The Court of Justice examines Article 65 of the Convention on the Grant of European Patents
The Convention on the Grant of European Patents ("the Convention") establishes a system of law common to the Contracting States (the Member States of the European Union, the Swiss Confederation, the Principality of Liechtenstein, the Principality of Monaco and the Republic of Cyprus) for the grant of patents for invention, called "European patents". Those patents are granted by the European Patent Office, the official languages of which are English, French and German. Applications for a European patent must be lodged in one of those languages. Application may be made for the grant of a European patent covering all the Contracting States, a number of them or only one of them. From the date of publication of the mention of its grant, a European patent confers on its proprietor, in each of the Contracting States for which it was granted, the same rights as those which would be conferred on him by a national patent granted in that State.
The Convention allows the Contracting States to prescribe that a European patent shall be deemed to be void ab initio in the State in question if, where the text of the European patent for that State is not drawn up in that State's official language, the proprietor of the patent does not provide a translation of that text in that language.
The Federal Republic of Germany has exercised that power.
A European patent concerning an "automotive paint sealer composition" was transferred by its former proprietor to BASF. Mention of the grant of the patent, drafted in English and with effect inter alia in the Federal Republic of Germany, was published on 24 July 1996 in the European Patent Bulletin. By order of 5 May 1997, the German Patent Office found, under the relevant German Law, that this patent was to be deemed void ab initio in Germany since the former proprietor of the patent had not filed a German translation of the patent specification within the prescribed period.
BASF brought an action for annulment of that decision on the ground that the German legislation was contrary to the Community law principle of free movement of goods.
The Bundespatentgericht, before which BASF brought the matter, decided to stay proceedings and to make a reference to the Court of Justice.
After considering the observations of BASF, of the Commission and of 13 Member States, the Court found that the principle of free movement of goods does not preclude such a rule: legislation requiring patent holders to file a translation of the specifications of their patents in the official language of the Member State concerned does not constitute a measure having an effect equivalent to a quantitative restriction on imports.
In its judgment the Court states that one of the choices facing an inventor when planning to obtain protection for his invention by the grant of a patent concerns the territorial scope of the desired protection, limited to a single Member State or covering several Member States. That choice is in principle the same, irrespective of whether the inventor applies for a European patent or uses the systems for the grant of national patents at present in force in the Member States. The choice will be made after an overall assessment of the advantages and drawbacks of each option, which includes complex economic evaluations of the commercial interest of having protection in the various Member States compared with the sum of the costs entailed in obtaining the grant of a patent in those States, including translation costs.
Whilst it must be accepted that there will probably be differences in movements of goods depending on whether inventions are protected in all the Member States or only in some of them, it still does not follow that this constitutes an obstacle within the meaning of Community law. The repercussions on intra-Community trade of any competition on the non-protected markets will depend above all on the actual, unforeseeable decisions taken by each of the operators concerned in the light of the economic conditions existing on the various markets. In those circumstances, it must be held that, even supposing that in some circumstances the division of the internal market may have restrictive effects on the free movement of goods, those repercussions are too uncertain and too indirect to be considered to be an obstacle within the meaning of Community law.
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