Readers who have followed our last two blog entries and the vast number of comments received, will have seen the following two conclusions surfacing. First, although the UPC ‘s Protocol on Provisional Application, in reality, may not be in force, there is nothing to worry about because there are no police around. Second, there is nothing to worry about, either, in the crystal-clear wording of articles 7(2) and 89 of the UPCA, because the rule of law will be an accidental feature of the UPC edifice. The important thing will be the creative interpretations devised by a bunch of people holed up in a dark room with bullet-proof walls (rectius, transparency-proof) for the purpose of preventing ordinary European citizens and small and medium size enterprises from having a say on where the UPC should be heading after Brexit.

As a sidenote, may we recommend that readers peruse the exchange of views that followed our last blog (19 May 2022), on the primacy of EU law over international treaties or the other way round. Certainly, it is a fascinating topic that, as usual, the EU Council Legal Service tried to sweep under the rug when it initially deleted footnote 23 from its opinion of 21 October 2011 regarding the compatibility of the amended UPCA with Opinion 1/2009.

Today we will move on to a different topic, which is the removal of articles 6-8 (i.e. substantive patent law) from the text of draft Regulation 1257/2012 (the “Regulation”). As readers are well aware, the objective of removing substantive patent law from the text of the Regulation was to try to prevent the CJEU from getting its -to put it mildly- grubby little hands, on the new European patent with unitary effect. It is an irony of destiny that the Prime Minister who played such a crucial role in achieving that removal was leading a country that is no longer an actor in the UPCA theatre. In any event, the result of such removal is that the European patent with unitary effect will have anything but “uniform protection” and “equal effect,” as the effect and protection will be determined by the national law applicable to the particular patent at hand. In short, this means that, at least conceptually, different patents may have different protection and different effects, depending on whether the patent at hand is subject to, say, German or to Portuguese law. Under this light, the use of the expressions “uniform protection” and “equal effects” in article 3.2 of the Regulation is another of the very amusing features of this project. The same applies to article 5 (“uniform protection”), a title that, for the reasons explained elsewhere, appears to have been chosen by Groucho Marx (see “La Patente Europea con Efecto unitario y el Tribunal Unificado de Patentes: de la anhelada patente de la Unión Europea a la “descomunitarización” del Derecho Europeo de Patentes”, in Colección de trabajos en conmemoración de los 50 años (1963-2013) del grupo español de la AIPPI, Spanish Group of AIPPI (2015), p. 629-719.)

The great paradox of all this is that the only institution that would be able to bring in the “uniform protection” and the “equal effects” required by the Regulation for European patents with unitary effect is precisely the CJEU. We already flagged-out this alert for seafarers a few years ago (in “The Practical Consequences of the CJEU Judgment of 18 July 2013 Changing Its Doctrine on the Respective Competences of the EU and its Member States to Apply the TRIPS Agreement: Have We Seen the Tip of the Daiichi Iceberg Yet”?, in IIC (2017) 48:784-812).

As that article explains, in 2012, the European Commission was conspiring with the other political institutions and the EU Member States to remove, from the CJEU’s agenda, the ability to interpret “internal” patent law (i.e. original articles 6-8 of the Regulation). In parallel, the Commission was persuading the CJEU to take over the competency to interpret “external” patent law (e.g. TRIPS). It was successful, as shown by the Judgment of 18 July 2013, where the CJEU, in changing its previous long-standing doctrine, declared that it had competence to interpret TRIPS. As mentioned above, the great paradox of all this is that the EU political institutions and the Member States’ successful efforts at removing substantive patent law from the Regulation did not take into account that, notwithstanding these efforts, substantive patent law may end up on the CJEU’s desk through the backdoor, that is, through the interpretation of the patent provisions of TRIPS.

This is because, according to article 24(1) of the UPCA:

In full compliance with Article 20, when hearing a case brought before it under this Agreement, the Court shall base its decisions on: (a) Union law, including Regulation (EU) No 1257/2012 and Regulation (EU) No 1260/2012; (b) this Agreement; (c) the EPC; (d) other international agreements applicable to patents and binding on all the Contracting Member States; and (e) national law.”

The most significant of the ‘‘other international agreements’’ mentioned in letter (d) is precisely TRIPS.

The “external” patent law that falls within the interpretative competence of the CJEU includes not only the “enforcement” provisions of Part III of TRIPS, which have since then become “internal” patent law (i.e. Directive 2004/48), but also “substantive” patent law (i.e. Section 5 of Part II of TRIPS).

In turn, Art. 21 of the UPCA states that:

As a court common to the Contracting Member States and as part of their judicial system, the Court shall cooperate with the Court of Justice of the European Union to ensure the correct application and uniform interpretation of Union law, as any national court, in accordance with Article 267 TFEU in particular. Decisions of the Court of Justice of the European Union shall be binding on the Court.”

In conclusion, as announced in the title of this blog, the great paradox of the futile efforts at trying to keep the CJEU’s grubby little hands off “internal” patent law is that only those hands, when interpreting “external” patent law, will be able to bring the “uniform protection” and “equal effect” cherished by the Regulation.


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Kluwer IP Law
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14 comments

  1. Dear Mr Montañá,

    thank you for this analysis.
    I did not follow the TRIPS discussion at the ECHR, and now have some catching up to do.

  2. Someone could suspect the EPO to have influenced the decision of the European Commission in 2011 to NOT join the EPC, in order to avoid intervention of the CJEU in substantive patent law issues.

    The fact that the EPO has recruited Mdme Frohlinger in April 2012 might be interpreted by some as “pantouflage”, she was offered to finish her carreer at the EPO after the Commission bowed to the demand NOT to join the EPC.

    The EPO does not want the CJEU to intervene in its dirty independent kingdom, Aka Eponia.

  3. Miquel, I quite agree that the CJEU will likely have a significant influence on the development of UPC case law.

    However, before considering how the CJEU might rule on matters concerning “uniform protection” and “equal effect”, is there not a more fundamental question to answer? That is, because established CJEU’s case law could be seen to cast doubt upon pronouncements in the UPCA (and Regulation 524/14) that the UPC is “a court common to the Member States”, do we not first need to establish whether the UPC is indeed capable of making preliminary references to the CJEU under Article 267 TFEU?

    I am losing count of the number of questions relating to the UPC that are highly significant to how (or even whether) the UPC will operate, but where there is huge uncertainty regarding how those questions might be answered. Indeed, in view of AO’s comments on the previous thread, it seems to me that the list now includes questions regarding the constitutionality of “forced intervention” under Rule 316A UPCA.

    Being dragged into proceedings at the UPC against one’s will reminds me of another question that has been bothering me. The question is: how might challenges to the validity of opt-outs (under Article 83(3) UPCA) be resolved? The reason that this bothers me is that:
    – my understanding is that the whole point of filing an opt-out is to escape the jurisdiction of the UPC; but
    – if, as I understand will be the case, the validity of an opt-out can be challenged, even the proprietor of a patent for which a valid opt-out has been filed could be drawn into an action (however short) before the UPC.

    This makes me question whether it can possibly be right for challenges to the validity of opt-outs to be determined by the UPC. Indeed, it seems to me that:
    – challenges to the validity of opt-outs are NOT included in the list of actions in Article 32(1) UPCA as falling within the exclusive competence of the UPCA; and
    – according to Article 32(2) UPCA, the national courts of the Contracting Member States must therefore remain competent for such actions.

    I would have thought that, in principle, a court established by an international treaty cannot expand its jurisdiction / competence beyond that afforded to it by the treaty. If this is correct, then even if it was an inadvertent oversight to omit actions regarding opt-outs from Article 32 UPCA, this lack of competence can only be resolved by amendment of the UPCA (and NOT by amendment of the Rules of Procedure).

    In any event, it seems to me that the national courts of the Member States ought to be perfectly capable of determining the validity of opt-outs … much as they are perfectly capable of interpreting and applying other international treaties relating to patents (such as TRIPS and the EPC) that their governments have signed and ratified.

  4. Having seen the complete mess that the CJEU has made of the law on SPCs, I shudder to think what might happen if it were to get its hands on substantive patent law.

    Under the EPC and the established case law of the Boards of Appeal, we have a (mostly) settled, (mostly) consistent and (mostly) sensible approach to the most common substantive issues. Unless the CJEU undergoes wholesale reform to introduce a specialist IP chamber with appropriate legal and technical expertise, it should be kept well away from such matters.

    1. “Unless the CJEU undergoes wholesale reform to introduce a specialist IP chamber with appropriate legal and technical expertise, it should be kept well away from such matters.”

      That might be an option once the UPC has been recognized a fake common court by the CJEU.

      Everybody understands that the Benelux Court of Justice is a common court because national courts (which are the guardians of EU law together with the CJEU, dixit opinion 1/09) are in charge, while with the UPC those national courts are removed.

      Politicians had a different reading of art 19 TEU, considering that compliance with this article could be satisfied by drawing a link between the UPC and the CJEU for compliance with EU law issues.

  5. Let’s not forget that the EU Regulation on the unitary patent violates Art. 142 EPC.

    Article 142 Unitary patents
    (1) Any group of Contracting States, which has provided by a special agreement that a European patent granted for those States has a unitary character throughout their territories, may provide that a European patent may * ONLY * be granted jointly in respect of all those States.

    Thus, under Art. 142 EPC (as e.g. in CH/LI), proprietors cannot choose between the unitary patent and national validations in the UP states.

    1. Robot: the manner in which the Participating Member States have failed to harmonise their laws will also lead to gross violations of Article 64(1) EPC.

      The EPC demands that, in any given country in respect of which “a European patent” is granted, that patent SHALL, with the possible exception of protection for the direct product of a process, confer on its proprietor … THE SAME RIGHTS AS would be conferred by A NATIONAL PATENT.

      However, as and when the UPCA comes into force, there could be up to five types of patent in any given Participating Member State that, due to differences regarding the applicable law of infringement, might fall into three different categories that confer (subtly) different rights:
      (1) National patent, European patent (opted out) and European patent (not opted out; litigated at a national court): Law of infringement: national patent law.
      (2) European patent (not opted out; litigated at the UPC): Law of infringement: the UPC Agreement.
      (3) European patent having unitary effect: Law of infringement: patent law applying to unitary patents in the Participating Member State determined according to the UP Regulation.

      Whilst some might argue that the same law applies to categories (2) and (3), my view is that this is far from certain. This is not least because different constitutional arrangements in different Participating Member States will lead to the provisions of the UPC having different significance / effect under different national laws.

      Especially when it comes to issues such as exemptions from infringement (such as the “Bolar” and research exemptions), the difference between patents in category (1) and those in category (2) could be very significant indeed. For example, a clinical trial based upon a head-to-head comparison with a drug patented by a third party might infringe a category (2) patent but NOT a category (1) patent.

      And remember that (1) and (2) might both be European patents. Moreover, the patent in question might, at any time after grant, move from category (1) to category (2) (e.g. by withdrawal of an opt-out).

      How any of this can possibly be lawful (with regard to providing third parties with a reasonable degree of legal certainty) is anyone’s guess.

      1. Concerning observations, indeed.

        Categories (2) and (3) are certainly different e.g. due to Art. 4.4 EU Regulation 1260/2012 (translation arrangements for the unitary patent)

    2. “may provide” is not “must provide”, the same for “may only” is not “must only”, so it might be that it is a possibility, not an obligation.

      https://www.differencebetween.com/difference-between-may-and-vs-must/

      BusinessEurope and other large patent applications wanted to keep all options opened (National + European + Unitary), si I guess the parallel with the Swiss/Lichtenstein agreement was seen as an “option”.

      1. Simona, based upon your interpretation of the word “may”, are there any legal arrangements for “unitary” patents that are forbidden by Art. 142 EPC? If not, it seems to me that your interpretation may be questionable on the grounds that it would effectively render Art. 142 EPC otiose.

        You may also want to discuss this point with the EPO. Based upon the footnote added to Article 142 EPC, it seems that the EPO is convinced that the group of Participating Member States has availed itself of “the authorisation given in Article 142(1)”. According to your interpretation, however, Article 142(1) EPC does not (explicitly) provide any such authorisation.

  6. It is clear that the tenants of the UPC wanted to make everything possible in order avoid the CJEU to put an eye on patent law. I am not sure that the CJEU will accept the fact to have been excluded from this domain.

    As far as SPC are concerned, it is clear that the CJEU has brought some case law which is linked in broad terms to patents. Do you honestly think it will refrain to go into the patent domain? I doubt it.

    The day the UPC will have a prejudicial question about SPC to the CJEU, we will know what the CJEU holds from the UPC.

    I am also wondering why the UPC can, in the absence of a EU wide SPC, have jurisdiction over SPCs which are granted by national authorities. Even in case of a UP, it still a national authority which will grant a SPC with limited territoriality. I never got a convincing explanation as to why this is possible. Conflicts of competence are preprogramed.

    Under the EPC and the established case law of the Boards of Appeal we might have “a (mostly) settled, (mostly) consistent and (mostly) sensible approach to the most common substantive issues”.

    Before thinking of the CJEU, we have to see what the UPC might do of all this.

    As far as infringement is concerned, the UPC might become the leading court in Europe when all patents will become under the competence of the UPC when the transitional period is over.

    As far as validity is concerned it is not sure at all that the UPC will become the leading court in Europe.
    The case law of the UPC might even collide with that of the BA of the EPO.
    Just think for instance of the way added subject-matter is dealt with at the EPO and by national courts.

    What then? As a UP will be a patent granted by the EPO, first instance divisions are only bound by case law of the BA/EBA. The BA are only bound by the case law of the EBA.

    Contrary to what Sir Robin Jacob has said at a conference on the UPC in Munich, I am not sure at all that the UPC will become the leading court in matters of validity in Europe.

    In view of the difference in basic fee between opposition (815€) compared to that for a revocation action before the UPC (20 000€), one could even expect that the number of oppositions against granted patents might increase.

    In any case before the EPO, each party bears its own costs and simultaneous interpretation is borne by the EPO. This is by no means the case at the UPC where the losing party will have to take over the costs of the winning party, comprising as well simultaneous interpretation costs.

    In matters of validity, the UPC might simply add a further layer of case law to the existing national case law or that of the BA/EBA. Where is the gain? It will rather be unsettling to have diverging case law.

    But compared to the huge profits the supporters of the UPC hope to cash in, especially internationally active lawyer firms specialised in litigation, what does it matters if case law is diverging. It might even be better for the business.

  7. @ Zoobab,

    The information you got from Techrights is manifestly wrong.

    The costs of interpretation other than EN/DE/FR are NOT sent to the parties, as it is for the party wanting to use the official language of a contracting state to provide the interpretation!
    See R 4(1 and 3)

    It is extremely rare that such an interpretation to and from an official language of a contracting state to the language of the proceedings is needed. Not even once in a blue moon.

    1. i’ve seen two such cases in three years. (once Spanish, once Italian)

      But the parties do know that they have to provide translations themselves, and pay themselves, procedural language was English in both cases, and ultimately, the translation provided by the party was not to the benefit of the representative, but to the applicant/opponent who appeared beside their representative (company owner/leading tech department/…)

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