Case T-295/05

Document Security Systems, Inc.

v

European Central Bank (ECB)

(Monetary Union − Issue of euro banknotes − Alleged use of a patented invention designed to prevent counterfeiting − Action for infringement of a European patent – Lack of jurisdiction of the Court of First Instance – Inadmissibility – Action for damages)

Summary of the Order

1.      Procedure – Action for infringement of a European patent – Lack of jurisdiction of the Community Courts

(Arts 7 EC and 220 EC to 241 EC)

2.      Member States – Obligations – Duty of loyal cooperation with the Community institutions

(Art. 10 EC)

3.      Actions for damages – Limitation period – Starting point

(Art. 288, second para., EC)

4.      Non-contractual liability – Conditions – Unlawfulness – Damage – Causal link

(Arts 235 EC and 288, second and third paras, EC)

1.      By virtue of Articles 7 EC and 220 EC, the Court of First Instance can exercise only the jurisdiction conferred upon it by Community law. In the absence of such conferral of jurisdiction, the Court of First Instance cannot give judgment in an action without extending its jurisdiction to disputes to which the Community is a party but in respect of which the national courts have jurisdiction under Article 240 EC.

In an action for patent infringement, in which a declaration is sought that the European Cental Bank infringed the rights conferred by a European patent relating to security features designed to protect banknotes against counterfeiting, jurisdiction to decide whether a patent has been infringed falls not to the Court of First Instance but to the national courts.

No provision of Community law confers on the Court of First Instance jurisdiction to give judgment on patent infringements. Patent infringement proceedings do not appear amongst the type of actions in respect of which jurisdiction is conferred upon the Community courts by Articles 220 to 241 EC. Moreover, national patent law, unlike other intellectual property rights, such as national trade mark law, has not been subject to Community harmonisation. Since it is a field in respect of which the Community has not yet legislated and which consequently falls within the competence of the Member States, the protection of certain intellectual property rights, such as patents, and measures adopted for that purpose by the judicial authorities, do not fall within the scope of Community law.

(see paras 50-51, 56-57, 71)

2.      The Court of First Instance cannot call into question the legitimacy of a national industrial property right without undermining the principle of cooperation in good faith which, pursuant to Article 10 EC, must govern the relationship between the Member States and the Community institutions and which, in accordance with settled case‑law, not only obliges the Member States to take all the measures necessary to guarantee the application and effectiveness of Community law but also imposes on the Member States and the Community institutions mutual duties to cooperate in good faith.

(see para. 70)

3.      The period of limitation which applies to proceedings in matters arising from the non‑contractual liability of the Community cannot begin to run until all the requirements governing an obligation to make reparation are satisfied. In an action in which the European Central Bank is accused of patent infringement, the limitation period applicable to the patent holder’s action to establish the Community’s liability can only begin to run once the competent national courts have ascertained the existence of the patent infringement of which it accuses the Bank.

(see para. 75)

4.      For the Community to incur non‑contractual liability, within the meaning of the second paragraph of Article 288 EC, as a result of the unlawful conduct of its bodies, a set of conditions must be satisfied, namely, the unlawfulness of the alleged conduct of the institutions, the reality of the damage and the existence of a causal link between the alleged conduct and the damage complained of.

As regards the condition concerning the unlawfulness of conduct by the European Central Bank of which complaint is made, consisting of the infringement of a patent, it is only on the basis of a decision by a competent national authority finding a patent infringement on the part of the Bank that the Court could be in a position to decide whether that patent infringement could give rise to Community liability.

(see paras 80-81)