EU Patent Stumbling Again?

The EU Patent. Three words (if you’ll accept the acronym) that have promised much, but delivered little, over the many years that have passed since the idea of a unitary European patent was first floated.

For those unversed in the twists and turns of patent law’s development within Europe, it is probably worth mentioning that the EU Patent differs significantly from the “European Patent” that is administered and granted under the European Patent Convention (EPC) by the European Patent Office (EPO) in Munich. The latter provides a system of centralised application, examination and grant of “European Patents”, but upon grant these fragment into national rights (imagine the mincing machine (right) with application in at the top and patents out at the side and you’ll get the idea). The EU Patent, on the other hand, has as its goal a single patent for all member states of the EU (i.e. the same model of protection adopted by the Community Trade Mark).

The EU’s (or, strictly speaking, European Economic Community’s (EEC), as it was known then) involvement in patent law began in the late 1950s with but one clear goal: providing for the unity of the Common Market. Its rationale was simple: the territorial nature of the patent grant, amongst other things, was seen as a potential stumbling block to free-trade within the EEC and therefore attention was directed to remedy this. Thus a move towards what Van Empel describes in his classic analysis of the European Patent Convention – The Granting of European Patents, (Sijthoff, Leyden, 1975) – as the creation of a “unitary and autonomous European Patent for the Common Market as such, governed by Community law proper and dealt with by Community Institutions” was begun.

However, this initial work on an EEC patent ground to terminal halt in 1965 due, primarily, to a lack of agreement on the advisability, or otherwise, of permitting external states (including the UK as a (then) non-EEC member) to participate in the process. In many respects this first EEC attempt at a Draft European Patent Law tried to do too much by attempting to provide both a Common Market strategy which included the possibility of association on the part of non-members, and an international patent for an unspecified number of countries, under one roof. Tensions rose: the French, for example, following President De Gaulle’s infamous grand ‘non’ to the UK’s proposed entry into the Common Market in 1963, were less than content with any proposal to open the doors of an EEC patent to third states that would inevitably include the UK. Thus, the tension created by “incompatible objectives” eventually resulted in a decision to divide European patent law into two parts, the Common Market themes being catered for under the Community Patent Convention, leaving the non-EEC elements to be dealt with under what became the EPC.

To cut a long story short(ish), the Council of Europe’s proposals for a harmonised system of application, examination and grant eventually came to fruition in 1970s when the EPC entered into force. The drive towards a unitary European Patent has, however, been a far bumpier ride.

And it's not getting any smoother.

Whilst the agreement reached in December 2009 [press release here: Agreement here: [.pdf alert], during the Swedish presidency of the EU, mapped out many of the main issues, a big one was left out. Therefore, in much the same way as the coffee creams get left until the end of a box of chocolates, it left the thorny question of language to be determined at a later date. [Update: for some reason this paragraph disappeared when this was first posted. Sorry]

Enter the Belgian presidency, cue a commitment to finish the process [which, notes Merpel, given the history, is a bold move indeed!], and round 2 has kicked off.

The Commission proposal (link to proposal: here [.pdf alert]. Link to press release accompanying proposal: here), as it currently stands, would require EU Patents to be “examined and granted in one of the official languages of the EPO – English, French or German. The granted patent will be published in this language which will be the authentic (i.e. legally binding) text. The publication will include translations of the claims into the other two EPO official languages.

"No further translations into other languages will be required from the patent proprietor except in the case of a legal dispute concerning the EU patent. In this case, the patent proprietor may be required to provide further translations at his or her own expense. For example, the proprietor may have to supply a copy of the patent into the language of an alleged infringer, or into the language of the court proceedings when this is different from the language of the patent.”

The proposal also sets out accompanying measures to be agreed “in order to make the patent system more accessible to innovators.” Prominent amongst these is the suggestion that “high quality machine translations of EU patents into all official languages of the EU should be made available.” In addition, where applicants come from EU Member States that have official languages outside of the official three, they “shall continue to have the possibility to file applications in their own language. The costs of the translation into the language of proceedings of the EPO will be eligible for additional compensation, beyond what is currently already in place for European patents, including financial and technical assistance for preparing these translations.”

However, Italy and Spain are widely reported as being the most doggedly opposed to the trilingual proposal, preferring either multi-lingual or monolingual regimes (the latter using English as the language of choice).

If reports such as that on as Euractive.com, which proclaims that “A final deal on the EU patent was still being held hostage by divergent national interests”, are to be believed, then it would appear that the dreaded language issue may, once again, derail the process. Belgium certainly has its hands full with this presidency.

Thanks to Lisa Peets (Covington & Burling LLP) for the pointing out the EurActive article.

Lost in translation: here, here and here

The Kat Roars -- Parliament responds

A week ago, an item on this weblog ("IPKat rage over ECJ language issue") fulminated over the failure of the Curia website to furnish a version of the Advocate General's Opinion in Case C-497/07 Silberquelle GmbH v Maselli-Strickmode GmbH either in French or in English. Said the IPKat:

"The IPKat is enraged by the failure of the Curia to provide translations in French and English -- two languages that are very extensively used by businesses based outside the European Union and which are constantly assured that the EU offers a good, pro-competitive and business-friendly commercial environment in which to trade. Lack of money isn't an excuse. The EU has vast amounts to waste on trivial and inessential activities".

This has turned out not to be a miaow in the wilderness. Freshfields Bruckhaus Deringer partner Justin Watts, no doubt relieved to be able to take a brief break from his indoor rowing, wrote to his local Member of the European Parliament Andrew Duff MEP (right, Leader, UK Liberal Democrat European Parliamentary Party and Spokesman on Constitutional Affairs for ALDE, the Alliance of Liberals and Democrats for Europe), outlining the problem thus:

"Dear Mr Duff

I am writing to you as my MEP.

I have attached below the widely read blog of Professor Jeremy Phillips [member of the IPKat team]. He has for some time raised concerns over the continued delay and failure of the ECJ to produce its opinions and judgments in the most widely used languages of the EU and particularly in English. The instance referred to below (of an opinion being unavailable in English or French, but available in Spanish, German, Italian, Latvian, Dutch, Portuguese, Finnish and Swedish) is particularly ridiculous but is unfortunately it is more the rule than the exception.

Most opinions in intellectual property law are likely to be of interest only to intellectual property practitioners, a group among whom English is widely, almost universally, spoken. By failing to produce the AG's Opinion in English, it is withheld not only from the English and Irish contingent, but from nationals (and courts) in many other states who can read decisions in English but cannot read them in (say) Latvian.

The failure of the court to produce an English translation, or a French translation, of a critical opinion is ludicrous. This cannot be a question of money - the money has been made available to translate decisions into 8 languages. Any rational choice would suggest that English and French should be two of them. A decision based on population, frequency of language fluency, availability of translators, or contribution to budget would also have English and French translations near the top of the list.

I regard this as a major indictment of the EU's ability to spend my money wisely and administer systems well. Can you tell me how best one could wake the court's administrative processes up to the needs of the people it is supposed to serve?".

Deeply troubled by the situation, the good MEP wrote to the appropriate authorities, who told him that it can't be done. He reported back as follows:

"The facts of the matter appear to be these:

Case reports are made available in the language of the case, the language used in the application, and in the Court's language, usually French.

Likewise, opinions will be available at least in the language of the case and in French. In addition, the Court tries to translate opinions into the other EU languages to be ready before the judgment, but this is subject to the workload of the various translating departments. Some languages are available quicker than others because some translation departments have a higher workload or are permanently understaffed. English for instance has both problems.

Formally, all judgments will be published in all the EU languages, with the exception of smaller cases where French and the case language is the minimum. The Court aims to have the translation of the judgment in all the languages done before the publication of the judgment. However, this is again subject to the workload of the various translation departments.

The EU is short of money because the member states refuse to increase revenue. However, I accept that, even in these circumstances, not to put IPR opinions into EN is nonsense".

The MEP accordingly concludes:

"I will table a parliamentary question (to the European Commission) to ask them to act with the ECJ to rectify the matter".

Justin observes that the question might best be articulated so as to elicit an answer specific to IP cases, covering both failures and delays in translation. If the delay is long enough, it amounts to an effective failure. Judgments are supposed to appear in English, but in many cases the perception in the English profession is that the English version is months or years behind many of the other, less widely understood, languages.

The IPKat raises a hearty cheer. At last, a serious Parliamentarian is taking up the cudgel and is prepared to wield it. Merpel is sure that this will result in a knighthood at the very least.

Andrew Duff here
Plum Duff here
Damian Duff here
Mac Duff here

Linguistic laughs -- an expert writes

The IPKat's venerable and learned friend Dr Alexander von Mühlendahl is a man whose experiences both as Vice-President of OHIM and as an attorney in private practice have given him some precious insights into the linguistic problems that have beset Europe's Long March to harmonisation, the single market and a common understanding.

Right: the Verpiss-Dich plant, originally designated Coleus canina (presumably on account of its smell), is now thought to be a Plectranthus: see the IPKat note on Schrader v CPVO here

Prompted by David Keeling's recent post he tells the Kat:

"The laugh is certainly called for.

The original language of the Plectranthus case is German, and in that language all the terminology put on his pointed needle by David Keeling is indeed correct: the term in Article 7 of the Plant Variety Regulation is "Unterscheidbarkeit"; in the English it is "Distinctness" (English mother tongue/readers may know how to distinguish between distinctness, distinctivity, and distinctiveness). In French it should be -- the Article 7 term -- distinction, a term at times properly used in the French translation of the judgment (which may well be the original), but even there at times the "caractère distinctif" raises its head (e.g. in para. 25 of the judgment), while the proper term should have been "distinction".

The problem thus is one of proper translation, rather than sloppy language in the original. David, who in one of his past lives was at the ECJ's translation service, will know how difficult the task is.

Perhaps your readers may also chuckle at another translation "error":

The applicant in the case had claimed that the variety SUMCOL 01 for which protection was sought had already been marketed in the European Union in January 2001, under the designation "Verpiss Dich". A proper rendering in English would have been "Piss Off", but the translation service prissily chose "get lost" (in para. 12) (imagine the smell of the plant!)

As for the discretion that the CFI grants the CPVO, anything else would have come as a surprise, given the sometimes time-consuming and complicated examinations carried out by the CPVO and the participating national offices in determining stability, distinctness, novelty, etc. - it is difficult to imagine the CFI itself carrying out a re-examination or appointing experts to do so. Perhaps trade marks are indeed less complicated than plant varieties".

Plant samples here and here
Urine samples here and here
Why we love cat pee, but hate dog pee here
Thomas Bowdler here

IPKat rage over ECJ language issue

STOP PRESS: thanks for the huge response to this plea. Apart from Chris McLeod, who posted an explanation of the ruling below, I've had helpful emails from Veronica Barresi, Andrew Maggs, Cristina Garrigues and Nathan Wajsman -- and the translations and explanations continue to flow in even as I write. Many, many thanks, all of you; it shows that we IP enthusiasts really are a community, even if we may disagree, compete, complain about each other etc etc ..

This morning the Court of Justice of the European Communities posted the Opinion of the Advocate General in a reference for a preliminary ruling from the Oberster Patent- und Markensenat (Austria) in Case C-497/07 Silberquelle GmbH v Maselli-Strickmode GmbH.

Right: this is not a picture of the IPKat in a rage -- it's a picture of him struggling with those Latvian consonants.

The question referred is a slightly curious one:

"Are Articles 10(1) and 12(1) of ... Council Directive 89/104 ... to be interpreted as meaning that a trade mark is being put to genuine use if it is used for goods (here: alcohol-free drinks) which the proprietor of the trade mark gives, free of charge, to purchasers of his other goods (here: textiles) after conclusion of the purchase contract?"

The Advocate General obviously takes the question seriously because his Opinion is 58 paragraphs in length, replete with footnoted sources, and the IPKat would dearly like to tell you all about it -- but he can't. At the time of posting this blog, the Opinion is available in just eight official languages of the European Union -- Spanish, German, Italian, Latvian, Dutch, Portuguese, Finnish and Swedish. Here's his recommendation to the court, in Latvian:

"Padomes 1988. gada 21. decembra Pirmās direktīvas 89/104/EEK, ar ko tuvina dalībvalstu tiesību aktus attiecībā uz preču zīmēm, 10. panta 1. punkts un 12. panta 1. punkts jāinterpretē tādējādi, ka preču zīme netiek faktiski izmantota, ja to izmanto, lai apzīmētu nealkoholiskos dzērienus, ko preču zīmes īpašnieks saviem klientiem piedāvā bez maksas par viņa tirgoto tekstilpreču nopirkšanu".

The IPKat is enraged by the failure of the Curia to provide translations in French and English -- two languages that are very extensively used by businesses based outside the European Union and which are constantly assured that the EU offers a good, pro-competitive and business-friendly commercial environment in which to trade. Lack of money isn't an excuse. The EU has vast amounts to waste on trivial and inessential activities. Merpel adds, it's also infuriating that the Office for Harmonisation in the Internal Market has been forced to sit on mountains of cash, wrongfully taken from weath-generating users of the trade mark system, and this money can't be used instantly for the training of translators who can make Court of Justice and Court of First Instance decisions available in a wider selection of official languages.

As in the past, if anyone can put the IPKat out of his misery by giving him a clue as to what this is all about, he'd be hugely grateful.