Our last blog entry, UPC: four reasons on why the PPA is not legally in force, published on 21 April 2022, seems to have touched a nerve, as attested by the unprecedented number of comments received, for which this author is very grateful. Some comments were supportive, while others expressed disagreement.

In this blog, we will focus on the criticisms received from the penumbra of the UPC Preparatory Committee. As will be shown below, these criticisms further confirm that the project to carry the UPC forward after Brexit without amending the treaties is at odds with very basic principles of public international law.

1. A “binding confirmation” by the General Secretariat of the EU Council caused the PPA to come into force with “binding effect”

The principal – and surprising – criticism of the interpretation put forward in our previous blog is that the General Secretariat (the “GS”) of the Council of the European Union, which is the depositary of the “Protocol to the Agreement on a Unified Patent Court on provisional application” (the “PPA”), has made an allegedly “binding confirmation” that Austria’s ratification of the PPA triggered its entry into force. This criticism makes reference to the allegedly “binding effect of its confirmation”, meaning the “confirmation” by the GS.

This criticism ignores a very basic concept in public international law, which is that a depositary of an international treaty does not have the power to decide whether or not that international treaty has come into force. According to art. 77.1(f) of the Vienna Convention on the Law of Treaties (the “VCLT”), the functions of the depositary are much more limited, that is, to “informing” the states entitled to become parties to the treaty:

(f) informing the States entitled to become parties to the treaty when the number of signatures or of instruments of ratification, acceptance, approval or accession required for the entry into force of the treaty has been received or deposited;

Obviously, “informing” the other states entitled to become parties to the treaty presupposes that the depositary will have formed its own view as to whether or not the conditions required for the entry into force of the treaty have been fulfilled. But this opinion is as good or bad as the opinion of any other state entitled to become a party to the treaty. The VCLT simply does not invest the depositary with competence to make a final determination of the entry into force of the treaty, let alone a determination that is binding on the other states entitled to become parties to the treaty and/or any other relevant bodies (e.g. courts).

To sum up, those who try to defend the legal viability of the UPC without amending the treaties after Brexit not only read into art. 3 PPA and art. 89 UPC Agreement (“UPCA”) meaning that is not there, they also read art. 77 VCLT as saying something that it does not actually say.

2. No other body is competent to “decide” on the question of the entry into force of the PPA

The second criticism is that, supposedly, no other body is competent to “decide” on the question of the entry into force of the PPA.

This again ignores the fact that the depositary of an international treaty – in our case, the GS – is simply not competent to “decide” whether or not the PPA has come into force.

The second criticism further alleges that the Court of Justice of the European Union (the “CJEU”) lacks competence to express an opinion on this issue, as the PPA is not an EU act but part of an international treaty system (i.e. the UPC system). In our opinion, in view of the intimate relationship between Regulation 1257/2012 (the “Regulation”) and the UPCA, the fact that the PPA is not an EU act but an international treaty is not the end but rather the beginning of the debate regarding the competence of the CJEU. The second criticism loses sight of the fact that the architects of this project made the applicability of the Regulation subject to the entry into force of the UPCA (art. 18.2 of the Regulation). The CJEU thus may have a say on the PPA and, even more clearly, on art. 89 UPCA, as the date of applicability of the Regulation depends on the interpretation of art. 89 UPCA. And nobody would dare make the slightest suggestion that the Regulation is not an EU act.

Another thread of the second criticism is that the International Court of Justice (the “ICJ”) is allegedly not competent either, because this would require the contracting member states to have accepted the ICJ’s jurisdiction. This argument loses sight of the fact that art. 173.2 of the European Patent Convention (“EPC”), for example, envisages the resolution of disputes on the application or interpretation of the EPC by the ICJ, which would of course require the parties to the dispute to accept its jurisdiction. As it happens, all the contracting states that have consented to be bound by the PPA, except for France and Slovenia, have accepted the ICJ’s jurisdiction, so the ICJ would indeed have jurisdiction to decide a case between the other contracting states regarding the scope of art. 3 PPA.

3. The risk of being caught is low and, in any event, by the time one could be caught, the architects of this project will allegedly already have crossed the Rubicon

The third criticism against our last blog entry builds from the inaccurate premise that art. 89 does not require the UK’s ratification for the UPCA to come into force, suggesting that once the UPCA comes into force, having failed to comply with art. 3 PPA will become “an obsolete question” because by then “the Rubicon has already been crossed.” Two points on this:

First, in this author’s respectful opinion, the proposition that someone driving late at night should not worry about running a red light because the risk of being caught by the police is low is not a very inspiring proposition. This even more so when the CJEU, in Opinion 1/2009, which found the first draft of the agreement to be incompatible with EU law, hinted that the future patent court may be called to resolve cases applying the general principles of EU law (par. 78), which clearly include respect for the rule of law, even late at night.

Second, from the perspective of public international law, it is clear that unless the UPCA is amended, this project, post-Brexit, will in fact drown in the Rubicon. This is because when drafting art. 89 UPCA, the negotiators chose a “static” parameter to define the trigger of the entry into force, i.e. the ratification of thirteen Member States “[…] 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 […].” The third criticism does not take into account that one of the crucial phases in the process of concluding any international treaty is the so-called “authentication of the text” (art. 10 VCLT). Once “authentication” has taken place, either you take it (i.e. sign and eventually express consent to be bound by the treaty) or you leave it. As everybody knows, what was signed on 19 February 2013 was an international treaty (the UPCA) art. 89 of which clearly states that it would come into force once, among other requirements, the three Member States in which the highest number of European patents had effect in 2012 had ratified it. As everybody also knows, these three Member States are Germany, France and the UK. This is further confirmed by the interpretation of art. 89 in the context of art. 7(2) UPCA and art. 3 PPA and art. 18(1) of the Protocol on Privileges and Immunities (“PPI”), which mention Germany, France and the UK explicitly. To sum up, the proposition that what was signed on 19 February 2013, just after Brexit, was no longer this but a different thing is at odds with very basic principles of treaty law.

Therefore, if a company is sued for patent infringement not before the courts of the country determined by the judicial competence criteria laid down in Regulation 1215/2012, but before the UPC, and that company questions the jurisdiction of the UPC on the grounds that the criteria set forth in art. 89 UPCA for its entry into force have not been fulfilled, judges will have to resolve the thorny legal issue that politicians, to avoid reopening a can of worms, are trying to sweep under the rug. And, for the reasons explained above, from the perspective of public international law, the answer is very clear. We should add, as an aside, that politicians are not being very fair to future UPC judges, who will find themselves in the difficult position of having to indirectly decide when their own jobs came into force.

This is only the tip of the iceberg hiding under the waters of the Rubicon. For example, according to art. 13 of the Rules of Procedure, the claimant must mention in the statement of claim, among other details, “an indication of the division which shall hear the action [Article 33(1) to (6) of the Agreement] with an explanation of why that division has competence”. If the UPCA is not amended post-Brexit how can a claimant justify the competence of the Munich or Paris seats of the Central Division to hear cases involving a patent in the field of chemistry, for example? Pursuant to Rule 19.1(b), the defendant will be able to question the competence of the division indicated by the claimant. In view of the clarity of art. 7(2) and Annex II of the UPCA, what are UPC judges going to do to address the problem that politicians prefer to sweep under the rug, look elsewhere? This would not do any good to a jurisdictional system that, as the CJEU highlighted in par. 78 of Opinion 1/2009, is expected to apply the general principles of EU law, among which the principles of legal certainty and respect for the rule of law are prominent. One might argue that, from the defendant’s perspective, having to litigate in Munich or Paris instead of in London would not make much of a difference. Really? Then what’s the purpose of having a Regulation (i.e. Regulation 1215/2012) lay down detailed rules to assign jurisdiction to the courts of different Member States?

4. Ratification is not the only procedure envisaged in the PPA for expressing consent

The fourth criticism is that art. 3 foresees possible ways other than ratification to express consent to be bound by the PPA (for example, “approval” or a “unilateral declaration”).

This is correct. However, the fact remains that art. 3 requires Germany, France and the UK to have expressed their consent for the PPA to come into force and, for reasons of which we are all well aware, the UK’s consent is no longer there. As a result, it is simply undisputable that the conditions for the PPA to come into force have not been fulfilled, notwithstanding the messages put about by the Preparatory Committee and the GS to pull the wool over the eyes of UPC aficionados and to try to minimise the fundamental legal obstacles raised by Brexit, which cannot and should not be minimised.

5. Due to the lack of transparency of the EU Council, its reasons are unknown, but one can try to guess them using a crystal ball

5.1       The EU Council is not obliged to be transparent

One of the commenters who kindly shed some thoughts on our last blog entry argued that the GS has not disclosed the legal reasons why it considers that the PPA has come into force and added: “However, such information is not foreseen in the PPA and the UPCA and, therefore, is not necessary for the binding effect of its confirmation to take effect.”

As is well known, transparency is a value that ranks very highly on the CJEU’s agenda. Clearly, it does not seem to rank so highly to the GS. Readers who have followed the genesis of the UPC project will remember the infamous “footnote 23” incident. To cut a long story short, in an Opinion of the Council Legal Service of 21 October 2011 analysing the compatibility of the draft UPCA with Opinion 1/09, it deleted footnote 23 to prevent European citizens from learning the reasons why the Legal Service had serious doubts regarding the compatibility of the UPCA with Opinion 1/09. It is worth recalling that, in par. 44, it concluded that “Indeed, as long as the UPC will remain formally separate from the national courts, it may still be considered by the Court as affecting ‘the very nature of the law established by the Treaties‘.”

Taking account that, as mentioned, the GS seems to have again decided that European citizens are not sufficiently important to hear its legal arguments, our commenter has been obliged to speculate on the possible legal arguments that the GS might have in mind. This author is truly grateful to those who have tried to use a crystal ball to shed light that, in a democratic society, one would expect to receive from the relevant institutions (in this case, the EU Council). The comments received, which have shared very valuable thoughts that had not surfaced to date, will be briefly discussed below.

5.2       The GS may have taken into consideration art. 2(a)(v) of the EU–UK Withdrawal Agreement and art. 18 VCLT

The first argument is based on art. 2(a)(v) of the EU–UK Withdrawal Agreement (“EU–UK WA”) and art. 18 VCLT, which states that “a State is obliged to refrain from acts which would defeat the object and purpose of a treaty when: (a) it has signed the treaty or has exchanged instruments constituting the treaty subject to ratification, acceptance or approval, until it shall have made its intention clear not to become a party to the treaty; or (b) it has expressed its consent to be bound by the treaty, pending the entry into force of the treaty and provided that such entry into force is not unduly delayed.” Two points on this:

First, from the perspective of the UPCA, the EU–UK WA is “res inter alios acta“. The rights and obligations deriving from the EU–UK WA concern the EU and the UK exclusively. They have no bearing on the agreements reached by the contracting parties to another international treaty (such as the UPCA) and/or its PPA.

Second, in the absence of the further explanations that the GS should provide, this author does not quite understand the reference to art. 18 VCLT. This article surely cannot be understood to mean that a sovereign state that has ratified an international treaty is prevented from withdrawing its ratification before the treaty has come into force, a proposition that, from the perspective of public international law, would raise many eyebrows. The fact is that the UK withdrew its ratification, and as far as we are aware, nobody has claimed that the UK is in breach of the obligations imposed by art. 18 VCLT.

5.3       From the perspective of the remaining Member States, the UK’s departure is irrelevant

Another argument is that, from the perspective of the remaining Member States which are contracting parties to the UPC, the departure of the UK, which had a predominant role in designing the project, has now become irrelevant. Supposedly, “[n]one of the other signatory states has expressed that the UPCA is of no interest to them after the UK has ceased to participate […].”

This argument ignores the fact that, to be able to express consent to be bound by the UPCA, contracting states had to request parliamentary approval. It is impossible to know if Brexit is irrelevant to those national parliaments because nobody has asked them. This is one of the main sources of the democratic flaws of the attempt to carry the UPCA forward in spite of Brexit, without amending the treaty, which would of course require national parliaments to be heard.

There is a possibility that the Dutch or Italian parliaments, for example, might not find the idea of splitting the London seat of the Central Division between Paris and Munich very fair, regardless of France’s and Germany’s generous eagerness to stretch their respective seats to accommodate the London seat. There is also a possibility that national parliaments might consider that, after Brexit, the UPCA is no longer advantageous to small and medium-sized enterprises. There is also a possibility that, if the UPCA were rebalanced to accommodate the concerns of important Member States that were left out, such as Spain, the departure of the UK could be balanced by the arrival of other such Member States.

Prof. Thomas Jaeger, Chair in European Law at the University of Vienna, the city where the VCLT was born, recently wrote that “While the system was never ideal, it is today more questionable than ever – both as regards its democratic legitimacy as well as its ability to support innovation and growth in the international market and to answer to modern socioeconomic challenges” (GRUR International, 00(0), 2021, p. 2). It is good to see that someone has finally dared to voice what almost everybody in disinterested circles thinks.

In life, trying to keep everything for oneself, which is the direction in which the UPCA appears to be going, sometimes results in ending up with nothing. Or, if we may put it another way, it can result in one ending up drowned in the Rubicon.

5.4       The GS might have considered that arts. 31 and 32 VCLT allow one to read Germany, France and Italy in the place of Germany, France and the UK

The next speculation regarding the possible legal arguments that the GS might have in mind is based on arts. 31 and 32 VCLT. These articles allegedly allow one to read Germany, France and Italy where the agreements implicitly point to Germany, France and the UK (art. 89 and art. 7(2) UPCA) and even mention them explicitly (art. 3 PPA and art. 18(1) PPI which, coming later in time, form part of the “context” that art. 31.2 VCLT requires taking into account).

According to our commenter, when drafting art. 3 PPA, the contracting states “[…] mistakenly believed to express this concordance by expressly naming the three states which indeed qualified for Art. 89(1) UPCA at the time of the PPA’s conclusion.” Interestingly, this alleged “mistake” only seems to have emerged after Brexit. Or, to put it another way, it seems that if Brexit had not taken place, there would not have been a mistake. In reality, there is no such mistake because art. 3 PPA and art. 18(1) PPI say exactly the same thing as art. 89 UPCA, what absolutely everybody meant them to say, that is, that the entry into force of the UPCA and the two later agreements would require the consent of Germany, France and the UK.

In relation to art. 31, to avoid unnecessary repetition, we refer to the arguments made in our last blog entry. Here, it will be sufficient to recall that, as the Permanent Court of International Justice already highlighted more than 100 years ago in the Opinion on the Competence of the ILO to Regulate Agricultural Labour:

If there were any ambiguity, the Court might, for the purpose of arriving at the true meaning, consider the action which has been taken under the Treaty.”

On the contrary, when there is no ambiguity, there is nothing to be interpreted.

Moving on to art. 32 VCLT, which reads as follows:

Supplementary means of interpretation

Recourse may be had to supplementary means of interpretation, including the preparatory work of the treaty and the circumstances of its conclusion, in order to confirm the meaning resulting from the application of article 31, or to determine the meaning when the interpretation according to article 31:

(a) leaves the meaning ambiguous or obscure; or

(b) leads to a result which is manifestly absurd or unreasonable.

Our commenter, based on this article, argues that “What the VCLT definitely wants to avoid is arriving at an interpretation of a treaty clause which would lead to manifestly absurd and unreasonably results.” The commenter goes on to say that “[…] it would be manifestly absurd and unreasonable within the meaning of Article 32(b) VCLT to assume that, while the UPCA itself can come into force without the UK, the PPA’s entry into force would require a participation of the UK which the UK refused.”

To begin with, the argument ignores the fact that, according to the case law of international courts, where the ordinary meaning of the words is clear and makes sense in context, recourse cannot be made to so-called “supplementary means of interpretation”, which are the means that the VCLT enshrined in art. 32. The International Court of Justice staked out this principle many decades ago, in the Opinion on the Competence of the General Assembly for the Admission of a State to the United Nations:

The Court considers that the text is sufficiently clear; consequently it does not feel that it should deviate from the consistent practice of the Permanent Court of International Justice, according to which there is no occasion to resort to preparatory work if the text of a convention is sufficiently clear in itself.”

Consequently, in view of the clarity of the text used by the contracting states in art. 3 PPA, there is simply no room for recourse to art. 32 VCLT.

In any event, if the contracting states had not intended art. 89 UPCA to implicitly mean France, Germany and the UK, and art. 3 PPA and art. 18(1) PPI to explicitly mean France, Germany and the UK, what would have been “manifestly absurd or unreasonable” are two things. First, choosing the year preceding the signing of the UPCA (i.e. 2012) as the “photo finish” for determining which three countries’ ratification would be required for the UPCA to come into force. Second, drafting art. 3 PPA and art. 18(1) PPI the way they were drafted. In short, it would be not fair, let alone seemly, to blame the interpreter for maintaining allegedly “manifestly absurd or unreasonable” interpretations when interpreting these agreements as saying what the contracting states, counselled by an army of legal advisers, chose them to say.

In any event, the argument discussed here is based on the premise that the UPCA may come into force without the ratification of the UK which, for the reasons mentioned above, does not hold water.

5.5       The GS might have reached the conclusion that, in the end, the “Interpretative Declaration” discussed by the Preparatory Committee is not necessary

The last argument suggested that what the GS has in mind is that, by “confirming the PPA’s entry into force”, it may have considered that the “Interpretative Declaration” suggested by the Preparatory Committee, although possibly useful in political terms, was not necessary for legal reasons.

There is a possibility that this might have been the case, or it might not. For obvious reasons, only transparency could tell us. Suffice it here to recall that the GS, as depositary of the UPCA and the PPA, is not vested with any power whatsoever to decide when the UPCA, the PPA and/or the PPI have come into force.

6. The fear of “ordinary” European citizens

Clearly, what is hidden behind the stubborn and, one should add, imprudent determination to try to move the UPC wreck ahead without amending the UPCA is the fear of reopening a democratic debate that would have to involve national parliaments, where European citizens are represented.

A few years ago, this author attended the opening ceremony of the academic year of a Spanish university, where an EU Commissioner for the Internal Market kindly agreed to give the keynote speech. When asked what was, in his opinion, the main threat to the construction of the EU, his answer was:

The opinion of ordinary people

Unfortunately, he did not explain how to draw the line between “ordinary”, “extraordinary” or any other type of people. Nor did he explain why, in a modern democracy, the opinion of “ordinary” people should count less than the opinion of those who consider themselves to be “extraordinary”.

Fortunately, democracies are based on the opinions of people from all walks of life. If those who include themselves in the “extraordinary” group feel that “ordinary” people are going in the wrong direction, they may try to inform them better. Hiding information from them and trying to avoid amending an international treaty to prevent national parliaments, where “ordinary” people are represented, from working to devise a more balanced UPC, and/or a UPC better equipped to meet the needs of small and medium-sized enterprises, is certainly not in line with the general principles of EU law that the CJEU, so disliked by the architects of the UPC, has always urged us to cherish.

7. Conclusion

In conclusion, as mentioned in the introduction, this author is truly grateful for the positive and negative comments received from many commenters, for whom we have the deepest respect. However, for the reasons explained above, none of those comments affect a single building block of the four reasons provided in our last blog entry on why the PPA is not legally in force.


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Kluwer IP Law
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27 comments

  1. Well said, Mr Montana.
    But I fear that you may ultimately be mistaken on one small but crucial point.

    Your screed appears to be premised on the assumption that the entry into force of the UPC is a matter to be decided by the “power of logic”.

    It seems far more likely to me that we are dealing with something which will ultimately be decided by the “logic of power”.

  2. The keynote speech of said EU Commissioner for the Internal Market reminds me of another speech, probably from the same Commissioner, who explained in FRENCH to an INTERNATIONAL audience how nice it is that unitary patents do not have to be translated.

  3. For some reason, the counterarguments presented in the above post do not discuss the arguments that I presented to show that the Protocol on Provisional Application (PPA) of the UPC Agreement has entered into force in a legally correct manner.

    In view thereof, I believe that it is important to restate these arguments that are based on well-established principles of EU law supported by various CJEU decisions.

    In view of the primacy of EU law, anything in the PPA and the UPC Agreement itself that is in violation of EU law is null and void.

    The primacy of EU law does not follow from a provision in the UPC Agreement. Instead, the provision of EU law in the UPC Agreement merely restates a key feature of EU law since the very beginning of the EU, see e.g. the CJEU decisions

    • C 26/62 Van Gend & Loos (https://eur-lex.europa.eu/legal-content/EN/TXT/?uri=CELEX%3A61962CJ0026):
    “The European Economic Community constitutes a new legal order of international law for the benefit of which the States have limited their sovereign rights.”

    • C 6/64 Costa v E.N.E.L. (https://eur-lex.europa.eu/legal-content/EN/TXT/?uri=CELEX%3A61964CJ0006):
    “By contrast with ordinary international treaties, the EEC Treaty has created its own legal system which, on the entry into force of the treaty, became an integral part of the legal systems of the Member States and which their courts are bound to apply.
    By creating a Community of unlimited duration, having its own institutions, its own personality, its own legal capacity and capacity of representation on the international plane and, more particularly, real powers stemming from a limitation of sovereignty or a transfer of powers from the states to the Community, the Member States have limited their sovereign rights and have thus created a body of law which binds both their nationals and themselves.”

    The reasons that only EU states can join the UPC Agreement are as follows:

    1. Under the AETR decision C 22/70 of the EU Court of Justice (https://eur-lex.europa.eu/legal-content/EN/TXT/?uri=CELEX%3A61970CJ0022), each time the EU, with a view to implementing a common policy envisaged by the Treaty on the Functioning of the EU, adopts provisions laying down common rules, whatever form they may take, the Member States no longer have the right, acting individually or even collectively, to undertake obligations with third countries which affect those rules or alter their scope.

    The UPC Agreement comprises several aspects that touch EU law, e.g. the EU regulations on Supplementary Protection Certificates, the EU IPR enforcement directive, and the EU regulations on the unitary patent. In view thereof, the EU states are prevented from entering into a UPC Agreement together with non-EU states like Switzerland, Turkey, Norway, and – after Brexit – the UK.

    This CJEU decision C 22/70 on AETR shows that already more some 50 years ago it was established that the above primacy of EU law results in a limitation for the EU states in their ability to conclude treaties.

    2. Under Opinion 1/09 of the EU Court of Justice (https://eur-lex.europa.eu/legal-content/EN/TXT/?uri=CELEX%3A62009CV0001), it is for the national courts and tribunals and for the Court of Justice to ensure the full application of European Union law in all Member States and to ensure judicial protection of an individual’s rights under that law. Consequently, the Member States cannot confer the jurisdiction to resolve disputes between individuals in the field of patents on a court created by an international agreement which would deprive those courts of their task, as ‘ordinary’ courts within the European Union legal order, to implement European Union law and, thereby, of the power provided for in Article 267 TFEU, or, as the case may be, the obligation, to refer questions for a preliminary ruling in the field concerned. However, it would be OK to confer such jurisdiction to a court that is like the Benelux Court common to a number of Member States, and situated, consequently, within the judicial system of the European Union, so that its decisions are subject to mechanisms capable of ensuring the full effectiveness of the rules of the European Union.

    As the draft agreement discussed in CJEU Opinion 1/09 intended to cover non-EU states like Switzerland, the draft agreement would establish a patent court outside the EU legal order that is incompatible with EU law. However, a patent court common to EU states only would be within the EU judicial system and thus compatible with EU law.

    Importantly, EU Regulation 542/2014 clarifies that the UPC is indeed a common court within the EU legal order, and thus OK under CJEU Opinion 1/09.

    For these reasons, participation of non-EU states in the UPC Agreement is a violation of EU law. Don’t blame me for the confusion caused by other people, unrelated to me, who maintained that a post-Brexit UK could still participate in the UPC. I strongly disagree to those other people, and I have never supported their views.

    So, since Brexit, UK participation in the UPC Agreement and its PPA is a violation of EU law. This means that

    – where the PPA requires a ratification by the UK, that requirement is null and void, so that it suffices for the PPA to enter into force that it has been joined by 13 states including Germany and France, and

    – where the UPC Agreement refers to London as a seat of a part of the UPC Central Division, such references are a violation of EU law that can be addressed by the UPC Administrative Committee under Article 87(2) UPC Agreement. The Administrative Committee could do so e.g. on 8 AM of the morning that the UPC Agreement enters into force, so that when at 9 AM the UPC opens its doors, it has a Central Division with seats that each have a clear jurisdiction laid down in the UPC Agreement.

    1. Leo, I am afraid that there is a serious hole in your logic.

      The UPCA and the PPA are both international treaties. It is not clear whether those treaties are consistent with the supremacy of EU law (indeed, the constitutional challenges in Germany asserted that they were not). This means that it cannot be assumed that those treaties do not violate EU law.

      If, in fact, the treaties DO violate EU law, the consequences would not be what you assert. This is because, for the reasons outlined below, there is also no legal basis for your assertion that “anything in the PPA and the UPC Agreement itself that is in violation of EU law is null and void”.

      The CJEU is the ultimate guarantor of the integrity of the EU legal system. It would therefore fall to the CJEU to decide what to do in the event that the UPCA, the PPA and/or any provisions of those treaties were found to be inconsistent with (the supremacy of) EU law. However, because the UPCA and the PPA are international treaties, the CJEU would not be competent to rule upon the validity of those treaties, or any of their provisions.

      To illustrate this point, consider the ruling in C 572/15, where the CJEU held that it was not even competent to rule on the validity of a provision of a treaty of accession to the EU.

      Thus, not even the CJEU would be capable of interpreting any provision of the UPCA or the PPA as being “null and void”. This means that the treaties must be interpreted (only) according to the principles of the VCLT. There is simply nothing in those principles that would support your desired (re-)interpretation of the UPCA and PPA.

      1. Dear Concerned Observer,

        The UPC Agreement and the PPA are treaties between EU member states, and their wording clarifies that they are meant to be treaties between EU member states only. The UPC Agreement itself states that it respects the primacy of EU law. Then Art. 30(2) VCLT applies: “When a treaty specifies that it is subject to, or that it is not to be considered as incompatible with, an earlier or later treaty, the provisions of that other treaty prevail.”
        In such a case, there is no reason why the CJEU would not have jurisdiction to rule on the effects of any lack of compliance of those treaties with EU law.
        But even without a CJEU decision, because of their EU Treaty obligations, the EU member states involved are bound to only apply the UPC Agreement and the PPA to the extent that they are compatible with EU law, and thus to refrain from applying provisions that are incompatible with EU law, such as the PPA provision that the PPA must be ratified by the UK, and the UPC Agreement provisions about a Central Division seat in London.

        The UPC Agreement is thus clearly different from an EU accession treaty, which is part of the EU’s primary law. The CJEU can indeed not rule on the validity of primary EU law.

        1. Leo, you are conflating the legal obligations of EU Member States with the interpretation of international treaties concluded by one or more of those states.

          EU Member States are indeed obliged to avoid contravening EU laws. But this does not prevent such contraventions happening. The situation regarding Poland and Hungary have made this abundantly clear.

          Thus, despite being obliged not to do so, one or more EU Member States are perfectly capable of signing and ratifying international treaties that do not comply with EU law. If this happens, the Commission (under Article 258 TFEU) or another Member State (under Article 259 TFEU) may bring the matter before the CJEU. The CJEU may then decide the matter, and instruct the Member State(s) concerned to “take the necessary measures” to comply with EU law.

          Thus, whilst the EU legal system may provide remedies for breaches of the Member States’ EU law obligations, NONE of this affects the interpretation of international treaties signed by those Member States.

          Whilst the UPC Agreement mentions the TEU and TFEU, it does not in any way indicate that the AGREEMENT (as opposed to decisions / actions of the Court that it establishes) is either “subject to” or “not to be considered as incompatible with” the TEU and/or TFEU. There is therefore no basis for (re-)interpreting the UPC Agreement based upon an assumption that it must be compatible with EU law.

          Regarding the alleged prohibition of the participation of non-EU States, I am guessing that you never agreed with arguments (made by certain of the UPC’s proponents between 2016 and 2019) that Brexit was no barrier to the UK’s participation in the UPC. In any event, I encourage you to consider the points made below regarding the manner (and uncertain legal effect) of the UK’s “withdrawal” of its ratifications.

          1. I am not a specialist in EU law, but this reading by Concerned Observer of the legal provisions applying to the existence and nature of the the UPCA is convincingly making sense to me.
            Something wonders me still, but sorry thta I am not an expert in EU law, I always was under the understanding that the UPCA was made possible between EU Member States because of a special provision of the TFEU allowing it. If that understanding is correct (but maybe that was a misunderstanding at my end), could it be that this link to the TFEU makes the UPCA also subject to EU law, then the CJEU competent to review its validity ?

          2. CJEU case law shows that provisions in treaties between EU member states that violate EU law are void. See the CJEU case law (e.g. C‑109/20, C‑638/19, C‑284/16, C‑109/20) on the validity of arbitration clauses in investment agreements: from the date that the states that are a party to those investment agreements have become EU member states, the arbitration clauses are no longer valid, and investors who invoke a violation of the investment agreement have to go to a regular court.

            Indeed, I have always believed that Brexit implies that the UK can no longer participate in the UPC. By withdrawing its ratification, the UK has nicely allowed the remaining UPC states to move on without violating EU law.

        2. Leo, the case law that you cite does not support your views. This is because there is nothing in the rulings of the CJEU relating to the INTERPRETATION of international treaties between EU Member States. Instead, the rulings simply recognise the supremacy of EU law, in particular over international agreements that are inconsistent with the EU legal order.

          C 109/20: NATIONAL legislation (based upon a clause in an international agreement) invalid due to inconsistency with Articles 267 and 344 TFEU

          C-638/19 P: competence of the Commission to take a decision under Article 108 TFEU

          C 284/16: an arbitration clause in an international agreement is precluded by Articles 267 and 344 TFEU, meaning that a national court is competent to decide a matter covered by that clause.

          It is interesting to consider how this line of case law might apply to the UPCA. This is because the case law would support the conclusion that a challenge (at a national court) to the jurisdiction of the UPC would be upheld by the CJEU if it could be demonstrated that the UPCA is inconsistent with the EU legal order. The result of this would be that a national court, and NOT the UPC, would be competent to hear the matter in question.

          Such a ruling would, of course, effectively kill the UPC. However, it would not require the CJEU to interpret (let alone reinterpret) the meaning of any provisions of the UPCA. All that the CJEU would need to do is to consider the practical effects of the UPCA and decide whether those are compatible with EU law.

          In the light of the above, I find it impossible to understand why you believe that any alleged inconsistency with the EU legal order would be somehow (automatically) remedied by reinterpretation of provisions of the UPCA (such as Art 7(2)) that have a crystal-clear meaning. I repeat, there is simply no legal basis for such a reinterpretation.

    2. Art 87(2) UPCA The Administrative Committee may amend this Agreement to bring it into line with
      an international treaty relating to patents or Union law.

      The EU-UK Brexit agreement is neither an international treaty relating to patents nor Union law, so Art 87(2) cannot be used to amend Art 7(2).

      Moreover, are you all sure that all UPC member states will agree on any possible amendment of Art 7(2)?

      For example, if Italy disagreed on such an amendment, then it could withdraw its ratification like UK did, so what would happen then? It’s not just Art. 87(3) but also Art. 89(1)…

      Not amending UPCA and the PPA before their (illegal) entry into force is an act of arrogance greater than Art. 89(1) itself (3 EU member states having veto power on the other EU states: is this democratic at all?).

  4. ARTICLE 89
    Entry into force
    (1) This Agreement shall enter into force […] 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 […]
    “Member State” is defined in Art 2(b) UPCA as EU Member State.
    In my opinion, the conditions required by Art 89 UPCA must be met at the date of entry into force. Thus, at the date of entry into force, the UK is no longer a Member State, and these three Member States are indeed Germany, France and Italy. QED

    1. Yes, provided that Italy does not withdraw its ratification like the UK did

  5. I wonder whether the Vienna Convention on the Law of Treaties (VCLT) as such applies to the UPCA. In James Crawford, Brownlie’s Principles of Public International Law (9th ed., OUP 2019) at 354 (footnote 6) it says: “Under Art.4, the VCLT only applies to treaties concluded between states all of which at that time were already parties to it. Since only 116 states are parties, this means in effect that the VCLT does not apply as such to most multilateral treaties. In practice,it is applied as customary international law in any event.” In my understanding France is not a party to the VCLT https://treaties.un.org/pages/showdetails.aspx?objid=080000028003902f That would mean that only those provisions of the VCLT that are accpeted under customary international law, apply to the UPCA. To my best knowledge the rules on interpretation pursuant to Articles 31, 32 VCLT are accepted under customry international law. However, I am not sure whether other rules of the VCLT, e.g. with respect to the termination of treaties (see the UK’s departure from the UPCA), are also part of customary international law. If this is not the case, it would be necessary to establish in the first place the applicable rules, e.g. regarding termination, in order to be able to come to valid conclusions with respect to a specific legal issue pertaining to the UPCA, e.g. the UK’s status regarding the UPCA.

    1. Article 56 VCLT

      Denunciation of or withdrawal from a treaty containing no provision regarding termination, denunciation or withdrawal

      1. A treaty which contains no provision regarding its termination and which does not provide for denunciation or withdrawal is not subject to denunciation or withdrawal unless:
      (a) it is established that the parties intended to admit the possibility of denunciation or withdrawal; or
      (b) a right of denunciation or withdrawal may be implied by the nature of the treaty.

      2. A party shall give not less than twelve months’ notice of its intention to denounce or withdraw from a treaty under paragraph 1.

    2. Interestingly, the political motivation resurfaced towards the end of the post and helped understanding the agenda of the opponents to the UPC project. It is all about the rule of law unless ES gets its share…

    3. An interesting point. However, even if the UPCA were to be interpreted using all of the principles under the VCLT, there are doubts about whether the manner in which the UK announced the withdrawal of its ratification was strictly correct (or legally effective).

      Of course, it could be “customary international law” to not apply the rules too strictly, and thereby force a state to participate in an international treaty that it clearly wishes to disavow. Who knows?

      In any event, this is all academic. There is no (independent) court that is competent to decide these matters.

      1. Since the General Secretariat of the Council is being paid to declare this treaty into force against its reading, a maladministration complaint could/should be filed at the EU Ombudsman.

        And if there is political support, such the European Commission and Mr Breton, supporting this gross violation of the “Rule of law”, this should be disputed in court, for example, in a court of a Member State signatory of the VCLT.

  6. I could not thank Mr. Montana enough for this post (and the previous one), being one of the few to give reasonned and substantiated arguments of possible issue on the UPC system, and here on the PPA specifically.

    If if I may add my two cents to the debate of the PPA, one thing that bothers me is the mere attempt of a PPA, provisional application of the UPC, as long as it has been taken only by a subset of the parties of the UPC (assuming it has even entered into force as contested by Mr. Montana).
    It is may be my private law education, but when a group of persons are bound by an agreement, how could a subset of those parties to the agreeement be allowed to decide that some part of the obligations of that agreement should enter into force at an early stage, while having legal effect for the time at which the agreement will fully enter into force for all parties thereof ?
    To try to give a UPC example in the present situation: let’s refer to the jugde nomination proceedings and the case of the Portugal.
    Portugal has signed and ratified the UPC (according to GS: https://www.consilium.europa.eu/en/documents-publications/treaties-agreements/agreement/?id=2013001&DocLanguage=en) but Portugal is NOT part of the PPA (same source: https://www.consilium.europa.eu/en/documents-publications/treaties-agreements/agreement/?id=2015056&DocLanguage=en).
    The fact that Portugal is not part of PPA is notably reflected on the fact that the Advisory Committee is not encompassing a PT member (since the list of the members of the Advisory Committee is public). Following the same logic, we may only assume that the Portugal has no member in the Administrative Committee either, since its list appears not to be public (if any has it, please feel welcome to share it)
    Thanks to the PPA, Administrative Committee is instituted and one of its main tasks is to nominate judges (Art.16(2) UPCA) for an apointement of 6 years (Art.3(6) of the Statute of UPC) prior to the entry into force of the UPCA. Further one of the main task of the early nominated judges of the first instance, if not the only one, would be to elect among them the president of the first instance court (Art 14(1) of the Statute of UPC) for an appointement of 3 years.
    For all this process of nomination and election before the entry into force of the UPCA, the Portugal will have no say, without an Administrative Committee member, as PT is not part of the PPA that instituted a provisionnal and partial Adminstrative Committee. Yet when signing and ratifying the UPCA, Portugal agreed on this proceeding including its involvement, and not this very same proceeding being decided between only a subset of contracting member of the UPCA not including it. In sum, during PPA, among others, president of the first instance court will be elected without participation of Portugal, and the effect of the nomination of this elected president will nonetheless last when the UPCA will enter into force…
    Trying to shorten the example : assuming that I with a group of friends, had decided to meet for a party at 8pm, during which an election of the king of the hill is supposed to take place. If a subgroup of these friends, not including me, sub-agree to meet early at 7pm and proceed to the election of the king of the hill of the party before 8pm, I may felt that the election is not exactly fair or legal (not that I wanted to be the king of the hill myself, because I am a state and not a person).
    And that is only to take one example, but I suppose that a all bench of other decisions are to be taken during PPA and that will have significant effect after (otherwise there is no use of such a PPA) :
    – Rules of Procedure (Art. 41 UPCA is subject to PPA) that will possibly be adopted by the Adminstrative Committee before UPCA,
    – Budget Committee and other budget decision among others
    – establishment of the patent mediation and arbitration centre which is then already established by virtue of the PPA, with its seats in Ljubljana and … Lisbon. Its rules and list of mediators may possibly be decided by parties of the PPA (including Slovenia) but not by Portugal (Art. 35(1), (3) and (4) UPCA are subjet to PPA).

    Then why the PPA is even at all legal, if it does involve all the Contrating Members having ratified UPCA (not to mention the ones that have signed and not yet ratified, e.g. Ireland) ?

  7. Assuming for the sake of my comment and question that the UPCA would be subject to EU law and the competency of the CJEU, how likely could it be that the CJEU may apply a “dynamic” interpretation of the A. 89 UPCA, i.e. an interpretation in light of the new context (Brexit) and of the will of the participating member states ?
    I was personally unaware of this type of interpretation, which may go against the initial intent of the legislator, until I saw it applied by the Enlarged Board of Appeal in decision G3/19.

    1. G3/19 is a farce. It applies a type of “dynamic” interpretation that was invented by the EBA for the sole purpose of delivering a result that was desired by certain individuals but that flew in the face of established EBA case law.

      The “dynamic” interpretation invented by the EBA was based upon an alleged “legislative intent”. The problem in G 3/19 is that the “intent” was demonstrated by a body (the AC) that was NOT the legislator for the provision in question. Thus, the alleged “intent” simply did not exist, at least not in the circumstances of the case.

      Personally, I find the concept of “legislative intent” to be highly problematic. This is because the intent of legislators is expressed in LEGISLATION, and in the preparatory materials leading to that legislation. Thus, where there is no “legislation” there can be no “legislative intent”. There can, however, be an attempt by a rule-making (as opposed to legislation-passing) body to circumvent the rules by acting as if it has legislative powers not granted to it under the EPC.

      Regarding your point that “the UPCA was made possible between EU Member States because of a special provision of the TFEU allowing it”, I believe that you are referring to Article 118 TFEU (https://eur-lex.europa.eu/legal-content/EN/TXT/?uri=CELEX%3A12016E118). That power was exercised by the European Parliament and the Council when it passed the EU Regulations governing unitary patents. As that power cannot be exercised by the Member States, I do not see Art 118 TFEU as any kind of gateway to a review by the CJEU of an international agreement (such as the UPCA) concluded by such Member States. In any event, the competence of the CJEU is limited to the matters defined in the TFEU, and does not include international agreements between Member States.

      1. “I do not see Art 118 TFEU as any kind of gateway to a review by the CJEU of an international agreement (such as the UPCA) concluded by such Member States.”

        The CJEU could review the legality of the brute force made in the 2014 regulation (Brussels 1 recast), which falsely said that the Benelux Court of Justice AND the UPC are ‘common courts’, which is false for the UPC and true for the Benelux Court, according to the CJEU caselaw.

        The question is how to escalate this question to the CJEU, and if the deadline has not passed already (2 months after publication in the Official Journal).

        As far as I have read, this was attempted in the first constitutional complaint in Germany, but the Constitutional Court put it aside saying they don’t deal with EU law problems, unless fundamental rights are involved.

        Normally when EU law questions are raised, the Court should escalate them to the CJEU.

  8. Coming now with the argument that the UPCA cannot be scrutinised under the VCLT is by no means convincing.

    Even in the accompanying notice for the second ratification of the UPCA by the German Parliament, the Federal Ministry of Justice mentioned that a declaration under Art 31/32 might be necessary for the “provisional” transfer of the duties allocated to London towards Paris and/or Munich.

    It might be possible to decide that IT replaces UK for the entry into force, but then a declaration under Art 31/32 VCLT it is certainly needed for the application of Art 89. This has been up to now been superbly ignored by the GS.

    In view of the crystal clear wording of Art 7(2) UPCA, a declaration under Art 31/32 VCLT can certainly not be used as far as the “provisional” transfer of the duties allocated to London towards Paris and/or Munich is concerned. It is difficult to see in how far it needs an interpreting declaration.

    In the UPCA as ratified London is mentioned expressis verbis as seat for one section of the central (?) division. No more but no less.

    I wonder by which legal gobbledygook Mr Steenbeck envisages this “provisional” transfer of duties. It is manifest that in its present wording the UPCA and the PPI/PPA are contrary to EU law

    If part of a ratified treaty is not in conformity with EU law, this part has to be amended and the amended version ratified anew.

    This does however not empower governments to come up with an “interpreted version” of the treaty so that are allowed to decide whatever they think fit just for the UPC to start.

    That Mr Montana comes from Spain does not alter in the slightest the pertinence of his comments and queries. What is at stake here is the rule of law and not what Spain wanted or not in order to participate to the UPC.

    As far as the CJEU is concerned it is to be hoped that it will not resort to something as ludicrous as a “dynamic interpretation” of its own case law just in order for the UPC to open its doors and works. It was bad enough at the EPO.

    I am waiting for the first defendant to argue when its comes to a PI to be executed in various member states to query the legality of the decision of the UPC.

    As in the UPCA it has been decided that it will also deal with national SPCs and in view of the numerous prejudicial questions raised by national courts on this topic, I am curious to see the reaction of the CJEU when the first prejudicial question on this topic will be forwarded by the UPC to the CJEU.

    We really live in interesting times and eventually it will have to be seen whether the UPC can go along as wished by all the lobbies supporting it.

  9. Juri Committee of the European Parliament – The Unified Patent Court after Brexit (March 2020)

    https://www.europarl.europa.eu/RegData/etudes/ATAG/2020/649575/IPOL_ATA(2020)649575_EN.pdf

    “…some consequences remain open and ultimately need a political decision:
    […]
    • In case that the UK wanted to quit the UPCA, the section of the Central Division of the UPC with responsibility for life sciences, chemistry and metallurgy cases with seat in London, will have to be moved. The London section would NOT be replaced automatically with another seat, as this would need an amendment of the UPCA by UNANIMOUS agreement of all other Contracting Member States.”

    1. The JURI Committee’s assessment raises another interesting point:
      “The problem is that Italy was not a signatory state in 2012 as it did not participate because of the restricted three language regime”.

      As I understand it, the JURI Committee is pointing to the Article 89(1) UPCA requirement for the deposits of instruments of ratification to include those of “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”. To me, this raises the question of whether there is a single, definitive year of “signature of the Agreement” and, if so, whether that is 2012 or 2016.

      Of course, revising and re-ratifying the UPCA would also solve this problem. But that will not happen because the architects of the UPC fear that such an exercise of democracy would at best further delay the arrival of, and at worst would kill, their pet project. Hence the strategy of pushing ahead regardless and kicking the can down the road with regard to serious questions regarding compliance with the rule of law.

      As recent developments regarding the Northern Ireland Protocol demonstrate, kicking troublesome cans down the road can have the effect of making it even harder to solve difficult problems. As I have previously commented, the UPC could effectively be killed by a CJEU decision in favour of a litigant challenging the jurisdiction of the UPC. If the UPC is “brought into force” according to the current plan, then is certain that such challenges will arise. Unless the architects of the UPC have a plan for persuading the CJEU not to apply its settled case law in connection with such challenges, it is hard to see how this will end in anything other than disaster.

  10. “It might be possible to decide that IT replaces UK for the entry into force, but then a declaration under Art 31/32 VCLT it is certainly needed for the application of Art 89. This has been up to now been superbly ignored by the GS.”

    They will ignore the problems of Art89, replacing UK by Italy, as they ignored the problems on the PPI and PPA.

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