Will the Unitary Patent project go ahead without the United Kingdom? According to Kevin Mooney, partner of Simmons & Simmons in London and closely involved in the creation of the Unified Patent Court, that is the biggest issue the remaining Member States will have to tackle now that the UK government has decided not to join the UP system.

Mooney heard the news Thursday morning from the IP Office in London, where the team that has been working on the creation of the UPC and UP for years had just been informed by the government.

On the phone in London, Mooney tells Kluwer IP Law he is “incredibly disappointed that the UP and UPC, which has been worked on for 12 years with great enthusiasm, which has been a lot of work and a very bumpy ride”, will not be implemented in the UK. “It is especially disappointing because all of the European industry, all legal professionals and – until yesterday – also the UK government, were in favour of the Unitary Patent system.”

For Kevin Mooney personally, the decision is a great deception as well. Everyone who has followed the steps toward the creation of the Unified Patent Court over the last years, has had at least one, more likely several meetings where Mooney, as Chairman of the Rules and Procedure Committee of the UPC Preparatory Committee, displayed his enthusiasm and told about the progress of the project. He was always full of confidence that despite the drawbacks, it would be a success sooner or later. “It was misplaced optimism, I’m afraid. I’ve devoted six years of my life to the Unified Patent Court. Over the years I’ve given 50 presentations about it; the only thing I had to change regularly was the expected opening date for the UPC. I never anticipated this would happen.”

Not even in the last week, Mooney says. “But the current government has taken a much harder line than previous governments regarding the independence of UK courts from the Court of Justice of the European Union (CJEU). Previous governments had their ‘red line’ as well concerning the jurisdiction of the CJEU in Britain. But as the UPC is not a national court, they didn’t consider it to cross this red line. The current government, however, has taken a very ‘purist’ form and argues any remote connection of the CJEU with the UK is to be prevented, ignoring the fact that the UPC is an international court.”

Germany

The biggest issue right now, according to Kevin Mooney, is whether other Member States want to go ahead with the Unitary Patent system. “There will be discussions about this over the next weeks”, he expects. “Germany has a key position. If it takes the view that without the UK’s involvement the UP system is much less effective and not worthwhile, it may not ratify the Unified Patent Court Agreement and everything may stop. The other possibility is – and I’d like to see that even without the UK’s presence, because Europe has needed a new patent system for 50 years – that it will proceed with ratification of, first, the Protocol for Provisional Application and then the UPCA itself.”

If the German government decides to go ahead with ratification, one of the obvious issues that has to be dealt with is the relocation of the London branch of the UPC’s central division. “Italy has explicitly said is very interested in hosting this division, but The Netherlands and Denmark may be candidates as well”, Mooney thinks.

However, it’s very likely that any decision about the future of the Unitary Patent system and the Unified Patent Court will only be made after the crucial ruling of the German Federal Constitutional Court (FCC) about the complaint against the ratification of the UPCA (case 2 BvR 739/17); a ruling which is expected within the next few months. The complaint has delayed the creation of the UPC by years and could – if not dismissed – cause more delay or even mean the end of both the UP and UPC. It has been one of the many stumbling blocks for the Unitary Patent project, Mooney sighs: “Without that complaint, the UP system would already have been up and running.”


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11 comments

  1. No chance, Kevin. Sorry.

    As a UK patent attorney in Germany, my sense is that the UPC was only seen as useful for as long as all three of the EU’s “Big Three” were committed to it. The ideal number for a committee is three. With only two members, how can a committee cope with any difference of opinion amongst its members?

    The BREXIT crowd doesn’t see it, or accept it, but the UK, within the EU, had an incredibly powerful role, mediating between Germany and France, never more prominent and crucial than in the field of law-making. All now thrown away, like so many other good things, and so much soft power, by the selfish, greedy and anti-social people driving BREXIT.

  2. As far as I understand the legal situation, is there at all a possibility for the German government to stop the UPC?The parliament has agreed with the UPC and in case the constitutional court agrees with the UPC and the way of the parliament approval, the UPC agreement only requires the signature of the Federal President which is a mere formality?

  3. It does not come as the surprise that Mr Mooney is disappointed. For him and all the British members who sat in the co-opted Committee drafting as a closed party the Rules of Procedure, the result on investment is nil, and this is always hard to accept. The non-British members of this committee can still hope that their result on investment not to be nil, but without UK, it will certainly be lower than expected should the UPC come to life, which anything but certain.

    Europe might have “needed a new patent system for 50 years”, but certainly not something like the UPC. That European Industry needs the UPC is only the opinion of people like Mr Mooney, but certainly not of those having had a look at what is really needed in Europe.

    The birth defect of the UPCA is that it is not binding for all member states of the EU. Some countries might have signed, but will never ratify. Some have or will ratify, but they have been lured in with the promise of some function located there, e.g. arbitration chambers. No wonder why some countries will not ratify as it will be detrimental to their industry. Poland and the Czech Republic might not be the only ones.

    What might be needed in Europe is a treaty which does not grossly favours big countries, with big industries having very deep pockets, but which is also useful for smaller ones. Only then a true IP cooperation within the EU could be achieved. But the number of true supranational cases is so little that the necessity of such a monster like the UPC is only for those thinking of filling their pockets with lawyer fees and squeezing out SMEs.

    It is good that the complaint before the FCC has put the progress of the UPC to a halt. It has given the opportunity to look at it very carefully, and to realise how badly it has been conceived beside for those who intended to profit from it.

    How can a judge at the UPC be independent if he can be removed from office by a mere decision of the Presidium of the UPC, but at the same time no means of redress are opened to him? The same applies to the re-appointment of judges. What will be the criterion applied? Those are a real constitutional problems and it is to be hoped that the FCC will look into it them.

    Rather than dwelling on the UPCA, it would be much better if the FCC would look at the complaints about the independence of the Boards of Appeal of the EPO. There are no less than four complaints about this topic before the FCC.

    It might be the best moment to care for the true independence of the Boards, and not just merely look at improving the perception of their independence…

    This would certainly be more of a benefit for European industry and European SMEs than a monster like the UPC. It is also high time to bring life into Art 4a EPC2000. Now or never. And should any president of the EPO not like such a conference, he should simply go back where he came from.

    It should not be forgotten that after all EPC members states, that is also member states of the EU, have the same IP law, as it is based on the UPC. One good way to bring in harmonisation with respect to the validity is to bring IP judges from all over Europe together regularly. Such meetings are already taking place and they should be pursued and reinforced.

    On the other hand, subsidiarity is also something which should be kept in mind within the EU, and if a few decisions of national courts are at odds with decisions of the Boards of Appeal, does this really harm and bring about legal uncertainty? Not in my humble opinion. But adding an extra layer of case law in the hope that it will be valid for all, even the EPO, is truly increasing legal uncertainty.

    One way of deciding in a uniform way over all member states of the EPC is to keep open the possibility of filing an opposition for the whole life of the patent, and not merely for nine months after grant. But for this we need truly independent Boards of Appeal and certainly not examining and opposition divisions just focused on figures and a quick turnover of files.

    Infringement could remain national, and there is no need to have one system to fit all. There are very few truly supranational litigation cases, and the companies involved in them have deep enough pockets to afford the extra costs.

    Telling that the UPC is cheaper than existing ways is only correct should one need a patent in all contracting states of the EU. When looking at the average number of validations, the UPC is anything but necessary. There are other cheaper ways to create a new patent system for Europe than the UPC should such a system be really needed, what appears highly doubtful!

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

  4. I think that now time has finally come to implement a unitary EU patent with ENGLISH as the ONLY language. With the UK gone, what almost all of us who are remaining have in common is ENGLISH as our SECOND LANGUAGE. SO LET’S BE PRACTICAL!

  5. Attentive Observer, your suggestion of extending the opposition period to the entire life of the patent is interesting. This has now been introduced in the US. But this would result in a bifurcation between validity and infringement as in the German system. Another problem is that unlike the US or the German system, there is no oversight authority above the Boards of Appeal, which hampers the resolution of conflicting views between two Boards (see recently the sharp disagreement between Vasco T 2102/12 and Ricoh T 172/03 about the scope of article 54(2) EPC). From this angle, it could be argued that the Boards of Appeal are too independent.

  6. Dear Mr Hagel,

    Thanks for your comment. I support your point of view, but I would even go one step further.

    If an opposition could be filed over the whole life time of a patent, there would indeed be a bifurcation between validity and infringement. Nevertheless we would at least avoid diverging case law on validity.

    There are however two important conditions to be fulfilled, and they are not fulfilled at the moment.

    The first one is the real independence of the Boards of Appeal. The members of the boards should not be submitted to the disciplinary power of the president of the EPO and should have a completely autonomous budget to be presented to the Administrative Council independently of the president of the EPO. The president of the boards of appeal does only have the powers delegated to him by the president. I do not call this being independent. There are however other problems.

    The re-appointment of board members is presently subject to a performance appraisal, whereby the appraisal conditions are not even public. The independence of the boards might be questioned for this reason alone.

    What has happened with the former president when he disregarded the separation of powers by refusing a board member to enter the premises of the EPO and by the present one trying to twist the arm of the Enlarged Board of Appeal in matters of interpretation of Art 53,b) are further reasons to say that the independence of the boards can be questioned.

    The second reason is the absence of a revision instance after the boards of appeal. I think this is what you mean when saying that the boards are too independent. I fully agree.

    Presently only revision for procedural reasons is possible before the EBA. When looking at the decisions taken under Art 112a, the chances of success are very remote.

    This can also be a problem when one looks at the great discretion left to the boards in view of their new rules of procedure in force since 01.01.2020.

    The boards are empowered to decide whether a division of first instance has exercised its discretion in an appropriate way. Which instance will decide whether the discretion of the boards has been correctly applied? The prejudicial revision under Art 112a is a very blunt weapon when looking at the decisions issued in the matter. You have been heard about the non-admissibility and this is enough. No, it is not.

    What is also missing at the EPO is an instance which could revise the decisions of the boards for reasons of substance. In other words what is missing at the EPO (and at the UPC) is a revision instance as it is known if not in all, at least in a vast majority of national legal systems.

    Only referring questions to the Enlarged Board when there is an alleged divergence of case law is not enough. The parties should be allowed to access a revision instance. The right to request interpretation of the EPC should not be limited to the boards or the president of the EPO.

    If an application is refused or a patent is revoked, the property or asset representing an IP title is destroyed. This should only be done with the correct safeguards. And those are not presently available, be it at the EPO or at the UPC. Those are also questions before the German Federal Constitutional Court, and there are not less than four such questions.

    Rather than trying to implement a treaty trying to be subject to EU law without really being part of the EU, as it is not valid for all EU member states, we should rather concentrate on improving the functioning of the EPO and its boards of appeal. This would bring immediate advantages not only as far as the EU is concerned but for all member states of the EPC.

    There have been proposals to improve the situation of the boards in the years 2004-2005, but they have been dismissed by the member states. There is now an opportunity to be grasped, and it could be a very good point of discussion for a conference according to Art 4a EPC 2000. This would really help legal integration in IP matters, and for the few true supranational litigations we do not need something as complicated as the UPC.

    Techrights and zoobab: FINGERS OFF!!! Even by means of a link!

  7. « London » is explicitly mentioned in Art.7(2) of the UPC agreement as one of the « sections » of the Unified Patent Court. If the UK does not wish be part of the UPC, the negotiations have to be reopened after which finding a new agreement would be difficult.

    If the UK – after an effective BREXIT – were allowed to stay in the UPC, this would have created a kind of « paradox ». From the beginning Switzerland indicated its desire to join the unitary patent system, but CH was denied access by the CJEU because not being a EU member State. Nevertheless, with the participation of CH (and other non-EU States) the unitary patent system would have been stronger.

    If the UK desires to be truly legally independent op the EU, can they live with decisions of the boards of appeal and decisions/opinions of the Enlarged Board of Appeal. Should we fear that the UK will also abandon the EPC?

  8. According to Art. 87(2), the Administrative Council may amend the UPC Agreement to bring it in line with Union law. I wonder whether the following line of argument would be feasible once the Agreement is in force:

    As the EU treaty does no longer apply to the UK, the court may no longer be seated in London as this would violate Union law. Therefore, a change of venue brings the Agreement in line with Union law.

  9. Dear Cees

    Reopening the negotiation about the location of the London section of the Central (?) Division means opening Pandora’s Box.

    It was one of those marathon Brussels negotiations which led, as the French would say, the pear not to be cut in two, but in three! Do not tell me that this was a good solution.

    If negotiations are reopened on this topic, it appears logic that the Central Division should be concentrated at a single location that is either Munich or Paris. As Munich has the EPO, logic would be that the Central Division as a whole goes to Paris. But logic and politics are not best friends. Some Italian friends have already stated that it should come to Milan if it has to leave London.

    I agree with you that trying to twist Opinion C 1/09 so that post Brexit UK could remain in the UPC, and even then implying that other non-EU member states could join the UPC was a crazy idea. I am thinking here of some papers authored by Mr Tillman and supported by all his friends wanting the UPC as quickly as possible.

    EPLA would have been a possibility, but first the EU commission decided no, for whatever reason, even if it is “not invented here”, and the CJEU gave its famous opinion which is as clear as clear can be.

    I however doubt that the UK will leave the EPO and the EPC. They can “live with decisions of the boards of appeal and decisions/opinions of the Enlarged Board of Appeal”, even if some decisions of the UK Supreme Court are difficult to follow. Trying to overcome the Improver disaster by another disastrous decision on a European patent is something only the Brits can achieve.

    We should not fear that the UK will also abandon the EPC. Brexit might have been an action to spite your face in order to spite your nose, but leaving the UPC would add a further injury. British lawyers have lost their right to represent before the UPC, do you want British patent attorneys also lose their jobs?

  10. Dear UPC Visionär,

    Nice try, but Art 87(2) is only applicable once the UPCA entered into force, but it cannot enter into force with London mentioned in it.

    So we are turning in circles, and we will end being dizzy!

Comments are closed.