Opinion 1/09
Opinion delivered pursuant to Article 218(11) TFEU
(Opinion delivered pursuant to Article 218(11) TFEU – Draft agreement – Creation of a unified patent litigation system – European and Community Patents Court – Compatibility of the draft agreement with the Treaties)
Summary of the Opinion
1. International agreements – Agreement creating a unified patent litigation system – Prior opinion of the Court – Opinion requested at the preliminary stage of negotiations or before opening negotiations – Opinion requested by the Council without consulting the Parliament – Admissibility – Conditions
(Art. 218(11) TFEU)
2. International agreements – Agreement creating a unified patent litigation system – Creation of a European and Community Patents Court – Compatibility with the provisions of the Treaty
(Arts 262 TFEU and 344 TFEU)
3. International agreements – Agreement creating a unified patent litigation system – Creation of a European and Community Patents Court – Exclusive jurisdiction of that court to hear actions brought by individuals in the field of the Community patent and to interpret and apply European Union law in that field – Incompatibility with the institutional and judicial framework of the European Union
(Arts 4(3) TEU and 19(1) TEU; Arts 258 TFEU to 260 TFEU and 267 TFEU)
1. Pursuant to Article 218(11) TFEU, the European Parliament, the Council, the Commission or a Member State may obtain the opinion of the Court of Justice as to whether an agreement envisaged is compatible with the provisions of the Treaties. That provision has the aim of forestalling complications which would result from legal disputes concerning the compatibility with the Treaties of international agreements binding upon the European Union. A possible decision of the Court, after the conclusion of an international agreement binding upon the European Union, to the effect that such an agreement is, by reason either of its content, or of the procedure adopted for its conclusion, incompatible with the provisions of the Treaties could not fail to provoke, not only in the internal European Union context, but also in that of international relations, serious difficulties and might give rise to adverse consequences for all interested parties, including third countries.
The fact that the adoption of an international agreement cannot occur until after consulting, and obtaining the approval of, the Parliament, and that the adoption of any related legislative measures within the European Union will be subject to a legislative procedure involving that institution has no effect on the power accorded to the Council, under Article 218(11) TFEU, to request an opinion from the Court.
Further, it is not a prerequisite condition of being able to submit a request for an opinion pursuant to that article that the institutions concerned have reached final agreement. The right accorded to the Council, the Parliament, the Commission and the Member States to ask the Court for its opinion can be exercised individually, without any coordinated action and without waiting for the final outcome of any related legislative procedure. In any event, the Parliament retains the right itself to submit a request for an opinion.
Moreover, a request for an opinion can be submitted to the Court before the commencement of international negotiations, when the subject-matter of the envisaged agreement is known, even though there are a number of possibilities still open and different points of view on the drafting of the texts concerned, if the documents submitted to the Court make it possible for the latter to form a sufficiently certain judgment on the question raised by the Council. The admissibility of a request for an opinion cannot be challenged on the ground that the Council has not yet adopted the decision to open the international negotiations.
(see paras 47-48, 53, 55-56)
2. Article 262 TFEU cannot preclude the creation of a European and Community Patents Court. While it is true that under that article there can be conferred on the Court some of the powers which it is proposed to grant to that court, the procedure described in that article is not the only conceivable way of creating a unified patent court. Article 262 TFEU provides for the option of extending the jurisdiction of the European Union courts to disputes relating to the application of acts of the European Union which create European intellectual property rights. Consequently, Article 262 TFEU does not establish a monopoly for the Court in the field concerned and does not predetermine the choice of judicial structure which may be established for disputes between individuals relating to intellectual property rights.
Nor can the creation of a European and Community Patents Court be in conflict with Article 344 TFEU, given that that article merely prohibits Member States from submitting a dispute concerning the interpretation or application of the Treaties to any method of settlement other than those provided for in the Treaties. The jurisdiction which the draft agreement creating a unified patent litigation system intends to grant to the European and Community Patents Court relates only to disputes between individuals in that field.
(see paras 61-63)
3. The international court envisaged in the draft agreement creating a unified patent litigation system, currently named the European and Community Patents Court, is to be called upon to interpret and apply not only the provisions of that agreement but also the future regulation on the Community patent and other instruments of European Union law, in particular regulations and directives in conjunction with which that regulation would, when necessary, have to be read, namely provisions relating to other bodies of rules on intellectual property, and rules of the FEU Treaty concerning the internal market and competition law. Likewise, the European and Community Patents Court may be called upon to determine a dispute pending before it in the light of the fundamental rights and general principles of European Union law, or even to examine the validity of an act of the European Union.
While it is true that the Court has no jurisdiction to rule on direct actions between individuals in the field of patents, since that jurisdiction is held by the courts of the Member States, nonetheless the Member States cannot confer the jurisdiction to resolve such disputes on a court created by an international agreement which would deprive those courts of their task, as ‘ordinary’ courts within the European Union legal order, to implement European Union law and, thereby, of the power provided for in Article 267 TFEU, or, as the case may be, the obligation, to refer questions for a preliminary ruling in the field concerned. The system established by Article 267 TFEU, which is essential for the preservation of the Community character of the law established by the Treaties, aims to ensure that, in all circumstances, that law has the same effect in all Member States and therefore establishes between the Court and the national courts direct cooperation as part of which the latter are closely involved in the correct application and uniform interpretation of European Union law and also in the protection of individual rights conferred by that legal order.
However, the draft agreement provides for a preliminary ruling mechanism which reserves, within the scope of that agreement, the power to refer questions for a preliminary ruling to the European and Community Patents Court while removing that power from the national courts. Further, if a decision of the European and Community Patents Court were to be in breach of European Union law, that decision could not be the subject of infringement proceedings nor could it give rise to any financial liability on the part of one or more Member States due to any infringements of European Union law attributable to them.
Consequently, the envisaged agreement, by conferring on an international court which is outside the institutional and judicial framework of the European Union an exclusive jurisdiction to hear a significant number of actions brought by individuals in the field of the Community patent and to interpret and apply European Union law in that field, would deprive courts of Member States of their powers in relation to the interpretation and application of European Union law and the Court of its powers to reply, by preliminary ruling, to questions referred by those courts and, consequently, would alter the essential character of the powers which the Treaties confer on the institutions of the European Union and on the Member States and which are indispensable to the preservation of the very nature of European Union law.
(see paras 71, 78, 80-81, 83-84, 86, 88-89)
OPINION 1/09 OF THE COURT (Full Court)
8 March 2011
(Opinion delivered pursuant to Article 218(11) TFEU – Draft agreement – Creation of a unified patent litigation system – European and Community Patents Court – Compatibility of the draft agreement with the Treaties)
Table of contents
The request for an Opinion
The draft agreement on the European and Community Patents Court
Provisions of the draft agreement
Assessments made by the Council in its request for an Opinion
Summary of observations submitted to the Court
Observations on the admissibility of the request for an Opinion
Observations that the draft agreement is incompatible with the Treaties
Observations that the draft agreement is incompatible with the Treaties unless alterations are made to the draft
Observations that the draft agreement is compatible with the Treaties
Position of the Court
The admissibility of the request for an Opinion
Substance
Preliminary observations
The compatibility of the draft agreement with the Treaties
In Opinion 1/09,
REQUEST to the Court for an Opinion pursuant to Article 218(11) TFEU, made on 6 July 2009 by the Council of the European Union,
THE COURT (Full Court)
composed of V. Skouris, President, J.N. Cunha Rodrigues, K. Lenaerts, J.‑C. Bonichot, K. Schiemann, A. Arabadjiev, J.-J. Kasel and D. Šváby, Presidents of Chambers, A. Rosas, R. Silva de Lapuerta (Rapporteur), E. Juhász, G. Arestis, A. Borg Barthet, M. Ilešič, U. Lõhmus, E. Levits, A. Ó Caoimh, L. Bay Larsen, P. Lindh, T. von Danwitz, C. Toader, M. Safjan and M. Berger, Judges,
Registrar: M.-A. Gaudissart, Head of Unit,
having regard to the written procedure and further to the hearing on 18 May 2010,
after considering the observations submitted on behalf of:
– the Council of the European Union, by J.-C. Piris, F. Florindo Gijón, L. Karamountzos and G. Kimberley, acting as Agents,
– the Belgian Government, by C. Pochet, J.-C. Halleux and T. Materne, acting as Agents,
– the Czech Government, by M. Smolek, acting as Agent,
– the Danish Government, by V. Pasternak Jørgensen, R. Holdgaard and C. Vang, acting as Agents,
– the German Government, by M. Lumma and J. Kemper, acting as Agents,
– the Estonian Government, by L. Uibo, acting as Agent,
– Ireland, by D.J. O’Hagan, acting as Agent, and by E. Fitzsimons SC and N. Travers BL,
– the Greek Government, by A. Samoni-Rantou, G. Alexaki and K. Boskovits, acting as Agents,
– the Spanish Government, by N. Díaz Abad, acting as Agent,
– the French Government, by E. Belliard, B. Beaupere-Manokha, G. de Bergues and A. Adam, acting as Agents,
– the Italian Government, by G. Palmieri and M. Fiorilli, acting as Agents, and by G. Nori, vice-avvocato generale dello Stato,
– the Cypriot Government, by V. Khristoforou and M. Khatzigeorgiou, acting as Agents,
– the Lithuanian Government, by I. Jarukaitis, acting as Agent,
– the Luxembourg Government, by C. Schiltz, acting as Agent, and by P.‑E. Partsch, avocat,
– the Netherlands Government, by C. Wissels and Y. de Vries, acting as Agents,
– the Polish Government, by M. Dowgielewicz and M. Szpunar, acting as Agents,
– the Portuguese Government, by L. Fernandez, J. Negrão and M.L. Duarte, acting as Agents,
– the Romanian Government, by A. Popescu and M.-L. Colonescu, acting as Agents, and by E. Gane and A. Stoia, counsellors,
– the Slovenian Government, by V. Klemenc and T. Mihelič Žitko, acting as Agents,
– the Finnish Government, by A. Guimaraes-Purokoski and J. Heliskoski, acting as Agents,
– the Swedish Government, by A. Falk and A. Engman, acting as Agents,
– the United Kingdom Government, by I. Rao and F. Penlington, acting as Agents, and by A. Dashwood, Barrister,
– the European Parliament, by E. Perillo, K. Bradley and M. Dean, acting as Agents,
– the European Commission, by L. Romero Requena, J.‑P. Keppenne and H. Krämer, acting as Agents,
after hearing First Advocate General P. Mengozzi and Advocates General J. Kokott, E. Sharpston, Y. Bot, J. Mazák, V. Trstenjak,. N. Jääskinen and P. Cruz Villalón in closed session on 2 July 2010,
gives the following
Opinion
The request for an Opinion
1. The request submitted for the Opinion of the Court by the Council of the European Union is worded as follows:
‘Is the envisaged agreement creating a Unified Patent Litigation System (currently named European and Community Patents Court) compatible with the provisions of the Treaty establishing the European Community?’
2. The following documents were sent by the Council to the Court as annexes to its request:
– Council Document 8588/09 of 7 April 2009 on a revised proposal for a Council Regulation on the Community patent, drawn up by the Council Presidency and addressed to the working party on Intellectual Property (Patents);
– Council Document 7928/09 of 23 March 2009 on a revised Presidency text of the draft agreement on the European and Community Patents Court and the draft Statute of that court;
– Council Document 7927/09 of 23 March 2009 concerning a recommendation from the Commission to the Council to authorise the Commission to open negotiations for the adoption of an international agreement ‘creating a Unified Patent Litigation System’ at European and Community level.
The draft agreement on the European and Community Patents Court
3. The European Patent Convention (‘the EPC’), signed at Munich on 5 October 1973, is a treaty to which 38 States, including all the Member States of the European Union, are now parties. The European Union is not a party to the EPC. That convention provides for a unitary procedure for granting European patents by the European Patent Office (‘the EPO’). While the procedure for granting that right is unitary, the European patent breaks down into a bundle of national patents, each governed by the domestic law of the States which the holder of the right has designated.
4. During the year 2000 the European Council reopened discussions on a future Community patent. On 5 July 2000 the European Commission presented a proposal for a Council Regulation on the Community patent (COM (2000) 412 final), providing for the accession of the Community to the EPC, the creation of a unitary industrial property right valid throughout the Community and the granting of that right by the EPO.
5. Following the conclusions of the Competitiveness Council of 4 December 2006 and of the European Council of 8 and 9 March 2007, the Commission presented to the European Parliament and to the Council, on 3 April 2007, a communication entitled ‘Enhancing the patent system in Europe’ (COM (2007) 165 final).
6. The Commission proposed, inter alia, the creation of an integrated system for the European patent and the future Community patent. The latter would be granted by the EPO pursuant to the provisions of the EPC. It would have a unitary and autonomous character, producing equal effect throughout the European Union, and could be granted, transferred, declared invalid or lapse only in respect of the whole of that territorial area. The provisions of the EPC would apply to the Community patent to the extent that no specific rules are provided for in the regulation on the Community patent.
7. Work by the Council also led to the drawing up of a draft international agreement to be concluded between the Member States, the European Union and third countries which are parties to the EPC (‘the draft agreement’), creating a court with jurisdiction to hear actions related to European and Community patents.
8. The envisaged agreement would establish a European and Community Patents Court (‘the PC’) composed of a court of first instance, comprising a central division and local and regional divisions, and a court of appeal, that court having jurisdiction to hear appeals brought against decisions delivered by the court of first instance. The third body of the PC would be a joint registry.
Provisions of the draft agreement
9. Article 14a of the draft agreement provides:
‘Applicable law
(1) When hearing a case brought before it under this Agreement, the [Patent] Court shall respect Community law and base its decisions on:
(a) this Agreement;
(b) directly applicable Community law, in particular Council Regulation … on the Community patent, and national law of the Contracting States implementing Community law …;
(c) the European Patent Convention and national law which has been adopted by the Contracting States in accordance with the European Patent Convention;
(d) any provision of international agreements applicable to patents and binding on all the contracting parties.
(2) To the extent that the [Patent] Court shall base its decisions on national law of the Contracting States, the applicable law shall be determined:
(a) by directly applicable provisions of Community law; or
(b) in the absence of directly applicable provisions of Community law, by international instruments on private international law to which all Contracting Parties are parties; or
(c) in the absence of provisions referred to in (a) and (b), by national provisions on international private law as determined by the [Patent] Court.
(3) A Contracting State which is not a party to the Agreement on the European Economic Area shall bring into force the laws, regulations and administrative provisions necessary to comply with Community law relating to substantive patent law.’
10. Article 15 of the draft agreement is worded as follows:
‘Jurisdiction
(1) The [Patent] Court shall have exclusive jurisdiction in respect of:
(a) actions for actual or threatened infringements of patents and supplementary protection certificates and related defences, including counterclaims concerning licences;
(a1) actions for declarations of non-infringement;
(b) actions for provisional and protective measures and injunctions;
(c) actions or counterclaims for revocation of patents;
(d) actions for damages or compensation derived from the provisional protection conferred by a published patent application;
(e) actions relating to the use of the invention prior to the granting of the patent or to the right based on prior use of the patent;
(f) actions for the grant or revocation of compulsory licences in respect of Community patents; and
(g) actions on compensation for licences …
(2) The national courts of the Contracting States shall have jurisdiction in actions related to Community patents and European patents which do not come within the exclusive jurisdiction of the [Patent] Court. ‘
11. The territorial jurisdictions of the various divisions of the court of first instance of the PC are defined in Article 15a(1) of the draft agreement as follows:
‘Actions referred to in Article 15, paragraph 1(a), (b), (d) and (e) shall be brought before:
(a) the local division hosted by the Contracting State where the actual or threatened infringement has occurred or may occur, or the regional division in which this Contracting State participates; or
(b) the local division hosted by the Contracting State where the defendant is domiciled, or the regional division in which this Contracting State participates.
Actions against defendants domiciled outside the territory of the Contracting States shall be brought before the local or regional division in accordance with (a).
If the Contracting State concerned does not host a local division and does not participate in a regional division, actions shall be brought before the central division.’
12. Article 48 of the draft agreement states:
‘1. When a question of interpretation of the [EC Treaty] or the validity and interpretation of acts of the institutions of the European Community is raised before the Court of First Instance, it may, if it considers this necessary to enable it to give a decision, request the Court of Justice … to decide on the question. Where such question is raised before the Court of Appeal, it shall request the Court of Justice … to decide on the question.
2. The decision of the Court of Justice … on the interpretation of the [EC Treaty] or the validity and interpretation of acts of the institutions of the European Community shall be binding on the Court of First Instance and the Court of Appeal.’
Assessments made by the Council in its request for an Opinion
13. The Council states that ‘a majority of [its members] believe that the envisaged agreement constitutes a legally possible way to achieve the envisaged aims. However, a number of legal concerns have been expressed and discussed’. The Council points out that ‘the presentation of the various issues is intended to be neutral, making no reference to the degree of support received by the various approaches and that [it] is taking side neither for one answer nor for the other’.
14. The Council considers that the effect of the envisaged agreement is not to change the essential character of the powers vested in the Court. Member States should be able to organise the structure of the envisaged judicial system as they think fit, including by setting up a court which is international in nature.
15. The Council observes that the obligation on the PC to respect European Union law is intended to have a very wide scope, covering not only the Treaties and acts of the institutions, but also the general principles of the European Union legal order and the case-law of the Court.
Summary of observations submitted to the Court
16. The following arguments are put forward in the observations submitted: that the request for an Opinion is inadmissible; that the draft agreement is incompatible with the Treaties; that it is necessary to make amendments to the draft agreement in order to ensure its compatibility with the Treaties, or that the envisaged agreement is compatible with the Treaties.
Observations on the admissibility of the request for an Opinion
17. The Parliament and the Spanish Government maintain, in essence, that the request for an Opinion is premature and that it is based on infor
