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.
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 Conference:
3. At the fifth meeting of the Working Party on Litigation on 19-20 November 2003, the following proposals were discussed:
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. The work of the Working Party on Litigation on the draft Agreement was not continued ever since.
4. The Working Party on Litigation adopted in November 2003 a Declaration stressing that
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.
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 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 system.
The EU Commissions' communication adopted on 29.3.2007, "Enhancing the patent system in Europe" suggested an integrated approach which combines features of both EPLA and a Community jurisdiction as initially proposed by the Commission. The work on an integrated judicial system has since then continued on EU level (see Community patent and patent litigation )
6.The main features of the Draft Agreement and Statute are as follows.
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 European Union.
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 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.