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The case was filed under Art 300(6) of the Treaty Establishing the European Treaty (now Art. 218(11) of the Treaty on the Functioning of the European Union), which authorises member states and EU institutions to seek an opinion from the ECJ on compliance with the EU treaties of an international agreement which the EU intends to join. In Case No. A-1/09 the opinion concerns the anticipated international agreement designed to establish a uniform system for judicial resolution of patent disputes. The proposed system would apply to European patents, governed by the Munich Convention of 1975, to which Poland has been a party since 2004, and to the proposed uniform “Community” patent, which would be awarded under provisions of a special EU regulation.  

The solution to these problems was supposed to be creation of the Community patent, which unlike the European patent would not be a bundle of patents but a uniform basis for protection of an invention through the European Union. This ambitious project remains on the drawing boards, however, primarily for language reasons. While the system of the European patent, based on an international convention, operates in three languages—English, French and German—the Community patent would have to comply with EU regulations for use of national languages. This would make it necessary to translate patent claims into all official languages of the member states, which in light of the technical nature of patent claims and the necessity to define the scope of application of a patent with surgical precision would prove very costly if it were possible at all. It is also unclear how a Community patent would be received by the market, given that the system of the European patent has been in operation for years, and the European Patent Office in Munich is equipped with sufficient administrative support as well as a group of experts with many years of experience.

 

In light of the difficulties associated with introduction of a Community patent, the Council of the European Union, in cooperation with the European Commission, began work on an international agreement designed to combine the existing Munich system with the proposed EU regulation governing award of the Community patent, along with creation of a single judicial body which would handle resolution of disputes related to issuance, invalidation and infringement of these patents. However, drawing up such a convention is a daunting task, which was also evident during the hearing before the ECJ. Firstly, the countries that are parties to the Munich Convention are not just EU member states, but also other countries, such as Turkey for example. Secondly, some member states, such as Spain, do not want to agree to reduce the number of languages in which the combined patent system would function. Thirdly, the proposed system for resolving patent disputes would be excluded from the judicial system of the European Union. The draft patent convention does not provide for appeals to the ECJ, whether from a decision by the European Patent Office or from a decision by the patent court. This in turn means that an act of European Union law, i.e. the regulation concerning the Community patent, would practically remain outside the jurisdiction of the European Court of Justice. This issue was the most controversial at the hearing and was the subject of numerous questions from the judges to the Commission and the Council.

The background for the Council’s motion to the ECJ is the attempts made unsuccessfully for many years to establish a uniform system for resolving patent disputes which would apply in all countries that are parties to the Munich Convention. Although the convention created a basis for a uniform procedure for awarding patents in many countries at the same time, it has not been supplemented by a dispute resolution system. This presents a major hurdle in enforcing registration rights, because the European patent was constructed as a bundle of national patents, and thus disputes concerning infringement of a European patent are dispersed among all countries for which a patent was registered, in accordance with the principle of territoriality of intellectual property rights. This can lead to a situation in which the same patent can be invalidated in one country while in another country it is held to be infringed, under the same factual circumstances. An additional barrier, arising from a ruling by the ECJ (Roche Nederland, Case No. C-539/03), is the inability to centralise in one state the proceedings concerning infringement of the same patent in several member states by companies belonging to the same capital group, even if the infringement in each of the member states is of the same nature and is the effect of applying the same commercial policy by the capital group.