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a. Filing of a translation according to Art. 65 EPC

Ruling of the ECJ dated September 21st, 1999 C-44/98

In this case, the principle of the filing of a translation itself is at stake.

The facts:

BASF Corporation, an American company, was granted a European patent in English on July 24th, 1996 (date of the notification of grant). BASF then assigned its patent to BASF AG. In 1997, when this company either tried to record the assignment or pay the annuities, the German patent office notified them that the patent was void in Germany because the German translation had not been filed. BASF AG brought an action for annulment of that decision, notably arguing that the denial of any effect of a European patent because no translation has been filed within the delay is against Articles 28 and 30 (previously 30 et 36) of the EC Treaty. The German court then asks an interlocutory question in that sense to the ECJ.

Decision:

Article 28 of the EC Treaty guarantees the free movements of goods within the European Union. Article 30 mentions exceptions to that rule, notably the protection of the industrial and commercial property.

BASF argues that, the translation costs being very high, many patent holders are forced to narrow the number of countries where they validate their European patent. This limitation results in the division of the internal market between a "free zone" (where the patent is not valid) and "protected zone" (where the patent is valid), which is an obstacle to the free movement of goods. This division thus results in the fact that:

• The economical operators (other than the patent holder) in the protected zone cannot manufacture in the protected zone in order to export into the free zone ;
• The patent holder is afraid of parallel re-import mechanism.

The EJC however did deem BASF to be right, arguing that its motives were not pertinent, because on the one hand if the inventor had not filed a European patent but national patents, he would all the same have had to make a choice and file a translation in each country, and because on the other hand the consequences of the restrictive effects of the division on the free movements of goods are too uncertain and indirect to be considered an obstacle within the meaning of Article 28.

b. Other recent ECJ case law

GENERICS vs SKF (ECJ July 9th, 1997 - C-316/95):

Generics obtained a market authorisation in the Netherlands for products still protected by a patent of SKF.

The ECJ judged it legal to forbid this kind of behaviour (--> Generics should have waited for the end of the patents of SKF before asking the recordal). In the present case, Generics, who had already obtained a market authorisation, was sentenced by the national court to wait 14 months after the expiration of the patents to market the drugs; 14 months being the average waiting period to obtain a market authorisation in the Netherlands. The ECJ considered this ruling legal.

ECJ: Summary ruling dated July 25th, 2000:
Several States (with the Netherlands coming first) asked to postpone the execution of the ruling 98/44/CE related to the legal protection of the biotechnology inventions until the annulment proceeding (proceeding on the content) they intended was over. They argue on ethical reasons which, according to them, make patents on living organisms impossible. The ECJ refused to rule because they considered that there was no emergency. One will then have to wait for the ruling on the content proceeding to know the position of the ECJ.

EPI vs Commission (Tribunal dated March 28th, 2001):

Is mainly related to the interdiction of the EPI (European Patent Institute) in its code of conduct to make comparative advertisement against the European decision 97/55/CE, which admits such advertisement. The EPI asked to be granted exemptions to that decision in order to be allowed to continue forbidding comparative advertisement to its members. The commission granted them exemption until April 23rd, 2000. The EPI wishes a permanent exemption.

According to the ECJ decision, there is no need to grant right to the EPI application.

It seems that comparative advertisement between patent attorneys could be admitted.