Brussels, 29 Mar 2004
No. prev. doc.: 15088/03 PI 123
Subject: PREPARATION OF THE MEETING OF THE COUNCIL ON 11 MARCH 2004
- Community patent
= Proposals for amendments to the European Patent Convention
1. In order for the Community patent to become operational, alongside the legal instruments to be adopted by the Community Institutions, amendments will have to be made to the European Patent Convention. The Annex to this Note sets out the amendments to the European Patent Convention which are considered necessary for the European Patent Organisation to be able to play its part in the Community patent system. Changes proposed in relation to the text of the Convention are highlighted.
2. While agreement has been reached on most of the proposals for amendments, a few questions remain to be resolved; these are set out in section B below.
B OUTSTANDING QUESTIONS
3. Article 65 - footnotes 1 and 2 on pages 12 and 13
Article 65(1) of the Convention gives a three-month period for filing translations of the patent after certain key events in the life of a European patent. It is proposed to add to these key events the conversion of a Community patent into a European patent designating one or more Member States of the Community. However, since such conversion would often be linked to the situation where the patent proprietor has not filed translations of the claims in all Community languages within the period laid down in Article 24a(3) of the Regulation on the Community patent, and as the length of that latter period is one of the questions still to be decided by the Council, a number of delegations have reservations on the question whether, in the light of the eventual length of that period, there should not be a shorter period than three months for the filing of the translations following the conversion. The Council should consider whether three months is appropriate here in the light of the package which it agrees in relation to the Regulation.
DELETED also have a scrutiny reservation on the second subparagraph of paragraph 1a of this Article, which is directly related to this question.
4. Article 70 - footnote 3 on page 14
DELETED have a reservation on the absence of a proposal for amending Article 70 of the Convention. This reservation is linked to the package being discussed on questions relating to translations in the context of the Regulation.
5. The Council is invited to resolve the outstanding questions set out under section B above and to approve the proposals for amendments to the European Patent Convention. These proposals for amendments should be conveyed to the Administrative Council of the European Patent Organisation, with a view to the convening of a revision conference in 2004.
GENERAL AND INSTITUTIONAL PROVISIONS
European law for the grant of patents
(1) This Convention establishes a system of law, common to the Contracting Parties, for the grant of patents for invention.
(2) Contracting Party means a Contracting State or the European Community.
(Paragraphs 1 and 2 remain unchanged)
(3) (new) Notwithstanding the provision of paragraph 2, a European patent granted for the European Community (hereafter "Community patent") shall, within the territory of the European Community, have the effect and be subject to the conditions laid down in the provisions adopted in application of the Treaty establishing the European Community (hereafter "Community law") and moreover in the provisions of this Convention according to Community law. A European patent application in which the European Community is designated shall be subject to this Convention, unless Community law provides otherwise.
Conference of representatives of the Contracting Parties
A conference of ministers from the Contracting States [...] and of representatives of the European Community, shall meet at least every five years to discuss issues pertaining to the Organisation and the European patent system.
The European Patent Office
Languages of the European Patent Office, European patent applications and other documents
(Paragraph 1 remains unchanged)
(2) A European patent application shall be filed in one of the official languages or, if filed in any other language, translated into one of the official languages in accordance with the Implementing Regulations. Throughout the proceedings before the European Patent Office, such translation may be brought into conformity with the application as filed. If a required translation is not filed in due time, the application shall be deemed to be withdrawn. Where the application is filed in a language of the Contracting States which is not an official language of the European Patent Office, the applicant will be entitled to a reduction of fees in accordance with the Implementing Regulations.
(Paragraphs 3 to 8 remain unchanged)
Departments entrusted with the procedure
To carry out the procedures laid down in this Convention, the following shall be set up within the European Patent Office:
a) a Receiving Section;
b) Search Divisions;
c) Examining Divisions;
ca) (new) an Administration Division for the Community patent ("Administration Division");
d) Opposition Divisions;
e) a Legal Division;
f) Boards of Appeal;
g) an Enlarged Board of Appeal.
Boards of Appeal
(1) The Boards of Appeal shall be responsible for the examination of appeals from decisions of the Receiving Section, the Examining Divisions, the Opposition Divisions, the Legal Division and the Administration Division.
(2) For appeals from decisions of the Receiving Section, [...] the Legal Division or the Administration Division, a Board of Appeal shall consist of three legally qualified members.
(Paragraphs 3 and 4 remain unchanged)
With regard to the interpretation and application of this Convention, the European Patent Office shall take due account of the principles deriving from any judgement of the Court of Justice of the European Communities concerning the interpretation of this Convention or of such provisions of Community law which are identical in substance to the provisions of this Convention.
At the request of the competent [...] authorities hearing an infringement or revocation action, or examining a request for a compulsory licence, the European Patent Office shall be obliged, on payment of an appropriate fee, to give a technical opinion concerning the European patent or the Community Patent which is the subject of such action or request. The Examining Division shall be responsible for issuing such opinions.
The Administrative Council
Competence of the Administrative Council in certain cases
(1) The Administrative Council shall be competent to amend:
(a) the time limits laid down in this Convention;
(b) Parts II to VIII, IXa and Part X of this Convention, to bring them into line with:
(i) an international treaty relating to patents [...]
(ii) European Community legislation relating to patents;
(c) the Implementing Regulations.
(5) The Administrative Council may not take a decision under paragraph 1(b) before the entry into force of the international treaty or of the European Community legislation relating to patents.
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