Kluwer Patent Blog

10 comments

1. How to declare a treaty into force when the condition to declare it into force have not been met.

   So no more signing ceremony to overcome Brexit?

   BTW it’s not the European Commission website, but the Council website.

   1. Thank you for spotting the error in the origin of the website. I have corrected the post.

      Otherwise, the treaty has obviously not yet been declared into force, but the Preparatory Committee will work towards making this possible within a year (or even 8 months, in the most optimistic scenario) and Germany has already concluded its internal preparations to ratify as soon as the Preparatory Committee is ready.

      1. Thorsten, I think that the “Treaty” to which Andre refers is the PAP … which allegedly HAS entered into force.

         I too had expected a signing ceremony for a “Declaration on the authentic interpretation of Art. 3 of the PAP-Protocol”, which was supposed to take place “in the margins of a future COREPER meeting”.

         Perhaps a signing ceremony will still happen, though there is no mention of such in connection with this week’s COREPER meeting (https://www.consilium.europa.eu/en/meetings/mpo/2022/1/coreper-1-(313748)/). However, even if one accepts the rather dubious premise that the crystal-clear wording of Art. 3 of the PAP-Protocol can be given an alternative meaning, it is far from clear whether it is permissible to rely upon a purported “authentic interpretation” that has not yet been formally approved by the Participating Member States.

         We shall have to wait and see what the Member States agree regarding reallocation of the duties of the London branch of the central division. I very much hope that it is more legally defensible than what has happened with the PPI and PAP.

2. It is still not crystal-clear to me how the conditions for entry into force of the Protocol on provisional application can have been met, since the United Kingdom has withdrawn its consent to be bound by that Protocol.

   Perhaps the Preparatory Committee will helpfully explain how that can be.

   1. “Perhaps the Preparatory Committee will helpfully explain how that can be.”

      Nope, they won’t be of any help.

      Maybe a question to the CJEU would help?

3. I am a little confused about the legal basis for transitional measures introduced by the President of the EPO.

   For example, the Decision dated 22 December 2021 (https://www.epo.org/law-practice/legal-texts/official-journal/president-notices/archive/20220119.html) cites Article 10(2)(a) EPC as legal basis. However, that provision only provides the President with the power to take “necessary steps to ensure the functioning of the European Patent Office”.

   Whilst it will no doubt prove useful for increasing opportunities to file requests for unitary effect, I think that it would be hard to argue that the ability to request a delay to the issuance of a decision to grant is a step that is necessary to ensure the functioning of the EPO. The possibility of delaying the issuance of a decision to grant also arguably conflicts with the mandatory language used in Article 97 (“the Examining Division … SHALL decide to grant a European patent …”) and Rule 71a(1) (“The decision to grant the European patent SHALL be issued if …”.

   I would have thought that it would be more appropriate (and legally sound) for the possibility to request a delay to the issuance of the grant decision to be introduced by way of a decision of the AC, using its powers under Article 33(1)(c) EPC. Whilst this is perhaps a pedantic point, I am more than a little uncomfortable with the thought of the President assuming the power to significantly alter the grant procedure (relative to the procedure set out in the EPC and its Implementing Regulations).

4. These measures have been presented to the Member States, and only one (non-participating) commented negatively. It may not have been a decision, but in fact, these measures have little impact: they apply only after Germany has deposited its instrument of ratification of the UPCA, i.e. some 12 to 16 weeks before entry into force, whilst those decisions to grant issued in the last five weeks do not need to be postponed because they will anyway be published when the UPCA will be in force.
   Anyway, applicants know how to delay the decision to grant. These measures contribute to the functioning of the EPO, by minimising the waste of resources otherwise required to delay a decision to grant.

   1. So, in essence, your main argument is that nobody is going to complain about the new measures … with the consequence that whether or not they have a sound legal basis is unlikely to make any practical difference (especially in view of the limited time during which the measures will be in force).

      Whilst this may be true, you will have to forgive me if I still feel uncomfortable with the thought of the President adopting the approach of unilaterally assuming powers that are not (clearly) ascribed to him. There are simply far too many things that could go badly awry if this kind of approach becomes commonplace.

      Also, whilst the measures may have been “presented” to the Member States, this only happened on 19 January, which is almost a month AFTER the date of the President’s decision (and the date of the two Notices from the EPO). It therefore seems that the measures were “presented” to the Member States as a fait accompli. This hardly seems appropriate in the circumstances.

      Moreover, why on earth did the President not consult on these matters much earlier, so that they could receive PRIOR approval from (the Select Committee of) the AC?

      Finally, I am not persuaded that the mere fact that a measure might contribute to the functioning of the EPO means that it falls within the President’s power to issue that measure. This is because the President’s powers under Article 10(2)(a) EPC are limited to NECESSARY steps to ensure the functioning of the EPO. In other words, I do not believe that “necessary steps to ensure” can be afforded an interpretation as broad as “steps contributing to”.

5. That the UK can be replaced by IT when it comes to the PAP can be understood, but there is no indication that the famous declaration hinted at by Mr Ramsay has been signed at the Coreper.
   One has thus to consider that the Commission jumped at the gun and decided something which could manifestly not be decided at this moment and thereby created a fait accompli.
   One should not forget that the proponents of the UPC actually wanted the UPCA to enter into force as quickly as possible in order to exactly create a fait accompli. It was necessary to do so, otherwise all the flaws in the UPCA and the corresponding problems would have been apparent.
   They just did it now with the PAP.
   I know that some national judges are counting all the money they are loosing due to the delayed entry into force of the UPC. For them it will be irrelevant if they get a contract by an instance which has no legal standing. Money matters. That’s it.

   It is clear that the President of the EPO, like its predecessor, is eager to see the start of the UPC.
   For the time being, the decision of 22.11.2021 is relatively harmless as it is presently not of application, and will only be applicable during a relatively short period.
   It however shows a mind setting which is problematic. Rather to bring social peace, reason for which he had been appointed, he is concerned about problems which are not important at all for the EPO.
   He should rather take care of his staff and improve the working conditions. On the contrary he has worsened them.
   It does not appear that there has been a decision setting aside the rules found illegal by the TA-OIT restricting the right of industrial action by the staff.
   This is a disgrace, but since 2010 the tail is wagging the dog, he could not care less.
   He continues his destructive efforts of the EPO so that in the end the patents would be granted more or less automatically, the BA just playing judges, but the UPC becoming the court in which the decisions of the EPO and its BA would be vetted.
   This is how the EUIPO works. A bit of examination and opposition, a bit of appeal, and the rest is done in Luxembourg, so why bother too much in Alicante, sorry in Munich.
   The problem is that the UPC is not the CJEU. It is not even sure that the UPC is a court having a legal standing in the EU. Its compatibility with the Union law has never been tested.
   One wonders why? Fait accompli???

6. Whether the PAP has legally entered into force is not really clear. Mr Ramsay has announced a declaration to be signed at the COREPER, but no such ceremony has been announced. Would it have taken place, it is more than certain that the Preparatory Committee would have heralded it loud and clear.

   Replacing UK by IT is in principle acceptable, provided that all the signatory states agree, or at least those having ratified up to now.

   Amending in such a way Art 3 of the PAP is however not changing anything as far Art 7(2) UPCA is concerned. In the explanatory note for the second ratification a reference to Art 31 VCLT was made. But nothing has apparently happened.

   Whilst an agreement on Art 3 PAP seems possible, it is more than doubtful that an agreement on Art 7(2) UPCA is possible. I cannot see IT and NL accepting that the duties originally allocated to London will “provisionally” be transferred to Paris and/or Munich. This is the more since Mr Ramsay, in his latest interview in JUVE, clearly mentioned the fact that in the end there could only be 2 sections in the central division. Should three sections remain, it is also not sure whether FR and DE would not prefer to keep the very interesting files in IPC classes A and C for themselves and shift less interesting technical domains to a third and why not even a fourth location.

   The three locations were only chosen as none of the three contenders FR, GB and DE would not let loose and claimed the whole central division for themselves.

   It is very surprising that the head of the EPO had to take shortly before the Christmas break a decision on something which will only be a temporary measure, and only once the opening date of the UPC will be known. And this in a few months at the earliest.

   in spite of what A.Nonymous has said, it is difficult to understand in which way this measures contribute to the functioning of the EPO, and why they are able to minimise the waste of resources otherwise required to delay a decision to grant. It is not apparent how leaving a file resting for a short length of time would represent a real waste of resources.

   I would have thought that there are more urgent tasks to perform at the EPO than to take such a decision. This is the more so since Art 10(2,a) EPC has a totally different finality as explained by other commenters. For example, the social situation is still problematic at the EPO.

   We should also not forget that Art 10(2,a).was the Art referred to by the head of the EPO when introducing mandatory OP by ViCo in the first instance during the pandemic.

   Whilst at a pinch such Art 10(2,a) can be considered applicable during the pandemic, it is doubtful that even a very extensive application of Art 31 and 32 VCLT would allow to make such a provisional measure a permanent feature of the procedure before the EPO.

   The (too) frequent use of Art 10(2,a) is becoming suspect. But since the tail is wagging the dog, probably nothing much will happen.

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