In my post “The German UPCA Ratification – at Schweinsgalopp towards Mautdebakel” on this blog, I cautioned the German Ministry of Justice and Consumer Protection against ignoring the apparent political and legal problems with Germany ratifying the Unified Patent Court Agreement (UPCA) with the same wording as it had before Brexit and before the Federal Constitutional Court’s (FCC) first decision on this matter came out. Naturally, none of the bigshots in the Ministry or the Bundestag and Bundesrat has cared. So it happened what had to happen: a second constitutional complaint (actually, even two) and then “the same procedure as last year” – the FCC asked the President to wait with his signing of the Ratification Law, the President complied, and now the ratification law is back in the queue on the FCC’s stack of cases. Now we have the salad, as we say in German – Mautdebakel II in full swing.

How will it evolve? Well, the FCC has just published its annual overview, i.e. a list of proceedings that it intends to decide in the course of 2021. It traditionally publishes this list in February of each year, and equally traditionally it is incapable of deciding even half of these cases by end of the same year. This has led to the unofficial name of this list, i.e. “Lügenliste” (Liar’s List), which may be a bit harsh, but sometimes jokes are like this. Nonetheless, while the list is not necessarily indicative of the cases that will be decided in the year to come, it is of value for the cases that will not be decided, i.e. those cases that we know have been filed but do not (yet) appear on this list. For example, the two constitutional appeals on the *new* UPCA ratification law. Thus, if I may dare making any recommendation to the stakeholders and judges that have been preparing for the imminent enactment of the UPCA for years, it is: relax and look to other plans for the near to mid-term future. While I have already won my unofficial bet that the new Berlin airport will open before the UPCA will enter into force, my second bet that UPCA will come before Stuttgart 21 (currently predicted for 2026) is still running, and it is possible that I will lose this one. This will not be over any time soon, all the more so since the Case Load of the responsible 3rd Department of the FCC, even to the extent shown on the list, is pretty crazy: A constitutional complaint against the marketing approval of a generic veterinary medicament, two disputes in regard to the government’s obligations to inform the Bundestag about its plans to act against human traffickers in the mediterranean, a dispute in regard to a state law of Bremen prohibiting the turnover of nuclear fuels in its ports, various constitutional complaints against CETA, another constitutional complaint against a decision of the FCJ and CJEU declaring an arbitration clause in an investment protection agreement between Slovakia and the Netherlands inapplicable under EU Law, several referrals of courts and the Parliament in regard to the “Mietendeckel” of Berlin (rent cap) – and five more constitutional complaints, of which at least four have appeared on the “annual overview” for years.

Indeed, the first entries in the 2021 list of the FCC’s 3rd Department are now the five constitutional complaints on the grounds of violating Article 2(1), Article 19(4), Article 20(3), Article 24(1) and Article 103(1) of the Basic Law due to insufficient legal protection at the EPO against decisions of the Boards of Appeal.

These constitutional appeals should be no “newcomers” to readers of this blog, and I sufficiently warned about their significance in earlier posts here, here and here. To be clear, I did and do so without taking any pleasure if my warnings were eventually found to be well-reasoned.

But be that as it may, I would now really expect that the FCC will decide about these constitutional appeals this year. Not only because the first of them dates back from the year 2010 (!), which might be a record even for an FCC case, but also because the FCC published – for the first time ever and even in English – an annual report looking back to the previous year, but also giving an outlook of cases up for decision in 2021. This outlook lists four of the above cited cases as “to be decided in 2021”, the Berlin “Mietendeckel”, the EPO cases, CETA and the case about the arbitration clause in the bilateral agreement on investment protection. Which would still be an impressive program for the the 2nd Senate and its 3rd Department. With that, let’s get ready for another interesting year.


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15 comments

  1. Dear Thorsten,

    I would not say that we have “the” salad. On the one hand, we now have the assurance that the UPC complaints will not be dealt with in 2021. On the other hand we have a kind of salad, but this is nothing new since UK withdrew from the UPC. It was clear that with Art 7(2) as it stands, UPC could not enter into force. And all the proponents of the UPC knew it damn well, but they simply did not want to face reality.

    Looking at the way the second ratification bill was presented to the Parliament, MPs could not do anything else but ratify. I would not call the list of cases to be dealt with by the FCC a liar’s list, but rather the explanatory statement annexed to the second ratification bill. But we all know who held the pen of the writers of this document in the ministry of justice.

    When the second ratification was decided, I said that the proponents of the UPC might have won a battle, but certainly not the war. Shortly after it became known that there were two new complaints filed, all the proponents of the UPC were heralding that like for the first case, dismissal of the complaints is on the doorstep. It was a matter of 6 months at best. Now we know it is not a matter of 6 months, but probably much much more.

    I have even heard one of them saying that the President of the German Republic should have some…… (decency forbids saying more) and simply ignore the FCC so that the UPC can start as soon as possible. The complainants should not be allowed to hold up such a project which was in the interests of the whole EU (sic)!

    I am wondering if the FCC does not simply play time. It is clear that the longer it will take to ratify, the less chances the UPC will have to ever open. If the interest for the UPC has died, what does help flogging a dead horse? The FCC could save itself a lot of work.

    The private interests of the UPC proponents, especially of the big law firms, will never die but the perspective of the big buck is becoming a kind of fata morgana.

    The situation is not as bad as in a famous fable of La Fontaine. The milk has not been all poured out of the pot. I would rather say the milk is curdling day by day. But the end result will be the same.

    As far as the question of the independence of the BA is concerned I hope that the FCC will force the BA to become truly independent from the head of the EPO. The BA are only independent by delegation of power from the latter. I do not call this independence or even the perception of independence. If one needed confirmation of the lack of independence of the BA, just look at G 3/19 and Art 15aRPBA2020.

    What is dearly missing is a revision instance for the BA. It is there for procedural matters, but not for substantive matters. And it is needed. The BA check whether the discretion of the first instance divisions has been properly exercised. Which body checks the exercise of discretion of the BA? In view of its case law it will certainly not be the EBA acting under Art 112aEPC. And yet with the RPBA2020 the discretion of the BA has tremendously increased.

    When one also sees that the BA can decide ex-officio, without the slightest proof, what belongs to common general knowledge, this is also going a trifle too far. See T 1090/12 in examination and T 1370/15 in opposition.

  2. Attentive Observer: “If one needed confirmation of the lack of independence of the BA, just look at G 3/19 and Art 15aRPBA2020”

    Just look at what the Enlarged Board itself said in G 2301/16, point 43 of the Reasons:

    “As the Petitioner [the Administrative Council of the EPO] did not clearly distance itself from the Office President’s position, there is the threat of disciplinary measures against the members of the Enlarged Board. It is then the Enlarged Board’s judicial independence in deciding on this case which is fundamentally denied.”

    Wonder how the FCC could endorse such situation.

  3. Dear Anonymous,

    I fully agree with you that in G 2301/16 the EBA resisted the pressure of the office management.

    Did you compare the composition of the EBA in G 2301/16 and in G 3/19?
    The only one which is left from G 2301/16 is the rapporteur in G 3/19.
    In view of G 2301/16, I would have expected a different result in G 3/19.

    How many people banked on the admissibility of G 3/19?
    The surprise was great when the decision introducing a “dynamic” interpretation of its own case law by the EBA was issued.
    The conclusion of many people was that in G 3/19 the EBA did not resist the pressure of the office management.
    And this is not something to be pleased about.

    I also wonder how the FCC will see the situation created by the introduction of R 12a-d after all the events leading to the quasi dismissal of a member of the BA by the president of the office. The fact that reappointment is submitted to a performance review like in DG1 is certainly not conducive to increase their independence.

    The FCC has also decided that judges can be appointed for a given period, but under quite strict conditions: they are employed for life and cannot be reappointed.

    Not even the perception of the independence of the BA has been increased. In spite of what has been said, their independence is not existing as all the powers given to the president of the BA is by delegation of the president.

  4. G 2301/16 says the quiet part out loud, namely that the Boards are perfectly well aware that they risk provoking negative consequences (for them) by issuing decisions that contradict the strongly expressed wishes of the President / AC.

    Given the awareness of the Boards on this point, how can one possibly have confidence that the decisions of the Boards of Appeal (or the Enlarged Board) in highly “political” cases are untainted by partiality?

    Since G 2301/16, the EBA’s decisions in controversial / “political” cases, such as G 2/19 and G 3/19, have used highly suspect (and, frankly, outright illogical) reasoning to arrive at conclusions that just so happen to give the President and the AC (almost) exactly what they might have wished for. In the light of this evidence, one might reasonably conclude that, given the circumstances under which its members operate, objective observers will ALWAYS have an objectively justified fear of partiality in respect of EBA decisions in “political” cases.

    The unfortunate crafting of the rules governing the organs of the EPO means that weaknesses with regard to the independence of the Boards have always been lurking in the background. Indeed, there was a push in the early 2000s to address those weaknesses. It is no small tragedy that the proposed reforms were abandoned … ironically, because of the perceived proximity of legislative changes necessary to usher in a new era of unitary patents.

    The latest developments in Germany illustrate that waiting for unitary patents is like waiting for Godot. Continuing to delay MEANINGFUL reform of the Boards can therefore no longer be justified, regardless of whether or not one believes that Godot will eventually arrive. The decisions in G 2301/16, G 2/19 and G 3/19 illustrate that the situation is already desperate. It is hard to imagine how just bad it might get if the FCC were to give the EPO President and the AC a “free pass” to carry on in the same vein.

  5. Things might even get worse with G 4/19…

    Since I am not German, could someone please explain how the EPO falls under the jurisdiction of the FCC? Thank you!

  6. A further referral in which the independence of the EBA will be tested is G 1/21, when it will actually have been filed by Board 3.5.02.

    I would not be surprised if in the meantime this board has come under high pressure by the management of the boards and of the office.

    The issues raised are of high political relevance, as the whole mandatory character of OP in form of ViCo could be set aside.

  7. Just seen on LinkedIn published by Preston RICHARD

    The Opponent has withdrawn their request for a referral to the Enlarged Board of Appeals on the validity of Oral Proceeding by Video Conference.

    https://register.epo.org/application?documentId=E5YSDU5C0178DSU&number=EP04758381&lng=en&npl=false

    Bad news.

    But epi took position on the topic

    https://register.epo.org/application?documentId=E5YD2NJP6561DSU&number=EP04758381&lng=en&npl=false

    The question of the legality of mandatory OP in form of ViCo is however still actual!

    1. Interesting. However, it is unclear whether the request(s) for in-person proceedings have been withdrawn … and so an opinion from the EBA may still be required to resolve the case. We shall have to wait and see.

  8. In any case, the request was filed after closure of the debate. Unless the board decides to reopen, there will be a referral.
    It seems that the proprietor had the same request, so that in absence of withdrawal of the proprietor’s request, the referral should be on its way.

  9. Sorry to insist, but soon the comments will be closed:

    Since I am not German, could someone please explain how the EPO falls under the jurisdiction of the FCC? Thank you!

    1. In my understanding, it is not the EPO as such which falls under the jurisdiction of the court, but rather Germany’s position as a contracting state to the EPC. If the institutional structures of the EPOrg are not in line with the standards of the German constitution, then Germany cannot participate in a constitutionally valid way.

      [Disclaimer: I am not German either]

    2. The EPO does not fall under the jurisdiction of the BVG. However, Germany’s accession to the EPC does fall under its jurisdiction. Would the BVG consider that the membership of Germany violates the German Constitution, it could oblige Germany to amend the treaty or step out of it. Germany being the biggest European filer and by far the biggest “Umsatzmarkt”, that would be a huge blow to the EPO and would certainly require a Diplomatic Conference and amendment of the EPC.

  10. Thank you for your comments.
    So if there were issues with the FCC decision(s), the only solution would be Art. 172 EPC, wouldn’t it?
    However, what about the decisions taken by the BoA since 1979?

    1. My [non-expert] view is that the BoA decisions would surely stand (they were taken under the provisions of the EPC, not under German law).

      However, perhaps someone can tell us whether any parties adversely affected by such decisions could claim damages against the German government. For example, if a patent-holder’s rights in Germany were destroyed by revocation of a patent at the EPO, does non-compliance of the EPC (and therefore the revocation procedure at the EPO) with the German Basic Law mean that the revocation of the German part of the patent is unconstitutional? And so that the patentee has a claim for damages against the German government arising from the unconstitutional removal of their rights?

      Of course, such rights in the (German part of the European) patent would also not have existed in Germany in the first place without Germany being party to that same illegal convention… can this be disentangled?

      Another blogpost is surely needed to explore these matters.

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