Opinion 1/09 – the Advocates General of the European Court of Justice consider that a draft agreement which would create an EU-wide patent court is, as it stands, incompatible with the EU Treaties

On 2 July 2010, the eight Advocates General (‘AG’) of the Court of Justice of the European Union (‘ECJ’) informed the ECJ of their joint position regarding the compatibility with the EU Treaties of a draft agreement published by the EU Council of Ministers in April 2009. The agreement would create a single EU-wide patent court with jurisdiction over both European patents, as currently granted by the European Patent Office (‘EPO’) under the European Patent Convention (‘EPC’), and future EU patents.  

The ECJ has been asked to give its opinion on the legality of the draft agreement under Article 300(6) EC (now Article 218(11) TFEU) which allows the EU institutions to seek advice from the ECJ about the compatibility of an international agreement with EU law before it is concluded.  

The AG are always asked to comment on such requests for an opinion, even though it is not the ECJ’s policy to publish such statements in the official European Court Reports.  

The statement of position of the AG comes down against the compatibility of the draft agreement, concluding that “[a]s it stands at present, the envisaged agreement creating a unified patent litigation system is incompatible with the treaties.”

While the statement of position of the AG does not bind the ECJ, in questions during the hearing on 18 May 2010, several judges of the ECJ also expressed doubts about the compatibility of the draft agreement, as it currently stands, with the EU Treaties.

Background to the Opinion

The EPC is an international agreement to which 36 states, including all 27 EU Member States, are currently parties. While it provides for a single procedure for the granting of European patents by the EPO, successful grants are issued and treated by each contracting party as a national patent. Moreover, questions relating to the validity or infringement of an EPO patent must be litigated nationally. This results in multiple national court procedures and creates the risk of diverging judgments in different EU Member States on the substantive question of whether the same EPO patent is infringed or invalid.  

Indeed, negative impact of the discrepancies between, on the one hand, a Europe-wide granting system and, on the other hand, multiple national enforcement systems, was one of the main findings of the European Commission’s Pharmaceutical Sector Inquiry.  

In order to remedy these discrepancies, as far back as July 2000, the European Commission adopted a proposal for a Regulation providing for the creation of an EU patent. An EU patent would allow an individual or company to obtain a single patent effective and enforceable across all states within the EU.  

Following lengthy and intense debates, the Council published on 7 April 2009 an amended proposal for a Regulation on the EU Patent. According to the amended text, an EU patent would be granted by the EPO under the provisions of the EPC. It would have a unitary and autonomous character, producing equal effect throughout the EU, and could only be granted, transferred, declared invalid or lapse in respect of that territorial area.  

Shortly before, on 23 March 2009, the Council published a draft international agreement, which would create a court having jurisdiction in respect of litigation relating to European and EU patents. The agreement would be concluded between the 27 Member States, the European Union and the other non-EU Member States of the EPO.  

The patent court would have exclusive jurisdiction in respect of infringement and validity issues concerning European and EU patents. It would be composed of a Court of First Instance, comprising a central division and local and regional divisions and a Court of Appeal.  

On 9 June 2009, the Council asked the ECJ to provide its opinion on the compatibility of the draft agreement with the EU Treaties.  

Summary of the position taken by the AG

In their statement of position, the AG stated that:  

  • the EU is competent to conclude the draft agreement (paras 52-56);  
  • the nature of EU judicial system, as resulting from the Treaties, does not prohibit the EU from assigning to the future patent court sole competence to hear certain disputes between individuals relating to the EU patent (paras 61-67);  
  • EU law does not preclude the future patent court from being able to refer questions to the ECJ (paras 94- 103).  

However, the AG considered that certain aspects of the draft agreement, as currently worded, are incompatible with the Treaties:  

  • decisions of the EPO concerning EU patents could only be reviewed by an internal chambers of appeal created within the EPO, with no role for the ECJ. This could affect the correct and uniform application of EU law (paras 68-75);  
  • the draft agreement does not make clear that the patent court would be required to take into account, in its judgments, the EU Treaties, the fundamental rights and general principles guaranteed by EU law, and relevant secondary EU legislation (paras 79-87);  
  • the draft agreement does not refer to the primacy of the EU Treaties over international agreements and secondary EU law (paras 88-92);  
  • the draft agreement does not provide sufficient remedies in cases where the future patent court were either to infringe its obligation to make a reference to the ECJ or were to breach its obligation to observe EU law (paras 104-115); and  
  • the language regime of the future patent court would be incompatible with the rights of defence as proceedings could be conducted against a defendant in a language which would be neither that of its country of origin nor of the country where it carries out its commercial activities (paras 115-122).  


If the ECJ were to adopt a similar position, we would tentatively speculate that most of the problems identified by the AG could be resolved, with the possible exception of the question of the language regime of the future patent court. It will therefore be interesting to see what position the Court will finally take. It is expected that the Court will hand down its opinion by autumn 2010 at the earliest.