Can member states sign EPLA on their own?
The Commission refers to the Council Regulation 44/2001 and the Directive 48/2004 of the European Parliament and the Council which can be considered as "common rules" in the sense of the judgement AETR which probibit signing agreements with "third states" (i.e. states which are not a Member States of the EU but which are Contracting States of the European Patent Organisation.) One of the strongest supporters of the EPLA is Switzerland, and in view of the judgement AETR the Member States of the EU are not entitled to sign an agreement with CH in the field of patent litigation without formal approval from Brussels.
See also opinion 1/94 of the Court of Justice on the competence of the Community to sign the TRIPS agreement: "XVII. As regards intellectual property, the harmonization achieved within the Community in certain areas covered by the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs) is either partial or non-existent. With regard to the measures to be adopted to secure the effective protection of intellectual property rights, the Community is certainly competent to harmonize national rules on those matters pursuant to Article 100 of the Treaty, but the Community institutions have hitherto scarcely exercised their powers in that field. It follows that the Community and its Member States are jointly competent to conclude TRIPs."
This opinion dates back to 1994; at that time the Court of Justice considered that the competence to sign the TRIPS agreement was a "joint competence". TRIPS relates to enforcement of intellectual property rights, so it could be expected that if the Court of Justice would have to give an opinion on the competence of the Community to enter into the EPLA agreement it would at least confirm that the EU Member States cannot participate in EPLA without the Community. In view of recent EU legislation in the field of enforcement of intellectual property rights (in particular Regulation 44/2001 and Directive 48/2004) it looks even more certain that the Court of Justice would confirm that EU Member States cannot participate in EPLA without the Community as such participating in the agreement. An agreement in which the Community participates has to be negotiated in the framework of Article 300 EC Treaty, and it is not clear whether unanimous approval of the Council would be required for the Community giving the green light to the EPLA.
The Commission's position on EPLA
Up to one year ago the Commission was squarely against EPLA. In the meantime there has been a shift, which seems attributable to Charlie McCreevy, but it could also be a tactical retreat so that the Commission will not always have to be the scapegoat for its obstruction to EPLA. In view of what has happened in the Council last week the Commission can reasonably argue that it is not to blame if EPLA goes down the drain. It can now claim that the European Parliament and certain Members of the Council of the EU are at least as hostile to EPLA as it used to be.
The Community Patent (CP) proposal
The proposal of the Commission relating to the Community Patent leaves the European Patent Organisation essentially unchanged with the sole important change that the Community would become an additional "Contracting Party" to the European Patent Organisation. The Community Patent would be the European Patent as granted by the EPO but contrary to the European Patent it would be subject to the Council Regulation on the Community Patent, and would thus after grant be subject to EU law. As long as the Community Patent would exist as a patent application (!) it would be subject of the European Patent Convention as revised in order to permit accession by the Community. The fact that the European Patent Organisation remains untouched as such, means that fiscal arrangements with Member States will also remain untouched even if the CP would be created.
The original EPLA proposal
The original EPLA proposal is an arrangement to create a centralised court structure which would replace the national courts which are currently giving judgements on validity and infringement of European Patents. The EPLA as such would leave the European Patent System entirely outside the EU legal framework. Only in very specific cases would the EPLA Court ask an opinion of the European Court of Justice. These opinions would be binding to the extent that the European Patent would be granted for a Member State of the EU.
The Commission's EPLA proposal
The Commission version of EPLA differs in that the European Community would be a Contracting Party to the EPLA in addition to the Member States.
EPLA a la Francaise
The French version of EPLA would be an agreement between EU states only, entirely subject to Community law. Non-Member States such as CH would be able to be associated to EPLA, but as CH would in general not recognise the Court of Justice of the EU, the Court system for States which are not a Member State of the EU would be different from the structure for EU Member States. (An official of the Commission mentioned the example of the EFTA Court.)
Beneath both CP and EPLA
Both these proposals (CP and EPLA) have in common that the Commission does not intend to drag the European Patent Organisation as such in the Community legal framework, whether there will be a CP or an EPLA or both. Both proposals build on the patent granted by the EPO and create a new legal framework for granted patents without touching the structure of the grant system itself. The fiscal arrangements of EPO staff are not affected, whether there will be an EPLA or a CP.
The question has to be asked what the legal effects of participation of the European Community as an additional Contracting Party to the European Patent Organisation will be, taking into account that about 3 quarters of the EPOs Contracting States are also a Member State of the EU. The fear is that the EPO would still not be bound by the "acquis communautaire" at least legally. As far as EU legislation on patents would be concerned, the EPC2000, which is to enter into force next year 2007, contains a new Article 33 and 35 which would authorise the Administrative Council, by a unanimous decision, to revise certain chapters of the European Patent Convention in order to align the EPC with European Community law. ("unanimous decision" means that the Contracting States which are not a Member State of the EU would have to approve such a change in the European Patent Convention.
Where the Commission should go
The Commission should go one step further, namely not to limit itself to creating the Community Patent but using this step to drag the grant system contained in the European Patent Convention into the EU as well. The Commission has refused this approach so far, arguing that the EPO still has a number of Contracting States which are not a Member of the EU. In practice the situation may become more complex as one of the major Contracting Parties of the European Patent Organisation, namely the Community would start becoming a heavy weight in the Administrative Council of the EPO, and the European Parliament would want to have a say as well.
The creation of the Community Patent or the EPLA according to the French model, namely as an agreement between EU States only, could then become the first step towards a complete take-over of the EPO by the Community, and the EPO would end up as an EU agency.
Why the EPO has launched EPLA
What the reason is that proposals such as the EPLA have been launched by the EPO is rather difficult to say. Possibly certain elements within the EPO would like to remain masters in their own house, and view even the participation of the Community as an additional Contracting Party to the EPC as undesirable intervention of the EU in the Office. It appears that a certain number of people in the EPO have a large freedom to do what they like, which would disappear if the rules of the EC treaty would apply. Imagine for example what a difference it would make if the EC Court of Auditors would become competent for the EPO as well, not to mention OLAF.
Whether the Commission proposals relating to the Community Patent will be adopted or EPLA; in neither case will the EPO become an agency of the EU. The creation of the Community Patent can and should go hand in hand with transformation of the EPO into a Community agency.