1. At the Paris Intergovernmental Conference on 25 June 1999,
the Contracting States of the European Patent Organisation set
up a Working Party on Litigation which was mandated i.a.
- to present "a draft text for an optional protocol
to the European Patent Convention which ... would commit its
an integrated judicial system, including uniform rules of procedure
and a common appeal court"
- to define "the terms under
which a common entity can be established and financed to which
national jurisdictions can refer, with
a view to obtaining advice, that part of any litigation relating
to validity and infringement".
On 17 October 2000, the mandate was confirmed by the London Intergovernmental
Conference, and the Working Party on Litigation was asked to submit
to the Member States of the European Patent Organisation an optional
agreement on the settlement of litigation concerning European patents,
including a part concerning a Facultative Advisory Council.
2. Intensive work has been ongoing ever since the Paris Intergovernmental
- The Working Party on Litigation has met several times.
- A sub-group of
the Working Party on Litigation comprising DE, UK, FR, NL, CH,
SE, DK, FI, MC, LU was set up in October 2000 by the Working
Party on Litigation to produce a draft agreement.
- Several drafts have been
prepared first by Jan Willems, later by the European Patent
Office acting as secretariat to the Sub-group.
3. At the fifth meeting of the Working Party on Litigation on
19-20 November 2003, the following proposals were discussed:
- A proposal to set up a European Patent Court (comprising
a Court of First Instance, with a Central Division and a number
Divisions, as well as a Court of Appeal) with jurisdiction
to deal with infringement and revocation actions concerning European
- A proposal to entrust the European Patent Court of Appeal
(acting as "Facultative Advisory Council") with the
task of delivering, upon request, non-binding opinions on any
of law concerning
European or harmonised national patent law to national courts
trying infringement and validity actions.
The basic legal instruments which are needed to establish the
above jurisdictional arrangements were agreed by the Working Party:
In September 2005, the Sub-group of the Working party on Litigation
met to implement into the draft Agreement on the establishment
of a European patent litigation system the relevant provisions
of Directive 2004/48/EC on the enforcement of intellectual property
rights. The latest draft was submitted to the Working Party on
Litigation for information on occasion of its meeting on 14.12.2005.
4. The Working Party on Litigation adopted in November
2003 a Declaration stressing
- the proposed jurisdictional arrangement offers an optimum
solution for users of the European patent system
- the drafts
constitute a suitable basis for convening a Diplomatic Conference
to adopt the new court system.
The Declaration also acknowledges, however, that the establishment
of a litigation system for European patents has to be paused, in
view of the work being done by the European Union to introduce
a Community patent with a judicial system of its own. The Working
Party decided to meet again on the 8.12.2004, and to use the time
until then for consultations to resolve potential conflicts between
the law of the European Union and the planned European patent litigation
5. The EPO has participated actively in the work of the Working
Party on Litigation because there is an urgent need to remedy the
shortcomings of the present purely national litigation system for
European patents, with its well-known problems arising from multiple
patent litigation which involves high costs, legal uncertainty,
cross-border litigation and forum shopping: the co-existence of
a multiplicity of patent enforcement authorities in Europe leads
to a fragmented and inefficient market for ideas.
The prospects of the introduction of the Community patent system
which will i.a. include a centralised court for Community patents
should not induce to inactivity: several hundred thousands European
patents are today in force in the EPC Contracting States, and European
patents will continue to be granted even after Community patents
become available. A workable litigation scheme for European patents
is badly needed already now by the users of the European patent
6.The main features of the Draft Agreement and Statute are as
6.1 A new international organisation – the European Patent
Judiciary (EPJ) – is set up by those EPC Contracting States
committing themselves to the proposed integrated judicial system.
The organs of the EPJ are the European Patent Court (comprising
the Court of First Instance, the Court of Appeal and a Registry)
and the Administrative Committee.
The Court of First Instance comprises a Central Division set up
at the seat of the EPJ and a number of Regional Divisions. Regional
Divisions will be set up upon request by a Contracting State or
a group of Contracting States: a group of smaller Contracting States
may wish to set up one common Regional Division, whereas a larger
Contracting State may request that up to three Regional Divisions
be set up in that State, if the number of cases concerning European
patents heard in that State warrants it.
Important functions are devolved to the Registrar who shall manage
the central registry set up at the seat of the EPJ and sub-registries
located in the Contracting States.
The Court of Appeal, which decides on appeals from decisions of
the Court of First Instance and on petitions for review, is set
up at the seat of the EPJ. The Court of Appeal shall also act as
Facultative Advisory Council.
The Administrative Committee, composed of representatives of the
participating States, supervises the European Patent Court, without
prejudice to the Court's judicial independence; it also sets up
Regional Divisions upon request, appoints the judges and the Registrar
and exercises important legislative and budgetary powers.
6.2 The financial provisions of the Agreement are based on the
assumption that the EPJ will be financed by its own resources (i.e.,
court fees). Yet the parties’ interests in a fair access
to the European Patent Court is also acknowledged, and contributions
by the States are foreseen if the EPJ is unable to balance its
budget with its own resources.
6.3 The substantive patent law contained in the Agreement is closely
related to the corresponding provisions in the 1989 Agreement relating
to Community patents, e.g., the definitions of infringing acts
and indirect infringement, the provisions on limitation of the
effects of the European patent and the reversal of burden of proof.
The application of Community law, in particular the Brussels and
Lugano Conventions and Council Regulation 44/2001, is dealt with
in specific provisions of the Agreement. On request by the European
Patent Court, the European Court of Justice in Luxembourg will
issue preliminary rulings binding for the European Patent Court
in so far as its decision takes effect in a Member State of the
Finally, national courts retain jurisdiction to order provisional
or protective measures provided for by their national law and to
order provisional seizure of goods as security for any damages,
compensation, costs or any other payment resulting from proceedings
before the European Patent Court.
6.4 Part IV of the Agreement lays down basic procedural provisions
(e.g., case management, publicity of proceedings, evidence, "loser
pays costs" principle). In addition, it spells out the powers
of the European Patent Court to order measures and impose securities,
sanctions and fines (e.g., astreinte, injunction, forfeiture, damages)
and to order provisional and protective measures (preliminary injunction,
orders for inspection of property (saisie contrefaçon),
freezing orders, sequestration).
6.5 Procedural remedies (appeal to the Court of Appeal and petition
for review) are provided for in Part V of the Agreement. An appeal
may only be based on the grounds that the facts alleged by the
parties were not correctly established, or that, based on the established
facts, the law was not correctly applied. New facts or evidence
may only be taken into consideration by the Court of Appeal in
exceptional cases. The petition for review is not a further appeal
to a third instance but a limited judicial review which may only
be based on the grounds that a criminal act may have had an impact
on the decision, or that a fundamental procedural defect has occurred
in proceedings before the Court of Appeal.
6.6 The mandate of the Paris Intergovernmental Conference to establish
a common entity to which national jurisdictions can refer, with
a view to obtaining advice, that part of any litigation relating
to validity and infringement was implemented by entrusting a Facultative
Advisory Council with that function; under Part Va of the Agreement,
the Court of Appeal will function as Facultative Advisory Council.
7. Finally, the Draft Statute of the European Patent Court contains
important provisions, i.a., on the composition of the panels, on
the language regime and on representation.
7.1 Cases will be heard by panels of three or five judges; at
least one judge shall be a technically qualified judge and at least
two shall be legally qualified judges; the legally qualified judges
shall be of at least two different nationalities.
7.2 The language regime is based on the time-honoured language
regime of the EPO (three official languages), as adapted to post-grant
litigation (on the model of the London Agreement on the application
of Art. 65 EPC).
At first instance, the language of the proceedings will be:
- Before the Central Division, the language of the proceedings
before the EPO.
- Before a Regional Division located in a State
having an EPO official language as official language, that official
- Before a Regional Division located in a State having
either more than one or no official language which is one of
languages of the EPO, any official language of the EPO designated by that
Before the Court of Appeal, the language of the proceedings will
always be the language of the first-instance proceedings.
Finally, if the parties agree, the Court may allow the use of
a language other than the language of the proceedings during all
or part of the proceedings.
7.3 Representation before the European Patent Court will be compulsory
and entrusted to persons registered as European patent counsel,
who may be assisted by professional representatives.