CJEU transfers patentability competence to the EU level, Daiichi Sankyo, C-414/11

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Despite the resistance of Greece, Germany, France, Italy, Netherlands, Portugal, Finland, Sweden, and the UK, on 18/07/2013 the Grand Chamber of the Court of Justice of the European Union interpreted that after the entry into force of the Lisbon Treaty the patentability field is not any more within the primary competence of the Member States.

In 1994 the Agreement on Trade-Related Aspects of Intellectual Property Rights (the TRIPs Agreement) was signed jointly by the European Community and the Member States on the basis of Article 113(1) EC (“[t]he common commercial policy shall be based on uniform principles, particularly in regard to changes in tariff rates, the conclusion of tariff and trade agreements, the achievement of uniformity in measures of liberalisation, export policy and measures to protect trade”). It was generally believed that the action was taken in the field of shared competence keeping primary competence with the Member States.

The latter Article became Article 207(1) TFEU providing: “[t]he common commercial policy shall be based on uniform principles, particularly with regard to changes in tariff rates, the conclusion of tariff and trade agreements relating to trade in goods and services, and the commercial aspects of intellectual property, foreign direct investment, the achievement of uniformity in measures of liberalisation, export policy and measures to protect trade…”

Thus, the concept of “commercial aspects of intellectual property” is now expressly mentioned in the very text of primary law (§ 47).

The respective Governments argued that the TRIPs Agreement’s patentability rules concern international trade only indirectly, and do not therefore fall within the field of the common commercial policy (§ 44). In other words, those rules do not relate to the details, as regards customs or otherwise, of operations of international trade as such (§ 53).

Nevertheless, the Grand Chamber considered that the TRIPs Agreement is an integral part of the WTO system, and therefore has a specific link with international trade (§ 53). In particular, the respective WTO law authorizes the cross-suspension of concessions between that agreement and the other principal multilateral agreements of which the WTO Agreement consists (§ 54).

Moreover, the concept of “commercial aspects of intellectual property” corresponds almost literally to the very title of the TRIPs Agreement (§ 55).

The Governments produced the argument that Part II of the TRIPs Agreement, concerning the availability, scope, and use of intellectual property rights, which includes patentability, fall within the field of the internal market, and not of common commercial policy (§ 56). The Grand Chamber replied that as it follows from its preamble, the primary objective of the TRIPs Agreement is to strengthen and harmonise the protection of intellectual property on a worldwide scale, and Part II contributes to attaining that objective by setting out rules to be applied by every WTO member (§ 58).