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Document 41989A0695(03)

Protocol on the settlement of litigation concerning the infringement and validity of Community Patents (Protocol on litigation)

OJ L 401, 30.12.1989, p. 34–44 (ES, DA, DE, EL, EN, FR, IT, NL, PT)

In force

41989A0695(03)

Protocol on the settlement of litigation concerning the infringement and validity of Community Patents (Protocol on litigation)

Official Journal L 401 , 30/12/1989 P. 0034 - 0044


PROTOCOL ON THE SETTLEMENT OF LITIGATION CONCERNING THE

INFRINGEMENT AND VALIDITY OF COMMUNITY PATENTS

(Protocol on Litigation)

PART I

GENERAL PROVISIONS

Article 1

Community patent courts

1. The Contracting States shall designate in their territories as limited a number as possible of national courts and tribunals of first and second instance, hereinafter referred to as 'Community patent courts', which shall perform the functions assigned to them by this Protocol.

2. The names of the Community patent courts and their territorial jurisdiction are specified in the Annex to this Protocol. However, as regards the Kingdom of Spain and

the Portuguese Republic, the names of these courts and

their territorial jurisdiction shall be notified to the Secretary-General of the Council of the European Communities at the latest at the time of ratification of the Agreement relating to Community Patents.

3. Any change in the number, the names or territorial jurisdiction of the courts shall be notified by the Contracting State concerned to the Secretary-General of the Council of the European Communities.

Article 2

Common Appeal Court

1. A Community patent appeal court, common to the Contracting States, hereinafter referred to as 'the Common Appeal Court', shall be established by the present Protocol. The Common Appeal Court shall perform the functions assigned to it by this Protocol.

2. The seat of the Common Appeal Court shall be determined by common accord of the Governments of the signatory States.

Article 3

Legal status

1. The Common Appeal Court shall have legal personality.

2. In each of the Contracting States, the Common Appeal Court shall enjoy the most extensive legal capacity accorded to legal persons under the national law of that State; it may in

particular acquire or dispose of movable and immovable property and may be a party to legal proceedings.

3. The President of the Common Appeal Court shall represent the Common Appeal Court.

Article 4

Privileges and immunities

The Protocol on Privileges and Immunities of the Common Appeal Court shall define the conditions under which the Common Appeal Court, its judges, the members of the Administrative Committee, the officials and other servants of the Common Appeal Court and such other persons specified in that Protocol as take part in the work of the Common Appeal Court shall enjoy, in the territory of each Contracting State, the privileges and immunities necessary for the performance of their duties.

Article 5

Plenum and registry

1. The Common Appeal Court shall be constituted by

the necessary number of judges to be determined by the Administrative Committee, acting unanimously, after consulting the Common Appeal Court; this number shall be at least equal to the number of Contracting States.

2. The Common Appeal Court shall sit in plenary session. It may, however, form chambers, each consisting of the number of judges set out in its Rules of Procedure.

3. The Common Appeal Court shall have a registry.

Article 6

Appointment of the judges of the Common Appeal Court

1. The judges of the Common Appeal Court shall be chosen from persons who possess the qualifications required

for appointment to judicial office in their respective State and experience in patent law; they shall be appointed by common accord of the representatives of the Governments of the Contracting States, for a term of six years.

2. Retiring judges shall be eligible for reappointment.

Article 7

President of the Common Appeal Court

1. The Judges shall elect the President of the Common Appeal Court from among their number for a term of three years. He may be re-elected.

2. If the President is absent or indisposed, another member of the Court shall take his place, in order of seniority.

Article 8

Management

The Common Appeal Court shall be managed by its President. For the administration of the Common Appeal Court, its financial management and its accounts, the President shall be responsible to the Administrative Committee.

Article 9

Administrative Committee

1. The Administrative Committee shall be composed

of the representatives of the Contracting States, the representative of the Commission of the European Communities and their alternate representatives. Each Contracting State and the Commission shall be entitled to appoint one representative and one alternate representative to the Administrative Committee. Where appropriate, the President of the Common Appeal Court shall take part in the deliberations of the Administrative Committee.

2. Articles 11 (2), 12, 13, 14 (1), (3), (4) and (5), 16 (2), 17, 18 and 19 of the Community Patent Convention shall apply mutatis mutandis to the Administrative Committee.

Article 10

Cover of expenditure

1. Expenditure of the Common Appeal Court shall be covered:

(a) by the Common Appeal Court's own resources;

(b) by financial contributions from the Contracting States, the amount of which shall be determined in accordance with the scale resulting from Article 20 of the Community Patent Convention.

2. Each Contracting State may ask the European Patent Office to pay to the Common Appeal Court the contribution which that State is bound to make pursuant to paragraph 1 (b) by drawing from the revenue due to that State pursuant to Article 20 (2) of the Community Patent Convention.

3. The provisions laid down in paragraph 1 shall also be included in the examination of the system of financing for the special departments of the European Patent Office provided for in Article 20 (6) of the Community Patent Convention. When this examination has been concluded this Article may also be amended by a unanimous decision of the Council of the European Communities acting on a proposal by the Commission.

4. Articles 42 to 48 to the European Patent Convention shall apply to the Common Appeal Court, the Administrative Committee acting in place of the Administrative Council of the European Patent Organization and the President of the Common Appeal Court acting in place of the President of the European Patent Office.

5. The income and expenditure account and a balance sheet of the Common Appeal Court shall be examined by the Court of Auditors of the European Communities. The audit, which shall be based on vouchers and shall take place, if necessary, on the spot, shall ascertain that all income has been received and all expenditure effected in a lawful and proper manner and that the financial management is sound. The Court of Auditors shall draw up a report after the end of each accounting period.

6. The President of the Common Appeal Court shall annually submit to the Administrative Committee the accounts of the preceding accounting period in respect of the budget and the balance sheet showing the assets and liabilities of the Common Appeal Court together with the report of the Court of Auditors.

7. The Administrative Committee shall approve the annual accounts together with the report of the Court of Auditors and shall give the President of the Common Appeal Court a discharge in respect of the implementation of the budget.

Article 11

Remuneration of the members of the Common Appeal Court and Staff Regulations

1. The Administrative Committee shall determine the salaries, allowances and pensions of the President and judges of the Common Appeal Court. It shall also determine any payment to be made instead of remuneration.

2. The Administrative Committee shall lay down the Staff Regulations of the officials of the Common Appeal Court

and the Conditions of Employment of other servants of the Common Appeal Court.

3. A majority of three-quarters of the votes of the Contracting States represented and voting shall be required for the decisions which the Administrative Committee is empowered to take under this Article. Abstentions shall not be considered as votes.

Article 12

Rules of Procedure of the Common Appeal Court

The Common Appeal Court shall adopt its Rules of Procedure which shall, inter alia, lay down the language arrangements of the Court. The Rules of Procedure shall be subject to the unanimous approval of the Administrative Committee.

PART II

PROVISIONS ON INTERNATIONAL JURISDICTION AND ENFORCEMENT

Article 13

Application of the Convention on Jurisdiction and

Enforcement

1. Unless otherwise specified in this Protocol, the Convention on Jurisdiction and the Enforcement of Judgments in Civil and Commercial Matters, signed in Brussels on 27 September 1968, as amended by the Conventions on the Accession to that Convention of the States acceding to the European Communities, the whole of which Convention and of which Conventions of Accession are hereinafter referred to as 'the Convention on Jurisdiction and Enforcement', shall apply to proceedings governed by this Protocol.

2. Articles 2, 4, 5 (1), (3), (4), (5) and 24 of the Convention on Jurisdiction and Enforcement shall not apply to proceedings governed by this Protocol. Articles 17 and 18 of that Convention shall apply subject to the limitations in Article 14 (4) of this Protocol.

3. For the purpose of applying the Convention on Jurisdiction and Enforcement to proceedings governed by this Protocol, the provisions of Title II of that Convention which are applicable to persons domiciled in a Contracting State shall also be applicable to persons who do not have a domicile in any Contracting State but have an establishment therein.

Article 14

Jurisdiction

1. Subject to the provisions of this Protocol as well as

to any provisions of the Convention on Jurisdiction and

Enforcement applicable by virtue of Article 13, proceedings governed by this Protocol shall be brought in the courts of the Contracting State in which the defendant is domiciled or, if he is not domiciled in any of the Contracting States, in which he has an establishment.

2. If the defendant neither is domiciled nor has an establishment in any of the Contracting States, such proceedings shall be brought in the courts of the Contracting State in which the plaintiff is domiciled or, if he is not domiciled in any of the Contracting States, in which he has an establishment.

3. If neither the defendant nor the plaintiff is so domiciled or has such an establishment, such proceedings shall be brought in the courts of the Contracting State where the Common Appeal Court has its seat.

4. Notwithstanding the provisions of paragraphs 1 to 3 above:

(a) Article 17 of the Convention on Jurisdiction and Enforcement shall apply if the parties agree that a different Community patent court shall have jurisdiction;

(b) Article 18 of that Convention shall apply if the defendant enters an appearance before a different Community patent court.

5. The proceedings governed by this Protocol, with the exception of actions for a declaration of non-infringement of a Community patent, may also be brought in the courts of the Contracting State in which the act of infringement has been committed or threatened, or in which an act within the meaning of Article 15 (1) (c) has been committed.

PART III

FIRST INSTANCE

Article 15

Jurisdiction over infringement and validity

1. The Community patent courts of first instance shall have exclusive jurisdiction:

(a) for all infringement actions and - if they are permitted under national law - actions in respect of threatened infringement relating to Community patents;

(b)

for actions for a declaration of non-infringement, if they are permitted under national law;

(c)

for all actions in respect of the use made of the invention during the period specified in Article 32 (1) of the Community Patent Convention;

(d)

for counterclaims for revocation of the Community patent pursuant to paragraph 2.

2. The Community patent courts of first instance shall treat the Community patent as valid unless its validity is put in issue by the defendant with a counterclaim for revocation of the Community patent. The counterclaim may only be based on the grounds for revocation mentioned in Article 56 (1) of the Community Patent Convention. The second phrase of Article 55 (1) and Article 55 (2), (3) and (6) of the Community Patent Convention shall apply.

3. If the counterclaim is brought in a legal action to which the proprietor of the patent is not already a party, he shall be informed thereof and may be joined as a party to the action in accordance with the conditions set out in national law.

4. The validity of a Community patent may not be put in issue in an action for a declaration of non-infringement.

Article 16

Information to the European Patent Office

The Community patent court of first instance with which a counterclaim for revocation of the Community patent has been filed shall inform the European Patent Office of the date on which the counterclaim for revocation was filed. The latter shall record this fact in the Register of Community Patents.

Article 17

Territorial jurisdiction

1. A Community patent court of first instance whose jurisdiction is based on Article 14 (1) to (4) shall have jurisdiction in respect of:

- acts of infringement committed or threatened within the territory of any of the Contracting States,

- acts within the meaning of Article 15 (1) (c) committed within the territory of any of the Contracting States.

2. A Community patent court of first instance whose jurisdiction is based on Article 14 (5) shall have jurisdiction only in respect of acts committed or threatened within the territory of the State in which that court is situated.

Article 18

Stay of proceedings

If the judgment in an action before a Community patent court of first instance relating to a European patent application

which may result in the grant of a Community patent depends upon the patentability of the invention, that judgment may be given only after the European Patent Office has granted a Community patent or refused the European patent application.

Article 19

Judgments on validity

1. Where, in a proceeding before the Community patent courts of first instance, the validity of a Community patent has been put in issue,

(a) if any of the grounds for revocation mentioned in Article 56 (1) of the Community Patent Convention are found to prejudice the maintenance of the Community patent, the court shall order the revocation of the patent;

(b) if none of the grounds for revocation mentioned in Article 56 (1) of the Community Patent Convention is found to prejudice the maintenance of the Community patent, the court shall reject the application for revocation;

(c) if, taking into consideration the amendments made by the proprietor of the patent during the course of the action, none of the grounds for revocation mentioned in Article 56 (1) of the Community Patent Convention is found to prejudice the maintenance of the Community patent, the court shall order the patent to be maintained as amended.

2. Where a Community patent court of first instance has given a judgment which has become final on a counterclaim for revocation of the Community patent, it shall send a copy of the judgment to the European Patent Office. Any party may request information about such transmission.

3. Where a Community patent court of first instance, by a judgment which has become final, has decided to maintain the Community patent as amended, it shall send a copy of the judgment to the European Patent Office with the text of the patent as amended as a result of the proceedings. Any party may request information about such transmission. The European Patent Office shall publish the text provided that:

(a) a translation of all amendments to the patent specification in one of the official languages of each of the Contracting States which does not have as an official language the language of proceedings of the court

is filed within a time limit identical to that referred

to in Article 58 (3) (b) of the Community Patent Convention;

(b) the fee for the printing of a new specification is

paid within a time limit identical to that referred

to in Article 58 (3) (c) of the Community Patent Convention.

4. If a translation is not filed in due time or if the fee for the printing of a new specification is not paid in due time, the European Patent Office shall, notwithstanding the decision of the Community patent court, revoke the Community patent unless these acts are done and the additional fee is paid within a further period identical to that referred to in Article 58 (4) of the Community Patent Convention.

Article 20

Effect of judgments on validity

When it has become final, a judgment of a Community patent court of first instance revoking or amending a Community patent shall have, subject to Article 56 (3) of the Community Patent Convention, in all Contracting States the effects specified in Article 33 of that Convention.

PART IV

SECOND INSTANCE

Article 21

Jurisdiction of the Community patent courts of second

instance

1. An appeal to the Community patent courts of second instance shall lie from judgments of the Community patent courts of first instance in respect of proceedings referred to in Article 15 (1).

2. The conditions under which an appeal may be lodged with a Community patent court of second instance shall be determined by the national law of the Contracting State in which that court is located.

Article 22

Jurisdiction of the Common Appeal Court in respect of issues raised on appeal before Community patent courts of second instance

The Common Appeal Court shall have exclusive jurisdiction to determine issues raised on appeal before the Community patent courts of second instance concerning:

(a) the effects of the Community patent and the European patent application as provided in Articles 25 to 33 inclusive of the Community Patent Convention, in so far as questions of national law are not involved;

(b) the validity of the Community patent put in issue pursuant to Article 15 (2).

Article 23

Referrals from the Community patent courts of second

instance to the Common Appeal Court

1. Where an appeal to a Community patent court of second instance raises issues in respect of which the Common Appeal Court has exclusive jurisdiction pursuant to Article 22, the court of second instance shall stay its

proceedings in so far as they require a judgment on such issues and refer them to the Common Appeal Court for a judgment. A decision to stay proceedings and refer any of the issues mentioned in Article 22 to the Common Appeal Court may be taken without oral proceedings taking place.

2. However, the Community patent court of second instance may continue its proceedings provided that there is no possibility of the judgment of the Common Appeal Court being prejudged.

3. The Community patent court of second instance may not render a final judgment before the judgment of the Common Appeal Court has been given.

Article 24

Nature of proceedings before the Common Appeal Court

The Common Appeal Court shall examine all the issues of which it is seised and give a ruling on fact and law.

Article 25

Judgments of the Common Appeal Court

1. Where a judgment is given by the Common Appeal Court on an issue referred to in Article 22 (a) it shall find whether the Community patent or the European patent application has or has not the effects at issue.

2. Where a judgment is given by the Common Appeal Court on an issue referred to in Article 22 (b), Articles 19 and 20 shall apply mutatis mutandis.

Article 26

Applicable law

The Common Appeal Court shall apply the provisions of the Agreement relating to Community Patents.

Article 27

Effect of the judgment

A judgment given by the Common Appeal Court shall be binding in the further proceedings of the case.

Article 28

Supplementary jurisdiction of the Common Appeal Court

1. The Common Appeal Court shall decide on appeals from decisions of the Revocation Divisions and the

Patent Administration Division of the European Patent Office.

2. If proceedings in respect of a Community patent are pending before it, the Common Appeal Court shall, if necessary, decide on the lapse of that patent.

3. Where the Common Appeal Court has given a judgment pursuant to paragraph 1 or 2 it shall send a copy of the judgment to the European Patent Office. Any party may request information about such transmission.

PART V

THIRD INSTANCE AND PRELIMINARY RULING PROCEDURE

Article 29

Further appeal to national courts

The national rules concerning further appeal shall be applicable in respect of judgments of Community patent courts of second instance on matters upon which the Common Appeal Court does not have exclusive jurisdiction under Article 22.

Article 30

Preliminary ruling procedure before the Common Appeal Court

1. The Common Appeal Court shall have, in accordance with Article 5 of the Agreement relating to Community Patents, jurisdiction to give preliminary rulings concerning:

(a) the interpretation of the Agreement in respect of matters not falling within its exclusive jurisdiction as provided in Article 22 of this Protocol;

(b) the validity and interpretation of provisions enacted in implementation of the Agreement, to the extent to which they are not national provisions.

2. Where such a question is raised before a national court, that court may, if it considers that a decision on the question is necessary to enable it to give judgment, request the Common Appeal Court to give a ruling thereon.

3. Where any such question is raised in a case pending before a national court against whose decisions there is no judicial remedy under national law, that court shall bring the matter before the Common Appeal Court.

4. The term 'courts' shall include the authorities referred to in Article 70 of the Community Patent Convention.

PART VI

COMMON PROVISIONS FOR THE COMMUNITY PATENT COURTS OF FIRST AND SECOND INSTANCE

Article 31

Qualifications of judges

The judges of the Community patent courts shall be persons who possess experience of patent law.

Article 32

Applicable law

1. The Community patent courts shall apply the provisions of the Agreement relating to Community Patents.

2. On all matters not covered by the Agreement relating to Community Patents a Community patent court shall apply its national law, including its private international law.

Article 33

Procedure

1. Unless otherwise specified in the Agreement relating to Community Patents, a Community patent court shall apply the rules of procedure governing the same type of action relating to a national patent in the Contracting State where is has its seat.

2. Paragraph 1 shall apply mutatis mutandis in the case of a European patent application which may result in the grant of a Community patent.

3. The Community patent court shall record in writing at least the essentials of the oral proceedings, including the testimony given and the summary examination of the items produced in evidence; it shall attach the procedural acts and written statements.

Article 34

Specific rules on related actions

1. A Community patent court hearing an action referred to in Article 15 (1), other than an action for a declaration of non-infringement, shall, unless there are special grounds for continuing the hearing, at the request of one of the parties and after hearing the other parties, stay the proceedings where the validity of the Community patent is already in

issue before another Community patent court or before the Common Appeal Court, or where opposition to the Community patent has already been lodged or an application for revocation or a request for limitation of the Community patent has been filed at the European Patent Office.

2. The European Patent Office, when hearing an application for revocation or a request for limitation of a Community patent shall, unless there are special grounds for continuing the hearing, at the request of one of the parties

and after hearing the other parties, stay the proceedings where the validity of the Community patent is already in issue before a Community patent court or before the Common Appeal Court.

Article 35

Sanctions

1. Where a Community patent court finds that the defendant has infringed or threatened to infringe a Community patent, it shall, unless there are special reasons for not doing so, issue an order prohibiting the defendant from proceeding with the acts which infringed or would infringe the Community patent. It shall also take such measures in accordance with its national law as are aimed at ensuring that this prohibition is complied with.

2. In all other respects the Community patent court shall apply the law of the Contracting State in which the acts of infringement or threatened infringement were committed.

Article 36

Provisional, including protective measures

1. Application may be made to the courts of a Contracting State, including Community patent courts, for such provisional, including protective, measures in respect of a Community patent as may be available under the law of that State in respect of a national patent, even if, under this Protocol, a Community patent court of another Contracting State has jurisdiction as to the substance of the matter.

2. A Community patent court whose jurisdiction is based on Article 14 (1), (2), (3) or (4) shall have jurisdiction to grant provisional, including protective, measures which, subject to any necessary procedure for recognition and enforcement pursuant to Title III of the Convention on Jurisdiction and Enforcement, are applicable in the territory of any Contracting State. N° other court shall have such jurisdiction.

3. The Common Appeal Court shall not be competent to order provisional, including protective, measures and no appeal may be made to the Common Appeal Court against a judgment ordering such measures.

PART VII

TRANSITIONAL PROVISIONS

Article 37

Proceedings to which the Protocol applies

This Protocol shall only apply to proceedings initiated after the entry into force of the Agreement relating to Community Patents.

Article 38

Application of the Convention on Jurisdiction and

Enforcement

The provisions of the Convention on Jurisdiction and Enforcement rendered applicable by the preceding Articles

shall not have effect in respect of any Contracting State for which that Convention has not yet entered into force until such entry into force.

Article 39

Appointment of judges to the Common Appeal Court during a transitional period

1. During a transitional period, the expiry of which

shall be determined by the Administrative Committee,

that Committee may, in accordance with the conditions set

out in Article 5 (1), determine a number of judges of the Common Appeal Court which is smaller than the number of Contracting States.

2. During the transitional period referred to in paragraph 1, the representatives of the Governments of the Contracting States may appoint as judges of the Common Appeal Court persons who possess the qualifications required for appointment to judicial office in their respective States and experience in patent law. The judges may continue their activities in their respective States or in international organizations. They may be appointed for a term of less than six years, though this shall not be less than one year. They may be reappointed.

ANNEX

Community patent courts

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