BASF AG v Präsident des Deutschen Patentamts.

• Jurisdiction: European Union
• Celex Number: 61998CC0044
• ECLI: ECLI:EU:C:1999:198
• Date: 22 April 1999
• Docket Number: C-44/98
• Court: Court of Justice (European Union)
• Procedure Type: Reference for a preliminary ruling

Important legal notice

|

61998C0044

Opinion of Mr Advocate General La Pergola delivered on 22 April 1999. - BASF AG v Präsident des Deutschen Patentamts. - Reference for a preliminary ruling: Bundespatentgericht - Germany. - Free movement of goods - Measures having equivalent effect - European patent ruled void ab initio for failure to file a translation. - Case C-44/98.

European Court reports 1999 Page I-06269

Opinion of the Advocate-General

I - The question referred for a preliminary ruling and the facts and law in the main proceedings

1 By order registered at the Court of Justice on 20 February 1998, the Bundespatentgericht (Federal Patents Court), Germany, sought an interpretation from the Court of Articles 30 and 36 of the EC Treaty with regard to the German law implementing the Convention on the Grant of European Patents (hereinafter `the Convention'), which provides that unless a German translation is filed of the text of a European patent already granted, or in the process of being granted, the patent is deemed to be void ab initio in Germany. The question referred by the national court reads as follows:

`Is it compatible with the principles of the free movement of goods (Articles 30 and 36 of the EC Treaty) for a patent granted by the European Patent Office with effect in a Member State which is drafted in a language other than the official language of that Member State to be deemed void ab initio if the patent holder does not file with the patent office of the Member State in question a translation of the patent specification in the official language of that Member State within three months of the publication in the European Patent Bulletin of the mention of the grant of the patent?'

2 The Convention was signed in Munich, Bavaria, on 5 October 1973 and entered into force on 7 October 1977. In addition to the Member States, the Swiss Confederation, the Principality of Liechtenstein, the Principality of Monaco and the Republic of Cyprus are also currently parties to the Convention. Articles 1 and 2 of the Convention established a system of law, common to the Contracting States, for the grant of `European' patents. In each of the Member States for which it is granted, the European patent has the effect of and is subject to the same conditions as a national patent granted by that State, unless otherwise provided in the Convention. In particular, under Article 64 (1) of the Convention, `a European patent shall ... confer on its proprietor from the date of publication of the mention of its grant, in each Contracting State in respect of which it is granted, the same rights as would be conferred by a national patent granted in that State'. Consequently, a European patent once granted consists essentially of a `basket' of national laws. This means that the law common to the Contracting States which is derived from the Convention in theory relates only to the procedure for granting a patent.

3 The rules on the use of languages contained in the Convention are particularly important as regards the outcome in the present case. They are designed to reconcile various requirements: efficiency of proceedings before the European Patents Office (hereinafter `the EPO') with equality between the languages of the Contracting States; and the interests of a patent applicant or patent holder with those of his competitors. (1) Article 14 of the Convention states that patent applications must be filed in one of the official languages of the EPO, that is to say, English, French or German. However, natural or legal persons having their residence or principal place of business within the territory of a Contracting State having a language which is not an official language of the EPO, and nationals of that State who are resident abroad, may file their applications in an official language of that State, and must provide a translation in English, French or German within three months after the filing of the European patent application, and no later than 13 months after the date of priority (see Rule 6 (1) of the Implementing Regulations to the Convention, hereinafter `the Regulations'). The language in which the applicant chooses to draft or translate the patent application is to be used in all proceedings before the EPO relating to that application or to the patent issued as a result of those proceedings. In particular, applications for European patents and the relevant specifications must be published in the language of the proceedings, (2) only the claims are required to be translated into the two other official languages of the EPO (Article 14(7) of the Convention). Also, according to Article 70(1) of the Convention, the text of an application or of a patent in the language of the proceedings is, as a general rule, the authentic text in any proceedings before the EPO or the national courts of the contracting States.

4 The basic feature of the European patent system is the national protection offered by each of the designated States (see point 2 above). This explains why Contracting States whose official language is not the language of the proceedings must have a text drafted in or translated into their own language, which is also in the interest of innovative and competitive capacity of their national economy. The provisions regarding publication of measures having legal effects erga omnes as regards patents must also be read in conjunction with the provisions of Articles 67 (3) (3) and 65 (4) of the Convention, which concern provisional and permanent protection of the applicant respectively: provisional protection is conferred on the applicant from the date on which the application is published, whilst permanent protection comes after the European patent has been granted. These provisions are intended to compensate for the initially unfavourable situation of Contracting States whose official language is not one of the official languages of the EPO (or the language of the proceedings), by enabling them to require that such documents will be effective in their territory only if there is a translation in a language of that State. (5)

5 Article 65 of the Convention (see footnote 4 above) was incorporated into the German legal system by the provisions whose compatibility with the Treaty is challenged in the main proceedings. The second and third subparagraphs of Article II (3) of the Gesetz über internationale Patentübereinkommen (Law on International Patent Conventions) of 20 December 1991 (6) (hereinafter `the IntPatÜG') states:

`(1) If the text in which the European Patent Office intends to grant a European patent for the Federal Republic of Germany is not drawn up in German, the applicant for or proprietor of the patent shall supply to the German Patent Office within three months of the publication of the mention of the grant of the European patent in the European Patent Bulletin a German translation of the patent specification and shall pay a fee in accordance with the scale of fees.

...

(2) If the translation is not filed within the prescribed period or in a form suitable for publication or if the fee is not paid within the prescribed period the European patent shall be deemed to be void ab initio in the Federal Republic of Germany.

(3) The German Patent Office shall publish the translation ...'. (7)

6 BASF AG, the plaintiff in the main proceedings, is the proprietor of European patent 0 398 276, which concerns an "automotive paint sealer composition". This patent, issued by the EPO in respect inter alia of the Federal Republic of Germany, was transferred to it by BASF Corporation, a company formed under laws of New Jersey (USA); it was entered in the German Patent Register on 26 August 1997. A mention of the grant of the patent at issue was published in English in the European Patent Bulletin on 24 July 1996. By order of 5 May 1997, notified to the BASF Corporation on 22 May of that year, the German Patent Office found, under the second and third subparagraphs of Article II (3) of the IntPatÜG, that the patent in question was to be deemed void ab initio in Germany since the company had not filed a German translation of the specification within the prescribed time-limit. The BASF Corporation brought the present action before the Bundespatentgericht in order to obtain the annulment of the German Patent Office's decision; the action was subsequently taken over by BASF AG.

II - The submissions lodged by BASF and by the national governments and the Commission, participating in the proceedings

7 All the Member States (apart from Luxembourg; but see footnote 4 above) and the Commission are at one in claiming, on the basis of substantially the same arguments, that Article 30 of the Treaty does not preclude a national law of the type at issue in this case. (8)

8 BASF takes a different line in the observations it has submitted to the Court. It argues that owing to the high cost of translating a specification as required by the Federal Republic of Germany (and by the other Member States which exercised their option under Article 65 of the Convention) a considerable number of holders of European patents, in particular small and medium-sized undertakings, decide not to apply for protection of their inventions in all Member States. (9) They are forced through lack of funds to forgo patent protection in some parts of the Community. This restriction results in the compartmentalisation of the Community's internal market into a `protected zone', on the one hand, and a `free zone' made up of the territory of the Member States in respect of which patent protection has neither been sought nor obtained, on the other. (10) The requirement in the legislation at issue that a translation of the specification should be filed should therefore be declared incompatible with the provisions of the Treaty concerning the free movement of goods. The plaintiff goes on to...