The Federal Constitutional Court (FCC) in Germany expects a ruling in case 2 BvR 739/17, concerning the complaint against German ratification of the Unified Patent Court Agreement ‘within the next few months’. An FCC spokesman has declared this in reaction to a query of this blog. Earlier this week, the FCC published the list of cases it intends to decide in 2020.

One of the cases is the constitutional complaint filed in March 2017 against UPCA ratification, which is crucial for the chances of survival of the Unitary Patent system. As with other cases, it was on the FCC’s list in 2018 and 2019 as well. Last November, the rapporteur in the case, Justice Huber of the Second Senate said in an interview with Managing IP  a decision would possibly be issued as soon as the first quarter of 2020

Huber added that the time frame will depend on the time it takes for him and other judges at the FCC to deliberate on the case. “It is quite a detailed process that we follow because we have to look at every detail of how we formulate and word the [ruling],” he said according to the November interview of Managing IP. “But it is likely that we will get along with it.”

Among the other cases on Justice Huber’s list for this year is the EPO case, which are in fact four constitutional appeals – 2 BvR 2480/10, 2 BvR 421/13, 2 BvR 786/15, 2 BvR 756/16 – regarding infringement of Art. 2(1), Art. 19(4), Art. 20(3), Art. 24(1), and Art. 103(1) of the Basic Law “on the grounds of insufficient legal protection at the European Patent Office against decisions by the Boards of Appeal”.

The UPC and EPO cases are fifth and third on the list respectively, but as Bristows reported they are not necessarily decided in the order listed.

THIS POST WAS UPDATED ON 21 FEBRUARY 2020 WITH NEW INFORMATION FROM THE FCC


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4 comments

  1. Hope dies last. How often have we heard that a decision is imminent, and that the decision would be non-admissibility of the complaint? When will this expression of wishful thinking stop?

    As the UK has clearly stated that it wants to get read of the jurisdiction of the CJEU, how can UK stay member of the UPC? The problem is that London is mentioned in the text. A court sitting in a non-member state which on top refuses to accept the jurisdiction of the CJEU, and with judges citizens from this non-EU member state, can still decide on what has to happen within the EU, would make me break out in laughter if the situation was not so tragic.

    I do not think that the UK PM gives a damn about the UPCA. He has a much vaster agenda to cope with. And certainly if everything has to be decided until the end of the year.

    On the other hand, what does it help to decide over the UPC when no decision is taken over the complaints relating to the EPO, as a unitary patent is nothing more than a patent granted by the EPO?

    If the application is refused or the patent revoked, there is no unitary patent, but the absence of a revision instance and of the independence of judges which might not be reappointed is a problem in both systems.

    The German Federal Constitutional Court has decided in March 2018 that judges can be appointed for a given length of time, but under two conditions: they have to be civil servants for life and they cannot be reappointed. This ruling applied to administrative courts in Germany, but logic implies that it should also apply to international jurisdictions.

    In the UPC it is worse as a judge can be removed from office by a decision of the presidium of the court, cf. Art 10 of the statute which is part of the UPCA, but there are no means of redress open to a judge removed from office.

    Amendment of an international treaty without an automatic necessity to ratify the amendment by the parliaments, cf. Art 87(2) UPCA, of the member states is something unheard of. There is the possibility not to accept such a decision, but it is left to the executive to decide whether a Review Conference of the Contracting Member States has to be convened, cf. Art 87(3) UPCA. Do not try to persuade me that such a provision is constitutional in any member state of the EU.

    I still fail to understand how such nonsense could be ratified.

    The German Federal Constitutional Court has still to fully accept the pre-eminence of the CJEU, and accepting such a treaty like the UPC as being conform to the German fundamental law would mean that it has given up any control of the sovereignty of Germany when it comes to international treaties. It might not want to block the EU as such, but it is has shown in the past, that it is not prepared to accept everything decided in Brussels. And the UPC is not even a court of the EU, but a court meant to accept EU legislation….

    Techrights and zoobab: FINGERS OFF!!!!! I do not have to repeat myself.

  2. The UPC Agreement does not leave it to the Executive to call for a Review Conference – every Contracting State has the right to call for a Review Conference if there is an amendment by the Administrative Council.

    Article 87(3) UPC Agreement
    “(3) A decision of the Administrative Committee taken on the basis of paragraphs 1 and 2 shall not
    take effect if a Contracting Member State declares within twelve months of the date of the decision,
    on the basis of its relevant internal decision-making procedures, that it does not wish to be bound by
    the decision. In this case, a Review Conference of the Contracting Member States shall
    be convened.”

    In this respect, the competence of the Administrative Council of the UPC under Article 83(2) UPC mirrors that of the Administrative Council of the EPO [Articles 33(1)(b) and 35(3) EPC] but Article 83(1) UPC goes a little further in allowing amendments to the Agreement to “improve the functioning of the Court”. This too is subject to Article 87(3) UPC.

    In short, if you are worried about the UPC you should be worried about the EPO.

    I note your concerns about the decision making processes in the EPO. Are you calling for Germany to leave the EPC?

    Given current circumstances, flouncing out of European co-operation agreements would be a significant escalation of an already tense situation.

  3. Dear Mr Boff,

    Thanks for a very interesting comment.

    I never doubted that any contracting state can call a review conference, but you are playing with words. In reality such an initiative in a contracting state has primarily to be taken by the executive, and if the executive does not wish to call a review conference, it will not do so. It should not be allowed to let an administrative body, be it called administrative committee or administrative council to amend an international Convention. At least very constraining rules should be in place.

    If “improving the functioning of the Court” means that for instance, non-member states of the EU can be invited to participate to the UPC, then this is not ok.

    I am indeed worried about the UPC, but I am not worried about the EPO.

    Art 35(3) EPC requires unanimity of all member states if an amendment to the EPC under Art 33(1,b) EPC is to be decided. A decision taken on the basis of Art 33(1,b) EPC, shall not take effect if a Contracting State declares, within twelve months of the date of the decision that it does not wish to be bound by that decision. In the EPC there is thus a double barrier. First unanimity is required, and even after unanimity was acquired a contracting state still has the possibility to back out afterwards.

    Art 87(3) UPCA simply says that a decision not take effect if a Contracting Member State declares within twelve months of the date of the decision, on the basis of its relevant internal decision-making procedures, that it does not wish to be bound by the decision.

    To my knowledge, there is no unanimity required in order to amend the UPCA. It is thus not correct to say that “Article 83(2) UPC mirrors that of the Administrative Council of the EPO [Articles 33(1)(b) and 35(3) EPC]”. It is revealing to me that “Article 83(1) UPC goes a little further in allowing amendments to the Agreement to “improve the functioning of the Court”. This too is subject to Article 87(3) UPC”.

    It has not been defined what should be understood under “improving the functioning of the court”, and like for Art 87(2) no unanimity is required up front. Would a simple majority be enough or should it be at least a majority of three quarters like for certain amendments of the EPC? Why have all those aspects be left out in the UPCA?

    I am certainly in favour of European co-operation in IP matters, but certainly not the option which is offered by the UPC. The situation is certainly tense as the UPC has not been ratified quickly in order to create a fait accompli, but as more times goes by, all the drawbacks and approximations come to light. This is certainly not something wished by the proponents of the UPC in general and you in particular.

    Rather than directing the debate on an alleged mirroring of the UPC and the EPC, I would have wished a reply to my comment about Art 10 of the Statute or on the reappointment of judges.

    At least you saved the readers from the usual verbiage about the positive effects of the UPC for European industry and especially for European SMEs, which is anything but convincing. The main beneficiaries of the UPC will first be non-EU countries as it will be possible for them to have one entry point in order to attack European industry. The second beneficiaries will be big international lawyers firms acting in a multinational environment.

    A simple question: how many litigations in Europe go over more than one country? Only a very few. Do we need such a complicated and expensive construct like the UPC? My answer is no.

    I am certainly not calling for Germany to leave the EPC, but I am calling to give the Boards of Appeal true independence vis-à-vis the President of the EPO. The recent past and an actual referral by the President of the EPO shows that the Boards are not really independent. They have however shown that they want to resist the pressure from the President to rubber stamp its decisions or those of the Administrative Council, but they should be independent not just in name but also in reality.

    If the German Federal Constitutional Court pushes in this direction, I will certainly approve. What is at stake is not increasing the perception of independence of the Boards of Appeal, but to guarantee their true independence.

    Techrights and zoobab: FINGERS OFF!!!! No need to explain!

  4. [Slightly revised and corrected version, Moderator please feel free to delete my first posting]

    Generally concur with Attentive Observer but I would like to add a few comments.

    Attentive Observer stated, “[a]mendment of an international treaty without an automatic necessity to ratify the amendment by the parliaments … is something unheard of”. Attentive Observer is here slightly mistaken. According to Art.33(1) EPC, the Administrative Council can amend certain parts of the EPC, in order “to bring them into line with an international treaty relating to patents or European Community legislation relating to patents”. Unlike a revision under Art.172 EPC, no conference or ratification by the Contracting States is necessary for such amendments. (However, since such amendments under Art.33(1) EPC are limited “to bring … into line”, it can reasonably be assumed that any international treaty or European Community legislation has already been appropriately ratified by either each EPC Contracting States and/or EU.)

    Attentive Observer stated, “still fail to understand how such nonsense could be ratified.”

    In my opinion, one good example of that is how reversal of burden of proof in case of a patented process was implemented. EU Member States must implement or follow Art.34 TRIPS [Process Patents: Burden of Proof]. Art.34 TRIPS requires that judicial authorities must have the authority to order the defendant to prove that the process to obtain an identical product is different from the patented process (a) ”if the product obtained by the patented process is new”; or (b) ”if there is substantial likelihood that the identical product was made by the process and the owner has been unable through reasonable efforts to determine the process actually used.”
    According to Art.55(1) UPCA, an ”identical product … shall, in the absence of proof to the contrary, be deemed to have been obtained by the patented process”. However, Art.55(2) UPCA then states that, ”principle set out [in Art.55(1) UPCA] … shall also apply where there is a substantial likelihood that the identical product was made by the patented process …”. But if the “product obtained is new” is the test, then there is no need to also have the more stringent “substantial likelihood” test (which not only requires a identical product as in the “product obtained is new” test but also substantial likelihood that the patented process was used and proprietor was unable to determine the process used). Furthermore, since the “substantial likelihood” test already contains the requirement of the “product obtained is new” test that the “identical product was made by the patented process” what purpose then serves the statutory language “[t]he principle set out in paragraph 1 shall also apply”? This lack of clarity what test actually applies, the “product obtained is new” test, or the more stringent “substantial likelihood” test, ought Art.55 UPCA fail the generally accepted judicial requirement of legal certainty.
    Subsection (3) Art. 34 TRIPS states that, ”Member shall be free to provide … only if … (a) is fulfilled or only if … (b) is fulfilled”. Stating the two test as alternatives makes it clear that these two tests are intended to be alternatives for WTO Members to select. Hence, a strict, literal interpretation of TRIPS would require a selection of one of the two alternatives, a merger of both as attempted in Art.55(2) UPCA may be deemed not to be TRIPS conform.

    Furthermore, according to Art.24(d) UPCA, sources of law are “other international agreements applicable to patents and binding on all the Contracting Member States”. TRIPS is such an agreement, the UPC is therefore required to follow Art.34 TRIPS (ignoring the issue whether directly applicable or not). Why then the differences in Art.55(1) UPCA that only raises question marks regarding TRIPS conformity.

    The author can only assume that the drafters of Art.55(1) UPCA may not quite have understood the concept of reversal of burden of proof in regard to process patents in spite of the rather clear language of Art.34 TRIPS. Or perhaps the drafters didn’t want or didn’t know which test to select, and therefore selected both. This is also surprising in view that Art.75 [Burden of proof] of the Agreement relating to Community patents and Art.13 [Process patents: burden of proof] of the Proposal for a Council Regulation on the Community patent are virtually identical in requiring the “process for obtaining a new product” test, suggesting that the “process for obtaining a new product” test is already the accepted or agreed to test.

    On a more philosophical level, John Locke’s statement regarding the fundamental rights – “Natural Rights to Life, Liberty, and Property” – expresses well the modern thoughts about what constitutes fundamental rights. Patent infringement, even if wilful, is not to be held to be a criminal offence; hence, “Life” and “Liberty” (of the infringer) will not be in jeopardy before the UPC. But the near unfettered powers of the UPC, not subject to any appeal to a higher court, regarding the third element of John Locke’s fundamental right, “Property”, should be held unacceptable by the Bundesverfassungsgericht. 

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