It is very unlikely that the new complaints against the Unified Patent Court Agreement, which were filed last December with the German Federal Constitutional Court (FCC), will delay the Unitary Patent project for two or three more years. Kevin Mooney, partner of Simmons & Simmons and one of the driving forces behind the UPC and UP, had said this in an interview with Kluwer IP Law.

Mooney explained the current situation is different from 2017, when a complaint against the UPCA was filed with the FCC for the first time, by Düsseldorf patent lawyer Ingve Stjerna. It took the FCC three years to decide and partially uphold the complaint.

“The 2017 complaint included a request for preliminary measures to prevent the German Bundespräsident from signing the UPCA ratification bills into law. These preliminary measures however were never imposed because the president, at the request of the court, agreed not to sign the UPCA bills as long as there was no decision on the merits.”

One of the two new complaints that have been filed – one by Stjerna again and one by a  private individual, a company and an association, probably linked to the Foundation for a Free Information Infrastructure (FFII) – includes a request for preliminary measures as well. This time however, the German president has said he will only delay his signature pending a decision on preliminary measures, according to Mooney. So it depends on the FCC’s decision about preliminary measures only when the president will sign the UPCA laws and the German ratification procedure can be completed.

Disgraceful

Mooney: “We had expected a decision very quickly, as soon as past January. Immediately after the complaints against the UPCA had been filed in December, the FCC asked the German Ministry of Justice for its views on the request for preliminary measures, and these views were filed to the FCC before the end of the year. When there was no decision in January, there were many rumours it could come out anytime, but we’re in June now and we’re still waiting. I have to say I think it is disgraceful that it takes so long for the FCC to make a decision on the grant or refusal of preliminary measures.”

If the FCC dismisses the request for preliminary measures and Germany proceeds with the ratification procedure, this means the Unitary Patent system can finally start functioning. Mooney admits this creates some uncertainty as long as the FCC has not decided on the merits of the complaints. “But this isn’t a big problem, firstly because after the preliminary decision it will take at least another 18 months before the Unified Patent Court can open its doors. Apart from that, we – me and others who are involved in the creation of the UPC and UP – are quite confident that the two complaints will be dismissed.”

Despite all the delays, Mooney is still regularly working on the optimization of the CMS of the future UPC, which is “a very complex system”.

For the Unitary Patent system to start, the first necessary step is that German and two other member states sign or express their support for the Protocol on Provisional Application. This protocol regulates the practical preparations for the UPC; if it enters into force this also means a budget will be available.

The plan is that after the phase of practical preparations, about 12 months according to Mooney, Germany will formally deposit its instrument of ratification with the European Council, thereby launching (three months later, art 89 UPCA) the Unitary Patent system.

“If the FCC were to dismiss the request for preliminary measures in July, for instance, this means the UPC could open its doors in October 2022, according to our timetable. But I have to admit that over the last years I have given many presentations about the Unified Patent Court, and I have had to change the dates in my slides many times”, Mooney said. “It has been a very frustrating process.”

As to the UK’s non-participation in the project, Mooney especially regrets that experienced UK judges will not be able to make judgements in the Unified Patent Court. “UK judges will take into account and respect decisions of the UPC and vice versa, but a chance for real European harmonization has been lost.”


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26 comments

  1. Supertramp — Dreamer, was the first thing that came to my mind…

    And on which basis does he believe the complaints will be dismissed?
    Last time, the only decision that has been taken, was about not meeting the formal requirement during the parliamentary vote when transferring sovereign rights.

    But there were negative and dubious comments about the other merits in the decision already.

  2. The complainants should update their complaints:

    http://techrights.org/2020/12/03/epo-upc-fraudlinger/

    The UPC will keep SMEs at bay with its high costs (20.000EUR if you want to defend yourself, and invalidate the patent of a troll or a competitor). That’s the reason why Czech Republic is not ratitying any time soon, court fees for a simple case in Czech Republic is 80EUR.

    Mdme Frohlinger decided to recycle the old Impact Assessment of 2009 to hide the controversial “self-financed” aspect of the UPC (which the UPLS of 2009 was not), which explains why the UPC court fees are so high for SMEs.

    Art 36.3 of the UPCA with a court that seeks to be “self-financed” is destroying the integrity of the justice system, as judges will apply “patent maximalism” to be able to have a salary. There is a reason why courts in the different member states are not “self-financed”. Courts are not companies with financial targets.

    1. On Mercosur and the recycling of Impact Assessment, you can read through the lines that the Commission was relunctant to recommission a new impact assessment. I guess if there are no fines or sanctions attached to it, they do whatever they want.

  3. The phrase “European harmonisation” refers to a specific process that would be achieved by a European substantive patent law directive with an aim to harmonise the patent law of member states.

    The elephant in the room is why this has not been tried. Why we still have 27 unharmonised patent laws. We harmonised patent law for biological matters in the EU, that is all.

    Neither new specialised Courts nor the EPO board of appeal or administrative practice nor WTO and trade treaties are a process for “European harmonisation” of patent law. If any, the Unified Court is just “enhanced cooperation” of EU member states. With the UK gone, it seems unwise not to try a genuine EU patent court as envisage in the EU treaties instead of the Unitary Court. Such a Court would not require diplomatic conferences, treaties and ratifications but the simple use of the ordinary legislative process of the EU. In other words, a true EU patent court would be easily achievable provided the European Commission presents a legal proposal.

  4. I would agree with ‘one of those’ that there is no reason to be optimistic, like there was none when the first complaint was filed.
    This said, I would add to Mr Mooney’s comments that the FCC should not be allowed to leave cases pending forever (the first case on the EPO is more than 10 years old), and should not be allowed to decide partially when they should know that the case will come back, with innuendos that the case suffers further deficiencies.
    Also, Mr Mooney says that it will take 15 further months, but that delay appears to be fine…

  5. With due respect to his person, I think that Mr Mooney has missed an opportunity to keep quiet.

    Who does he think he is to call the attitude of the GFCC “disgraceful”? As a lawyer, i.e. a person part of the judicial system, I find such a comment outrageous. Ever heard about contempt of court? That he is angry at all revenues which are not filling his pockets and that of his friends, does not warrant such a discourteous attitude.

    It appears however sure the longer the GFCC takes to decide the less the chances are that the UPC will enter into force.

    Where does he know the names of the complainants? Does he has contacts with the registry of the GFCC? We have heard before that the complaints would be dismissed at once. The record seems to have a scratch again. That the new complaints are not on the agenda of the second Chamber of the GFCC has certainly brought him in rage. In the first decision, parts of the complaint were dismissed as they were not properly substantiated, they might now have been better substantiated. On top of this, Point 106 of the first decision further raised a point which was not even raised by the complainant.

    The second ratification at the German Parliament has been obtained by hiding the real problems.

    The first problem is the inordinate costs for PMEs. Claiming that the costs before a supra-national self-financed court should be lower than before a German court is an insult to common sense. A court which has to be self-supporting and hence to have a fee level which is far beyond what appears reasonable is not a democratic court. The difference in fees between infringement (11 000€) and nullity (20 000€) makes it abundantly clear for which the UPC is set up. The UPC has been set up for the big industry and internationally active lawyers firms. Further to the high fees, one can guess the fees which will be charged for a supra-national litigation by lawyers. And all this should be in the benefit of SMEs?

    The situation created after Brexit with Art 7(2) UPCA and Art 3 of the Protocol on provisional application (PPA) mentions London, respectively the UK, has also been carefully dodged in the explanations given to the members of the German Parliament. When one compares an Article published in GRUR Int. by Mr Tillmann, a good friend of Mr Mooney, and the explanatory note to the second ratification bill, it is clear who has guided the hand of the civil servants in the German Ministry of Justice. Lobbyism at its best!

    Even under the VCLT, the terms of Art 7(2) are abundantly clear and do not need interpretation. Simply claiming that the duties of London can be distributed to the remaining sections of Paris and London, is wishful thinking at its best. This is the more so, since Italy, The Netherlands and lately Denmark have claimed that the London section should come onto their territory.

    As long as the problems linked with Art 7(2) and the PPA are not solved it appears wishful thinking that the UPC can start. Should it start, any reasonable lawyer or representative would not advise his clients to start litigation or nullity at a court with such a shoddy basis.

    That a very specious interpretation of Art 87(2) UPCA as has been envisaged in order to dodge the problem of Art 7(2) UPCA shows a certain phantasy, but is at stake here is not phantasy but correct application of legal and constitutional rules.

    As far as the participation of the UK to the UPC without being EU member states, there are interesting considerations in a recent article from Mr Stjerna. According to the article, the German Ministry of Justice is still thinking how UK could still participate to the UPC in spite of not being EU member states. Under the present British PM this appears also to belong to the category wishful thinking.

    https://www.stjerna.de/files/Unipat-Art87.pdf

  6. Haha, if we get UPC incantations again, this is a sure sign that life gets back to normal.

    All the best, but do not build your life on the expectation that the UPC will open in 2022. 😉

  7. According to the his firm’s website, Mr Mooney is a UK lawyer. No infos are given regarding possible further citizenships.

    I am actually wondering, why a UK lawyer – who can not practice before the court (?) – ia allowed to participate in the creation of an EU court. And the other question is, why does he care anymore, the UK did not want to be part of this…

    Apart of this, I too find his attitude towards the BVerfG highly inappropriate. If he likes to insult courts and judges, maybe he should start with the ones in the UK – but maybe this would lead to professional problems for Mr Mooney?

  8. @ A. Rebentisch

    You seem not to be aware that there were no less than four drafts for a European patent in the EC (now EU) in the sixties of the last century. No agreement could be reached at the time between the then reduced number of contracting states.

    It is only the fear of some European Countries to be inundated by not examined applications under the PCT which pushed European countries to reconvene and end the lockup at EU level. In order to do so, the idea from the then President of the German patent office was to split the procedure between a grant procedure and an after grant procedure in the EU member states. The second part of the idea was to open the grant procedure to non-EU member states. And we ended then on the one hand with the “open” Munich Convention of 1973 and on the other hand with the Luxembourg Conference on the Community Patent of 1975. That conference never led to a Community or now EU Patent for various reasons, among them the language problem and that of forum shopping.

    It is only in 2012 pushed by the lobby of the big industries and that of internationally active lawyers firms that the EU commission came up with the idea of a “reinforced cooperation” as it was clear from the outset that all members of the EU were not willing to participate in the creation of a EU Patent, now called the UP. As not all EU members wanted to participate from the outset it was only possible to come up with an agreement between the EU members willing to participate. Poland and the Czech Republic have signed the UPCA but will not ratify as both countries considers the UP a danger for their industry.

    Your idea that “a true EU patent court would be easily achievable provided the European Commission presents a legal proposal” is a nice idea, but will remain at this level as there will be no agreement on a true EU patent.

    On the other hand, with an average of 5 validations of an EP patent granted by the EPO in EU, the necessity of a UP/EUP does not imposes itself. This is the more so since Europe has lived perfectly well with the EP/EPO system and the exhaustion of rights of the patentees. When barely a third of the patents EP are granted to EU companies, it gives the non-European industry a simple way to attack the EU by opening a single point of attack. Is this really what we want?

    Another solution, already proposed, would be to scrap the EPO, and start all anew within the EU and built a true EU patent office. This is certainly not an option.

  9. This has developed into an interesting thread. I particularly liked Attentive’s opening line, that Mr Mooney has missed a good opportunity to indulge himself in a period of silence.

    We have this week-end a G7 Meeting in which the representatives of “Global Britain” turn up for meetings with other European countries wearing Union Jack socks, in order to lecture them, and to tell the wider world how much better they are than anybody else at mediating the world’s toughest problems of the world, finding solutions nobody else can find, through sheer creativity, political pragmatism and world-wide legal experience (thanks to the British Empire). They preen themselves, supposing that they are setting an example to the Rest of the World, how to live under the precious “Rule of Law”.

    It just doesn’t wash though, does it. Even as they ponce around on the world stage, they are choosing not to implement a BREXIT isolation Agreement they signed only a year and a half ago. And yet they continue to suppose that it should always be the UK who should chair every Meeting.

    The only connection Mr Mooney has with the EU, I guess, is that his “Global” law firm (and others like it) is keen to offer its services to all those corporations outside Europe, who see the UPC as vital to their interests in subjugating the whole EU market in one fell swoop.

  10. Another chapter opens up in the epic “Mooney UPC Fantasies”.

    We learn that Mr Mooney is “one of the driving forces behind the UPC and UP”. I always thought that the European Parliament and the EU Member States were the “driving forces” behind the reform, but maybe that’s rather naive.

    I particularly like the statement “This time however, the German president has said he will only delay his signature pending a decision on preliminary measures, according to Mooney.” Mr Mooney, would you mind letting us know the basis of this allegation? Or, maybe, would the “Kluwer Patent Blogger” mind and ask the FCC press office – in line with basic journalistic standards – whether Mr Mooney’s allegation is true? I trust that none of both will ever happen which pretty much tells you everything you need to know: This is just another example of the “Kluwer Patent Blogger” spreading plain “Team UPC” propaganda.

      1. Thank you, LightBlue.

        1) Where in this piece do you find any official confirmation of said statement?

        2) Since when is Bristows (replace at your convenience with a different pro-UPC outlet) a trustworthy source?

        Again: Contact the FCC press office and ask for confirmation that said allegation is true. I dont hold my breath that this will happen.

        1. https://www.faz.net/aktuell/wirtschaft/upc-in-karlsruhe-verfassungsklage-blockiert-abermals-einheitspatent-17144279.html

          Die Einführung des europäischen Einheitspatents, das Unternehmen Zeit und Geld sparen soll, stockt erneut wegen Verfassungsbeschwerden in Deutschland. Das Bundesverfassungsgericht hat Bundespräsident Frank-Walter Steinmeier gebeten, mit der Ausfertigung des notwendigen Gesetzes zu warten, bis über einen Eilantrag entschieden ist, wie ein Gerichtssprecher am Mittwoch auf Anfrage mitteilte. Eine Sprecherin des Bundespräsidenten erklärte, dieser werde der Bitte nachkommen. „Wir warten nun das weitere Vorgehen des Bundesverfassungsgerichts ab.“

          1. So, do I see it right, that the President’s spokesperson explains that the President has reassured the Constitutional Court that he is certainly not going to sign while the court is still deliberating. Mr Mooney reports this statement of position as that the President is going to delay his signature “only” until the court finishes deliberations.

            Not sure whether including the word “only” is legitimate, or something which these days goes by the name “spin”.

            It reminds me of the two sides of the story of what Queen Elizabeth II thinks about Meghan’s naming her new-born daughter with her great grandmother’s pet name, Lilibet. Proud father Harry reports that he ‘phoned his granny in advance, to let her know the choice of name, and that Granny didn’t veto it.

            But that’s not the same as the Queen giving the name her blessing, is it Harry, Meghan, Mr Mooney?

          2. May I remind you that the statement in question is – my emphasis addded – “This time however, the German president has said he will only delay his signature pending a decision on PRELIMINARY MEASURES, according to Mooney.”

            Please check what the differences are between FCC proceedings on the merits with and w/o a request for preliminary measures.

            I doubt that the Federal President has limited his consent not to sign to “a decision on preliminary measures” and also, that the court would accept such limitation.

            “Kluwer Patent Blogger”, any news from the FCC press office?

        2. @MaxDrei: Thanks, I was going to write something similar…

          Actually, according to the article:
          “This time however, the German president has said he will only delay his signature pending a decision on preliminary measures, according to Mooney.”

          So, taken at face value, Mr. Mooney alleges, that the President indicated he would sign the bill when the court has decided on preliminary measures irrespective of what the court decides…

          I am quite sure that the President did not say something like this….

  11. I fully support Max Drei’s last §. It should be made clear that the UPC is not there to help European industry, and even less European SMEs. It is to help internationally industrial actors helped by internationally acting lawyer firms like that of Mr Mooney and its friends.

    Opening the UPC is opening a single point of attack for all those institutions to make direct attacks on European industry much easier! At the same time some people would be able to fill their already deep pockets, and for this, any means can be justified.

    Lobbyism at its best!

  12. Mr Mooney’s dilemma (shared by many of his friends) is that he has only a superficial idea of German constitutional law and how the BVerfG operates in practice, their ignorance being written plainly across pieces like this. According to sec. 93(3) BVerfGG, the German UPC ratification act can be challenged in court within one year from its entry into force or the time is was issued which happened on 18/12/2020. Would it really make sense for the BVerfG to decide before that time limit has expired and invite new complaints (which might be filed anyhow, preferably shortly before the lapse of said time limit)? Any sensible and sober person would not expect anything from the BVerfG on the new UPC complaints prior to 18/12/2021.

    1. especially if there are more urgent cases, this one has already been treated urgently once, and besides the decision also contained comments the legislative nor executive did comment upon themselves….
      This case has therefore not been put on the “Lügenliste” (cases foreseen for 2021).

      Let’s see if one of the pending DG3/EPO cases makes it this year…

  13. Earlier this month, the UK has been given the green light to start the process of joining the CPTPP. The CPTPP has a chapter on IP rights, including various “patent provisions”. For example, the CPTPP requires a “grace” period for disclosures made by the the patent applicant or by a person that obtained the information from patent applicant. Will it be enough to implement such a grace period only for national, i.e. UK patents, or will this require amendment of the EPC so that any European patent (application) pending/granted for UK are subject to such a “grace” period? Another CPTPP provision (currently suspended) requires availability of a patent term adjustment in case of an unreasonable granting authority delay, this very likely would also require amendment of the EPC.

    UK’s process of joining the CPTPP will raise new patent issues and dealing with these issues might overshadow any still existing effort/focus in enacting the UPC.

    1. How interesting, MN. Of course the UK used to have a grace period before it conformed its law to the EPC in 1977. Perhaps we shall soon see the UK restoring to force the provisions of its Patents Act 1949, as part of its grand plan to resurrect the glories of its past thereby to re-create a “Global Britain” competitively fit for a bracing future.

      Or perhaps the UK is banking on its diplomatic powers of persuasion being strong enough to create a domino-turning momentum and convince the other 37 Member States, one by one, to conform the EPC to the patent law of the CPTPP.

      Otherwise, this looks to me like another case of the UK falling between two stools, thinking it can have its cake and eat it too.

    2. A grace period under the EPC would indeed require amendment of the EPC, but a grace period under national law for patent applications filed outside the EPC route does not prima facie look to be incompatible with the EPC.

      Several other EPO member states have grace periods for patents under national law (Estonia, Turkey, Albania, San Marino) so there seems to be precedent here if the UK also wishes to implement one.

      1. Q, I’m grateful. You prompted me to think about it some more.

        Now that the UK is out of the EU, why shouldn’t the UK remain an EPC Member State but also amend its domestic law of patents to re-introduce a grace period? I don’t yet see anything to stop it.

        Opinion has always been divided, on the merits of a grace period. I for one would enjoy a reinvigoration of that age-old debate, prompted by a “Top Six” EPC Member State proposing to bring back a grace period, thereby to displace the Old World of First to File (or First to Invent) and usher in a new world of “First to Publish” . How about that, to turbo-charge the promotion of progress within the useful arts? Judging by the geographical spread of the availability of a grace period, only the governments of Old Europe would be against it.

      2. Q, in my opinion, Art. 64(1) EPC prima facie renders a grace period under national law for patent applications filed outside the EPC route incompatible with the EPC.

  14. “Or perhaps the UK is banking on … convince the other 37 Member States … to conform the EPC to the patent law of the CPTPP”

    The required amendments to the EPC: Art.55 EPC – introducing a general grace period for disclosures (Non-prejudicial disclosures) -, and Art.69 EPC – introducing patent term adjustment in case of unreasonable delays at the EPO – are “pro-patent”, pro-inventor, and, in and of themselves, worth of consideration.

    Like TRIPS, the patent provisions in CPTPP (USMCA) are perhaps best seen as carefully discussed and agreed upon “best-practice”, and not as some “imperial” idiosyncratics imposed on vassal parties.

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