispute
This Article requires that in the case of a dispute concerning a European patent with unitary effect, the patent proprietor provides a full translation of the patent into an official language of the participating Member State in which either the alleged infringement took place or in which the alleged infringer is domiciled. The patent proprietor would also be required to provide, at the request of the court competent in the territories of the participating Member States for disputes concerning the European patent with unitary effect, a full translation of the patent into the language of proceedings of that court. Such translations would be provided at the expense of the patent proprietor. In the case of a dispute concerning a claim for damages the court hearing the dispute would take into consideration that, before having been provided with a translation in his own language, the alleged infringer may have acted in good faith and may have not known or had reasonable grounds to know that he was infringing the patent.
Article 5 – Administration of a compensation scheme
This Article provides that the administration of a compensation scheme for applicants filing patent applications in one of the official languages of the Union that is not an official language of the European Patent Office is entrusted by the participating Member States to the European Patent Office, in accordance with Article 12 of Regulation xx/xx [substantive provisions].
Article 6 – Transitional measures
This Article provides for transitional measures to be applied during a certain period, before a system of high quality machine translations into all official languages of the Union becomes available.
Therefore, during a transitional period, a request for unitary effect as referred to in Article 12 of Regulation xx/xx implementing enhanced cooperation in the area of the creation of unitary patent protection shall be accompanied by the following: (i) a full translation of the specification of such patent into English where the language of the proceedings before the EPO in accordance with Article 14 i of the EPC is French or German; or (ii) a full translation of the specification of such patent into any official language of the participating Member States that is an official language of the Union where the language of the proceedings before the EPO is English.
These translations required during the transitional period would be published by the European Patent Office as soon as possible after the date on which a request for unitary effect as referred to in Article 12 of Regulation xx/xx [substantive provisions] is filed. Further, it is specified that the texts of these translations do not have any legal effect and are provided for information purposes only.
The transitional period should terminate as soon as high quality machine translations into all official languages of the Union are available. The quality of machine translations should be regularly and objectively evaluated by an independent expert committee established by the participating Member States in the framework of the European Patent Organisation as referred to in Article 12 of Regulation xx/xx [substantive provisions] and composed of representatives of the European Patent Office and users of the European patent system. This expert group would present an objective evaluation of the availability of high quality machine translations every two years starting from the sixth year after the entry into application of this Regulation. On this basis, the Commission would present a report to the Council and, if appropriate, propose to terminate the transitional period.
It is considered that the machine translations into all official languages of the Union should be developed within 12 years at the latest. Therefore, if the transitional period is not terminated by the Council on the basis of the proposal of the Commission, it should automatically lapse 12 years after this Regulation becomes applicable.
This Article provides that this Regulation shall enter into force on the twentieth day after its publication in the Official Journal of the European Union. However, since the substantive provisions applicable to a European patent with unitary effect are governed by Regulation xx/xx implementing enhanced cooperation in the area of the creation of unitary patent protection and are completed by the translation arrangements provided for in this Regulation, these Regulations shall be applied jointly. Therefore, the date of application of this Regulation will be a specific date which will coincide with the date of application of Regulation xx/xx [substantive provisions].