Crucial months are ahead for the Unitary Patent project. In Germany the re-ratification process of the Unified Patent Court Agreement is progressing rapidly, but the threat of new constitutional complaints is looming.

Two weeks ago, the Bundesrat approved the UPC ratification bill. Yesterday, in first reading, the Bundestag referred the bill to the parliamentary committees (both the Committee of Legal Affairs and Culture will have their say) for discussion. A second decisive reading in the Bundestag is expected late October or early November. According to a report of Juve Patent, the UPC ratification should go through parliament in the slipstream of the discussion on the 2021 budget, “which means that a large number of members of parliament are guaranteed”.

Photo Rainer Lück

The re-ratification of the UPCA ratification bill is necessary because last March the German Federal Constitutional Court (FCC) declared the first ratification invalid, because it wasn’t approved by the requisite two-thirds majority of the members of the Bundestag in 2017. Only 35 parliamentarians were present at the time.

It was a setback for the supporters of the UP system. The constitutional challenge, filed by Dusseldorf IP lawyer Ingve Stjerna in 2017, had caused three years of delay already and quite some observers thought the FCC’s decision would be the final blow for the system. But less than a week later, the German minister of Justice and Consumer Protection, Christine Lambrecht, issued a press release stating she would “continue to work to ensure that we can provide the European innovative industry with a Unitary Patent and a Unified Patent Court.”

Entry into force

German ratification of the UPCA and the Protocol for Provision Application (PPA) means the Unitary Patent system can at long last be launched – although two more UPCA signatory states need to be found to approve or support the PPA, a protocol designed to ensure the smooth start of the Unified Patent Court by enabling parties to complete the institutional, organisational and financial preparations for the court.

The UPCA enters into force “on 1 January 2014 [!] or on the first day of the fourth month after the deposit of the thirteenth instrument of ratification or accession in accordance with Article 84, including the three Member States in which the highest number of European patents had effect in the year preceding the year in which the signature of the Agreement takes place (…)”  (art 89 UPCA)

The PPA enters into force “the day after 13 Signatory States of the Agreement on a Unified Patent Court including Germany, France and the United Kingdom, have either ratified, or informed the depositary that they have received parliamentary approval to ratify, the Agreement on a Unified Patent Court .. (art 3(1) PPA). Thanks to article 3(1), Germany can help ensure there is enough time for the preparations, by delaying the formal deposit of its instrument of ratification of the UPCA as long as necessary.

Complications

Supporters of the system hope the UPC can start functioning in the first half of next year, or “in a near future”, as the Preparatory Committee stated. This is the uncomplicated schedule. However, various serious issues will have to be overcome before the UPC and Unitary Patent see the light of day. Legally, there have been many questions since the Brexit referendum of 2016 and more so since the July announcement of the British government to withdraw from this European patent system. For just one example see article 3(1) above: how can the PPA enter into force when it is explicitly stated in the PPA that the UK’s approval or ratification is mandatory?

A hotly debated issue is the London section of the UPC’s central division (mentioned in article 7 of the UPCA). Now that the UK is definitely out of the game, this division will have to be relocated and the Italian government and the IP sector and governors in Milan have been very clear they want it to go to this city. After the recent (online) meeting of the UPC Preparatory Committee, quite a vague statement was issued by the committee, whereas the Italian Ministry of Foreign Affairs announced the formal Milan candidacy to the seat of the UPC. In a press release it stated that the committee “approved a provisional redistribution of the competence of the London office between the existing offices in Paris and Munich, provided, however, that this is a short-term solution, pending the entry into force of the Agreement and that Italy can start, in agreement with the other signatory States, the procedure for amending the Agreement to include Milan as the third seat of the central Court division.”

The first part of the Italian Ministry’s statement – the temporary redistribution of the London competences to Paris and Munich – has been confirmed from various sides, but although the press release almost seems to state that Milan has already secured the London section, that is not the case. According to various sources, the Netherlands and France are interested in hosting the division as well.

These are just some of the issues that remain unclear. Experts and interest groups who were asked to take a stand on the draft UPC (re-)ratification bill expressed serious concerns about the uncertainties raising from the Brexit and the German constitutional challenge. They pointed out, among others, that the FCC – by declaring void the German UPC ratification on formal grounds – didn’t have to go into detail about other possible issues, but seemed to hint in its judgment there is a problem with the unconditional primacy of EU law as provided for in article 20 UPCA. That could be contrary to the German constitution.

In an earlier post on this blog, “The German UPCA Ratification – at Schweinsgalopp towards Mautdebakel”, Thorsten Bausch, partner of Hoffmann Eitle, lashed out at the German Ministry of Justice and Consumer Protection and the European Commission for rushing through and supporting the rapid re-ratification of the UPCA. “Politically, I would respectfully submit that this is just madness.”

Still, it is clear there is a lot of support for the UP system. In July, BusinessEurope, Eurochambres, Orgalim and SMEunited sent a joint statement to European Commissioner Thierry Breton for the Internal Market, calling “for the swift ratification of the Unified Patent Court Agreement and the entry into operation of the European Patent system as soon as possible”. Breton himself has repeatedly said creating a “single European patent system” is one of his top priorities.

New FCC challenges?

At the moment, the main risk for the future of the Unitary Patent system is that another constitutional challenge will be filed with the FCC. It seems quite certain this will happen. Half September, the Foundation for a Free Information Infrastructure (FFII) sent an open letter to the Bundesrat, raising objections regarding UPC ratification “as it carries the risk to violate 3 international agreements (VCLT, ECHR and TFEU) and the German Constitution.” The FFII ends its letter warning: “If those points are not seriously addressed and the UPCA sent back for renegotiation, we will consider asking the German Constitutional Court to look again at those issues in a second Constitutional Complaint.”

Besides the FFII, it is not unthinkable that a new constitutional challenge will be filed as well by Ingve Stjerna. Shortly after the outcome of the first challenge, he pointed out to Juve Patent that the Constitutional Court had not dealt with the content of his objections to the UPCA and said: “If, despite these problems, the German government continues to adhere to the convention, a new constitutional review by the Constitutional Court will have to be considered, possibly of a complaint from a company.”

It is, at least to the author of this blog, not clear whether a second complaint would automatically mean the FCC would ask the German Bundespräsident to put the ratification procedure on hold, as happened when the first complaint was filed in 2017. The FCC declined to “provide any information on (…) legal issues or on any potential constitutional complaints that are intended to be lodged, but have not even been lodged yet.”


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25 comments

  1. There is a real and material opportunity that Germany would sack the ratification, so Europe can finally get a proper patent court as envisaged by the Eurpean Treaties. The Unitary Patent Court was ruined by the British, without recourse to the EUCJ. It makes no sense to ride this dead horse to ratification, a Court that one days should be established in London, while the Brexit-UK in their hatered against anything European abandonned participation.

    Europe deserves a proper community patent and a proper community patent court and an EU patent office. For a community patent a simple directive or regulation would suffice, no need to wait ten years for ratification of a badly designed court and its training platforms for non-judge-judges without eligibility to a office of a judge and the strange construction of bribes to the existing institutions.

  2. You would think that, by now, politicians would be sophisticated enough to assess sceptically what the professional lobbyists are telling them, especially when it is over an issue where financial self-interest plays such a dominant role. Was it not in Ancient Rome that the maxim Cui Bono was the first enquiry to be made? These days , what we should do is to “Follow the Money”.

    Pushing for the UPC is a relatively small number of well-funded itinerant and international players who are adept in the use of lobbying power. On the other side is a much larger circle of small and medium-sized European users of the patent system, users for whom lobbying in Brussels or Berlin is as alien as Life on Mars. The fact that the petition to the BGH was NOT put together by a powerful player, and that Brussels and Berlin have no feeling of being harangued by opponents of the UPC, does NOT mean that the arguments are all in favour of the UPC, nor that the UPC (as presently constituted) is a good thing for society, the economy, innovation and the general welfare.

    UK government minister Michael Gove notoriously averred (in the context of the BREXIT Referendum) that the people think they have by now heard quite enough, thank you, from experts. I hope that politicians and their senior civil servants in Berlin and Brussels still want to hear from the experts, on the question whether the UPC will do, in reality, what its proponents are boasting it will do. In my opinion, as a European patent attorney with clients in Europe, Asia and North America, it won’t.

  3. I can only but agree with Max Drei! Ratifying the UPCA in its present state is a receipt for disaster. But as Max Drei says, follow the money.

    The UK has only sent a “Note Verbale” to the Commission. I am not acquainted with international constitutional law, but I would not consider that it is a proper withdrawal under the Vienna Convention of the Law of Treaties (VCLT). The UPCA has not even provisionally entered into force in order to allow Art 25(2) VCLT to be applied.

    The vague statement of the UPC Preparatory Committee about the reallocation of the duties foreseen for the London Section of the Central Division has, in my humble opinion, no standing with respect to the VCLT. It is certainly not a common declaration off all contracting states under Art 33(1) VCLT.

    Starting the UPC without having amended Art 7(2) UPCA and the annex which is part of the UPCA defining the classes to be dealt with in London is putting the head in the sand and ignoring reality. Banking on Art 87 UPCA to amend Art 7(2) UPCA after its entry into force is defying any common and legal sense. I take bets that Italy which is poised to take over the duties of the London Section will not allow this to happen.

    Any party seeking help from a judicial system should be heard by the legal judge foreseen. As there will be no legal judge in London, this condition is not fulfilled. This could be a problem for the FCC if a new complaint is filed.

    The UPC is bad for European SMEs, see the article of Mr Xenos “The Impact of the European Patent System on SMEs and National States and the Advent of Unitary Patent”, published in Prometheus, Vol. 36, No. 1 (March 2020), S. 51-68. As most of the patents granted by the EPO are held by non-EU member states, where is the interest for EU industry to launch the UPC? It is giving those non-EU member states a single entry point to challenge European Industry. I do not see this as being beneficial.

    The UPCA is pushed by the big industry and their lawyers. The latter expect to get a lot of money. Both are intensely lobbying in favour of the UPCA. European SMEs are the fig leave behind which the lobbyists are hiding.

    Further to the problem of the legal judge, there is still the problem of the primacy of EU law raised on its own volition by the FCC. The FCC has dismissed the problem of the designation or removal of a judge, but this is not correct. How can a court be trusted if a judge can be removed from its duties without offering him any means of redress?

    The RoP of the UPC reach very far into the legal systems of the Contracting States, but have never been checked, not even by the Commission!

    It interesting to note that one of the greatest lobbyists for the UPC, Mr Tilmann has published in GRUR Int. 2020, 847 an interesting article on “The UPC without the UK: Consequences and Alternatives”.

    In Part II of his article Mr Tilmann claims that UK was a difficult partner from the start, which can even be held responsible for the fact that all the efforts for creating a “Community Patent” were torpedoed by the UK. He also considers that UK will lose out, but this is an acquired fact. But where is the attractivity of the UPC without the UK?

    The UPCA as not being common to all EU member states will simply add another layer of case law, but for what is this good? This case law can even be in contradiction with the case law of the boards of appeal of the EPO, and especially its enlarged board of appeal. On the other hand with the “dynamic interpretation” started in G 3/19, this problem could be resolved, but then, what about legal certainty?

    In Part III of his article, Mr Tilmann mentions “Alternatives to continuing?” and especially the “Incorporation into the CJEU court system” of a litigation system, but in order to immediately dismiss it in favour of the UPC. The reasons for the dismissal are the following:
    “Opposition to this centralistic structure was voiced from all sides at the time. The proposal was unanimously rejected by industry, lawyers and judges, not only but mainly because of the rigorous centralisation excluding local and regional divisions in EU Member States. Europe’s big competitors, the US and China, have decentralised first instance courts for patent cases”.

    This is not a convincing reason at all. If subsidiarity is to be reached, this is attained by the present legal system as the number of truly supranational litigations is very low. This is comforted by the fact that the average number of validations in EU member states is at best between 5 and 7. Why do we need a system for 20+ states? It would be much more efficient to have increased meetings of judges dealing with European patents in the member states of the EPC.

    I claim that the common EU IP court was primarily rejected by lawyers as it would certainly not be tailored to their financial needs and their influence on the rules of proceedings would be greatly reduced, contrary to what happened for the UPC. Moreover such a court with judgements valid in all EU member states would require unanimity which cannot be reached at this level as some EU members states have either not signed (Spain) or will not ratify (Poland and the Czech Republic) as it is bad for their industry.

    There is a way different of the “reinforced cooperation”, which would avoid another layer of case law not valid for all EU member states, but this way would not be to the liking of the UPC lobbyists.

  4. Let’s pick up on what Andre writes. Now that the British are gone, is that an opportunity to craft a better UPC?

    The EPC is the world’s best law of patent validity precisely because it was a fusion (in 1973) of all the best in the two rival systems of Law in the world, civil law and English common law. In following the Rule of Law, Europe is a beacon of light for the rest of the world. If Europe is fit for the future, it ought to be able to create an EU-wide system of patent dispute adjudication that is an example to the world.

    Let’s face it, for validity, there is nothing better imaginable than what we have already at the EPO. But the proponents of the UPC, the big international law firms, don’t like it because their share of that particular “cake” is far too small for their liking.

    Compared with the enquiry into validity, that into infringement is far less time-consuming (and so less attractive to the proponents). However, if the pols in Brussels and Berlin and Paris and The Hague truly want a functional patent dispute system for the EU, let them set up local infringement courts and let everything go up eventually to the CJEU. One would hope though, that the CJEU would hold itself back from wrecking the established (and enormously persuasive) jurisprudence of the Boards of Appeal of the EPO.

    What does the Republic of Ireland think? After all, its courts run under English law and Ireland is full of American companies. Does Ireland want a UPC even after the departure of the UK? Should we ask it?

    1. Anyone who has seen the CJEU’s efforts in the field of Supplementary Protection Certificates will surely be horrified at the prospect of that court having anything to say about patent validity.

      The CJEU has time and time again shown itself incapable of understanding the most basic aspects of how patents are drafted, how patent claims function, and how they should be construed. This leads to a tendency to come up with absurd and impenetrable tests which leave seasoned patent practitioners scratching their heads. Every successive attempt at clarification results only in more confusion. Robin Jacob put it well when he said, in light of case C-493/12 (Eli Lilly v HGS):

      “The SPC reference deluge continues and the Court decisions become less and less intelligible. What, for instance, is a national court (or patent office) to make of the latest test emerging from the CJEU, namely whether the claims relate ‘implicitly but necessarily and specifically to the active ingredient in question’? This is close to gibberish. Patent claims are there to define a monopoly. A product is either within the claim or not. Claims do not ‘relate’ to products That is not their purpose or function.”

      More recently we have seen (e.g. in the Teva decision) the CJEU struggling to understand the distinction between “common general knowledge” and “prior art”, and making cryptic statements which employ terminology “derived from patent law, but not in accordance with its meaning in that field” (to quote Arnold J) such as requiring that the skilled person must understand that a particular product “is a specification required for the solution of the technical problem”. What on earth does this mean?

      In the absence of a specialist patent chamber of the CJEU with apropriately-experienced judges, the SPC case law demonstrates that we should be very wary indeed of handing the CJEU an opportunity to upset the clear and thoughtful body of case-law which has been developed by the EPO concerning patent validity.

      1. Well said, IBNAS. Your comment reminds me of the assessments made by patent lawyers, of the well-meaning but disastrous efforts of the Supreme Court of the USA in recent years, when asked to opine on any aspect of patent validity. Supreme Court judges usually make a hash of the law of patent validity. In doing so, they achieve exactly the opposite of their role in any properly functioning legal system, namely to bring to the law a clarity and simplicity that has been gradually lost amongst the decisions of the lower courts

        The gift of the authoritative and hugely respected established case law of the Boards of Appeal of the EPO is a historical accident. No other Patent Office in the world is free from the catastrophic effects of national Supreme Court Binding Precedent on it. This is NOT a coincidence but the very reason for the clarity of the EPO’s case law on patent validity. Brussels, Berlin, please, do not destroy the greatest jewel in the world’s collection of patent law. Do not let yourselves be bamboozled by silver-tongued lobbyists of the world’s largest corporations. Remember that a trans-national corporation is obliged, by law, to care for nothing except the interests of its shareholders. It is therefore, by law, intrinsically a psychopathic entity. Representatives of the people are there to represent the ordinary citizen, not the itinerant psychopathic legal persons of this world. just remember that, when being wined, dined (and even head-hunted) by all those lobbyists.

  5. But what are the alternatives to trying to get a (nearly) EU-wide patent in view of all the failed attempts in the past.

    In an article I wrote and which was published in the Journal of the Patent and Trademark Office Society, https://bit.ly/3nJVx4I, I suggested in the last footnote:

    [The article was largely descriptive and, in hindsight, way too lenient on the shortcomings of the Unitary Patents & Unified Patent Court]

    ————-
    Failure to enact would be regrettable especially in view how tantalizing close enactment is or was, only a signature was required for Germany’s ratification and consequent enactment; yet, seemingly within a blink of an eye, the ratification process stumbled in its tracks just short of the finishing line.
    This raises the question what could be “rescued” from the “patent package” in case there will be no enactment. The author suggests to consider a (i) EU “Patent Right” Regulation exclusively governing the rights (including any exceptions or limits to those rights) conferred by (a) publication of a patent application, and (b) by grant of a patent; and (ii) to bifurcate infringement and revocation, and to move revocation to a newly established revocation court or revocation department at the EPO. Any future (appeal only?) “Patent Court” could then be considerably simpler institutionally, and perhaps be made an integral part of the EU judiciary.

  6. Dear MN,

    It is interesting to follow you thoughts. I have proposed a while ago on this blog something similar with bifurcation between infringement and validity.

    I would go one step further and not create a revocation department at the EPO. It would just be necessary not to limit the time for opposition to 9 months after grant, but to allow opposition for the whole life of the patent. After all the proprietor is allowed to request limitation or revocation for the whole life of its patent.

    What has to be avoided at any cost is to have a clash of case law between the UPC and the Boards of Appeal of the EPO in matters of validity. This is point which has been carefully ignored but cannot be denied.

    Whether you call it revocation/validity or opposition procedure is actually irrelevant. Should such an idea become reality it would mean that the Boards of Appeal of the EPO should be made really independent and not just the perception of their independence increased. It would mean that the Boards of Appeal do not stay merely as a unit of the EPO but become a separate entity as the German Patent Court became independent from the German Patent Office.

    Rather than to come up with something like the UPC exclusively serving the interests of the big industry and of international law firms at their service, this would be a true progress for European integration, even going well over the EU boundaries.

    It is clear that lawyers would not be happy with such a situation as it would still leave qualified patent representatives having a big finger in the pie. That is why lawyers are so keen to set up the UPC. Even if Max Drei disagrees, I maintain that the UPC is the revenge of the lawyers over qualified representatives before the EPO.

    After all, patents are technical items clad in a legal framework. You neither can ignore the technical nor the legal side, but without a good scientific background you will be lost with technique. Before courts we end then with experts battling against each other. It not only costs money but it can have deleterious effects as explained by IBNAS.

  7. Attentive, I do not disagree with you. Rather, I agree with you wholeheartedly.

    The reason why the saying “The proof of the pudding is in the eating” is so powerful is because it’s true. We in the patents community have been digesting the pudding cooked up by the Boards of Appeal of the EPO these past 40 years, and very few people have got any legitimate criticism of it. Supreme Courts praise it. Robin Jacob (so critical of the CJEU) praises it. Such exceptions as there are, as Attentive points out, are those who are not getting what they feel to be their share of the sauce, namely the big international law firms.

    It would be nice if somebody could put together for Brussels and Berlin a summation of what national Supreme Courts have said in recent years about the established case law of the EPO. A contrast with the Dog’s Dinner of case law on patents, designs and trademarks cooked up by the CJEU would give open-mined politicians much food for thought.

    Even back in 1973, when the EPC was being written, it contained a provision for national courts to lay off to the EPO the task of assessing patent validity, in ongoing patent litigation in the national courts of EPC Member States. So, as Attentive suggests, the EPC Member States should i) extend the EPC opposition period to cover the life of the patent, but also ii) ease the EPO Boards of Appeal out from under the thumb of the EPO President. That would, at a stroke, solve all the problems perceived by Brussels. It might even increase the flow of dividend pay-outs that the EPO President can divide up amongst the EPC Member States.

    And if those international law firms concentrate, going forward from here, they can compete with the patent law boutique firms, and win for themselves a full boat of the sauce in the European patent validity litigation pot..

    Everybody wins. What’s not to like?

  8. I agree with Andre that Europe deserves a proper EU patent and a proper EU patent court and an EU patent office with the CJEU as the highest court, just as for all other matters of EU law. Moreover, any criticism of the CJEU by British judges in the past is now obsolete as our English friends have left the EU. It is doesn’t matter at all what they think of the CJEU or the CJEU case law e.g. about SPC’s. I look forward to being impressed by the future UK case law about patents more or less in the same way as it can be interesting to read about Chinese court cases.

  9. @MaxDrei
    “What does the Republic of Ireland think? After all, its courts run under English law and Ireland is full of American companies. Does Ireland want a UPC even after the departure of the UK? Should we ask it?”

    I say old chap aren’t you improperly conflating “English law” with “common law” ?
    Do Scottish courts run under “English law” – try that one in Edinburgh some time and you’ll see how far you get with it …
    How about the USA, Australia, Canada, New Zealand … (I could go on) … ?

    And as for “should we ask it?”, I’m afraid you will have to.
    Under IRISH law, ratification of the UPC by Ireland will require a referendum, not a couple of parliamentarians in a non-quorate early morning rubber-stamping session …

    And you jolly old Brits know what fun referenda can be …

  10. Sir Jonah, I salute you and your observations. Quite right, that I was using “English law” as shorthand for that system of law (“common law and equity”” if you like, invented centuries ago in England and still today the basis of the law of many sovereign jurisdictions, all around the world Not sure how “improper” I was or how much “conflating” I was doing though. After all, my comment is not at the level of a PhD thesis. It was intended to be provocative.

    How interesting, that the Republic of Ireland will not be able to ratify the UPC until its electorate has, with a Referendum, given its blessing. As you say, Referenda can be a lot of fun, even with such basic questions as EU: Y/N. Quite how the electorate is supposed to make a useful and informed decision on the question UPC: Y/N is quite beyond my powers of imagination.

    Representative democracy seems to be, these days, such a delicate flower. One observes the USA with great apprehension. The Parliamentarians (Germany) make a mess of their (UPC) vote and the electors (UK) make a mess of their (EU Referendum) vote. Who is competent to decide? Is “representative” democracy in the age of social media an oxymoron? I begin to think it might be.

  11. Dear “Attentive Observer”,
    Bifurcation of infringement and validity is not a new thought.
    Also deleting the time limit in the EPC for filing an opposition, and thereby, in effect turning the opposition procedure into a revocation procedure surely has been suggested numerous times. But this might cause issue with national legal procedures which do not bifurcate or are disinclined, for whatever reason, to defer to the EPO the issue of validity.
    Art.64(3) would need also to be clarified or amended so that “any infringement of a European patent shall be dealt with by national law” is understood to mean what it says, only infringement, and that issues of validity and revocation is reserved for the EPO. (Perhaps national revocation procedures, as an exception to the general rule, only if national prior rights are involved.)
    MN

  12. Representative democracy seems to be, these days, such a delicate flower. One observes the USA with great apprehension. The Parliamentarians (Germany) make a mess of their (UPC) vote and the electors (UK) make a mess of their (EU Referendum) vote.

    You could add Canada’s very rushed ratification of the USMCA on the last day (Friday) before a three-week break. None of the weeks of deliberations that were scheduled (with the intent to slightly “improve” the deal), but instead instant approval!

  13. I want to take up with Attentive and MN the issue of “bifurcation”. Is it Attentive’s proposal to reserve validity adjudication exclusively to the EPO? I had thought not. I had supposed that his proposal was to leave intact the notion of a “bundle” of national patents but to allow the TBA to strike down a patent issued by the EPO at any time during its 20 year term.

    One would imagine that petitioners for revocation would favour the EPO, so as to get rid of the patent all over the EU. If they choose not to petition the EPO, that would suggest that they themselves are not confident that their attacks on validity are good enough to succeed.

    The EPC Contracting States back in 1973 were not willing to go as far as a pan-EPC court to adjudicate infringement. My reading is that even now, in 2020, Europe can stomach a single Decision revoking a patent for all of Europe but is still nervous about giving one court the authority to find infringement for the whole of the EU.

    There is some logic in that. After all, patents are, by definition, an impediment to free trade and open competition. Knocking a patent out restores free trade. Enforcing the exclusive rights given by a patent grant stamps out free competition. So the right given by patent grant should only ever be enforced by an expert specialist court that knows what it is doing. The consequences are more severe than the consequences of striking down a single patent of such dubious validity that it has to be litigated in court.

    Mind you, the recent pan-European pemetrexed litigation is a bit of an exception. The issue that took it to national Supreme Courts all over Europe was an infringement issue, not one of validity. But the argument on that issue, to and fro, between the various involved jurisdictions and courts, has served a useful purpose, namely, sharpening up the law of Infringement by Equivalent, all over Europe, to the lasting benefit of all future patent litigants. We’ve got that benefit, even without a UPC. And with a UPC, would the law on DoE have been rendered clearer? If the performance of the CJEU, even on IPR issues where no education in science or engineering is needed, is anything to go by, we would have had fog and obfuscation, less clarity rather than more.

    1. Dear Attentive,

      There is a strong logic in your suggestion. However, it relies on a clear separation between validity and infringement which would prevent judges from understanding and taking into account the overall context esp regarding the relationship between the parties and their behaviour. in addition prominent issues such as claim interpretation affect both sides and there is a big risk of inconsistency if there is bifurcation. There are other problems illustrated by the reforms currently envisioned in Germany.

  14. I do not claim to be the first of having thought of the extension of the opposition period, and of the bifurcation. I do not remember anybody else mentioning it on this blog before. But this is not really important.

    If one takes Art 64(3) for what it says, it does not seem to need amendment.

    A quick look at the “travaux preparatoires” relating to Art 64 shows that in the early drafts it was much closer to the rights envisaged to be valid for a Patent for the European Community, cf. Art 20.

    In the early drafts relating to the Community Patent the question of exhaustion of rights for a patentee was subject to heavy discussions. It seems that this topic was later left aside and proposals coming much nearer to what is now Art 64(3) were discussed. What was also heavily discussed was the coexistence between national and European patents. There were also lengthy discussions in the 60ties about the different fora where an infringement action could be launched. Does this rings a bell?

    More important seems however to have the Boards of Appeal truly independent from the EPO and its President. The head of the Boards of Appeal does only have the competence delegated to him by the President. Eventually, the president decides upon the budget and not the head of the boards. What has been done to the boards of appeal in 2016 should be rescinded, and the latter should become an autonomous entity, even if it gets administrative support from the EPO.

  15. Dear XLF:

    Do you have anything to say about the substance of the comments made by the English judges? I think you will find that plenty of patent practitioners elsewhere share their viewpoint. Ad hominem attacks based on the judges’ nationality might be satisfying to you, but “playing the man, not the ball” does not contribute to a constructive debate.

    In the spirit of constructive debate, let me turn this around and ask you: do you find the case law emanating from the CJEU to be clear when it comes to the validity of SPCs? And if so, why do you think that not only the English courts but also those of (e.g.) France, Germany and Sweden have such difficulty in understanding the tests which the court has set out?

    Do you believe that there is no real risk that the CJEU will come to contrary views on patent validity, overturning the legal order which has been painstakingly built up over 40 years by the EPO, to the detriment of patent holders and the public alike?

    1. My comment of 13 October was worded a bit harsh but overall I think that EU patent professionals could keep in mind that the CJEU has to deal with many fields of law. I don’t really see why the CJEU judges would be able to deal with all kinds of law, even intricate provisions of tax law (VAT etc.), with trademarks and copyright but not with patent law.

  16. Dear Max Drei,

    The idea is to leave intact the notion of bundle, but like in opposition decide centrally of the fate of the bundle. Validity could be left for national courts, and a national court would only be called by an opponent who was not successful at the EPO as it is presently the case. It would still be possible to go to a national court if the central action was not to be expected too successful. I take bets that the number of validity actions before national courts would be very low with such a system.

    The number of true supranational infringement actions is very low. Pemetrexed is one example, but since the average number of validations is at best 5-7 in the whole EPC, why is it necessary to set a complicated machine like the UPC, which does not even cover the whole of the EU. You made those reasons clear: financial interest of big law firms.

    Without the UK the UPC will never become the leading court in Europe as thought by Sir Robin Jacob and oppositions before the EPO will also not go down! The UPC is as useful as a plaster on a wooden leg!.

  17. Dear Attentive, you set me thinking on the consequences of i) extending the EPO opposition period for the full term of the patent, together with ii) simultaneously putting in place measures to ease the EPO Appeals structure out from under the controlling thumb of the almighty EPO President.

    I can imagine that the big international law firms will see dollar signs dancing in front of their eyes: I can imagine them (and their big corporate clients) swinging around to a position of lobbying powerfully in Brussels for such reforms to be carried through, the sooner the better.

    As I wrote above, would it not be a Win:Win for everybody within the interested circles. What’s not to like?

    It remains only to think very carefully about The Law of Unintended Consequences.

  18. Unfortunately, the first, second and third instance of the “revocation court” at the EPO are under the control of the EPO, so that this court is not independent from the EPO (e.g. like the BPatG) as it should be under the rule of law.

    Moreover, the “revocation court” at the EPO is by far the slowest patent court in Europe, though it allows to file a very limited number of briefs (1 or 2 per party and instance) and does not handle infringement.

  19. @MaxDrei
    “Quite how the electorate is supposed to make a useful and informed decision on the question UPC: Y/N is quite beyond my powers of imagination.”

    Well’s there’s the rub isn’t it ?

    How can some toothless simpleton from the bogs of Shanaheever be expected to make a useful and informed decision on a piece of legislation which has been carefully crafted behind closed doors with exquisite precision by the glorious technocratic genii of the ENA and their ilk.

    The very thought of it !!!!

    But you see the thing is that MOST REGRETTABLY the Irish Constitution gives that toothless simpleton the power to vote against being bound by a law which he does not understand ….

    Outrageous, I know, but there you have it ….
    The perils of a WRITTEN CONSTITUTION which accords power to THE PEOPLE !
    How can those ignorant bumpkins be expected to know what is in their best interests?

    Down with that sort of thing !
    May our affairs be efficiently and rationally administered by wise technocrats and let us not be tempted to have the temerity to question their expert opinions …

  20. Robot, in recent years the Boards of Appeal of the EPO have been hobbled by an EPO President who thought that patent validity would be better adjudicated in Paris. The patents courts of England used to be dreadfully slow and expensive. Not any more. These things are not set in stone. Where there’s a will there’s a way. Important is to ask how high is the quality of the established case law of the Boards of Appeal of the EPO and how much legal certainty that case law has brought to those in Europe who are asked by their clients to write opinions on validity.

    As for you Jonah, I still believe in the idea of representative democracy. The more difficult the question, the more important it is that Parliament should decide it. The trouble today is that electors, bamboozled by social media, elect as their representatives to Parliament persons who are venal, narcissistic, or both, even sometimes psychopaths. Me, I would rein in social media but, strangely, the MP’s seem reluctant to do it.

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