Kluwer Patent Blog

28 comments

1. “The launch of the UPC is triggered by the German deposit of its formal instrument of ratification of the UPC Agreement with the secretariat of the European Council.”

   Since art89 UPCA says that the top3 in 2012 was containing the UK, can someone could challenge its entry into force?

2. Thanks for this.
   I don’t follow this bit about the EPO’s measures:
   “This will undoubtedly have to be postponed now as well.”

   Given that the EPO changed their transitional measures to be independent of German ratification why would they then change them a second time to be dependent again? Seems to me that having some grants deferred for 2 months longer than anticipated is far preferable to informing applicants that cases that are currently eligible for the transitional measure will no longer be so.

3. Dear Simona,

   I would say that, at a pinch, replacing UK by IT is defendable as the conditions for entry into force are linked with the deposit of the ratification instrument by the three countries having the most patents valid at a certain date.

   The problem lies with the protocol on provisional application which still mentions expressis verbis the UK. A joint declaration was announced before the entry in force of the protocol.

   The protocol has entered into force without the declaration. For some the protocol on provisional application has thus not at all entered into force.

   The biggest problem remains Art 7(2) UPCA in which the London Section of the Central Division is still mentioned expressis verbis. I can look at and turn Art 31 and 32 VCLT as much as I want, but the provision being crystal clear does not suffer any interpretation. This seems to me a much bigger hurdle as nowhere in the UPCA it has been provided that the duties of the London Section can be provisionally transferred to Paris and Munich.

   The solution proposed by the staunch supporters of the UP/UPC system would bring a first-year law student to heavily blush.

   This is to me a must more important problem. I have difficulties to unterstand that national judges having a reputation to lose can hire at such a court. In my opinion this court does not comply with the requirements of Art 6(1) ECHR.

   1. Again, the solution is quite simple and not one for which first-year law students should be ashamed.
      Within the EU, the principle of supremacy of EU law applies.
      From the AETR decision C-22/70 and Opinion 1/09 of the EU Court of Justice, it follows that non-EU states cannot participate in the UPC Agreement.

      So, from Brexit, in the UPC protocol on provisional application, the requirement that the UK should have ratified that protocol is null and void. It thus suffices that 13 states have ratified including Germany and France, and that threshold has been met. So, the UPC protocol on provisional application has fully lawfully entered into force.

      Also, from Brexit, in the UPC Agreement itself where it refers to London, there is a mismatch between EU law and the UPC Agreement. Such mismatches can be easily repaired by the UPC Administrative Committee under Article 87(2) of the UPC Agreement. If they do so on June 1, 2023 at 8 AM, then when the UPC opens its doors at 9 AM, the UPC will have a fully operational Central Division having jurisdiction for all IPC classes.

      1. “Such mismatches can be easily repaired by the UPC Administrative Committee under Article 87(2) of the UPC Agreement.”

         “2. The Administrative Committee may amend this Agreement to bring it into line with an international treaty
         relating to patents or Union law.”

         Replacing London by Milan by stealing the power of modification of the Treaty out of national parliaments.

      2. Leo,

         Could you please point me to the CJEU case in which the court interpreted an international agreement by effectively erasing references to a non-Member State and replacing them with references to a Member State that only arguably could be viewed as a suitable replacement? I must have somehow overlooked that case, as I could have sworn that there was nothing even remotely resembling it in the body of CJEU case law.

         As regards Article 87(2) of the UPC Agreement, that requires “an international treaty relating to patents or Union law”. Unless I missed something, there is no such treaty (or provision of Union law) that stipulates a specific replacement location for London. Indeed, the issue of the replacement location is so controversial that it is being studiously avoided by the UPC’s proponents, lest it derail the entire system.

         If you wish to convince anyone here that both the UPCA and the PPA have a solid legal basis, then I suggest that you avoid using flimsy, hand-waving arguments that do not stand up to any kind of detailed scrutiny.

         1. As regards the protocol on provisional application (PPA): the principle of primacy of Union law means that whatever legal provision is not compliant with Union law must be disregarded. There are numerous court decisions (both from national courts and the CJEU) that show that certain national legal provisions must be disregarded when such national legal provisions were incompatible with Union law.
            As regards treaties, in a previous post I have referred to CJEU case law concerning investment treaties having a dispute resolution clause, in which the dispute resolution clause had to be disregarded because it was incompatible with Union law. So, instead of some arbitration panel, a national court in the EU has jurisdiction, and decisions by the arbitration panel had to be disregarded as the arbitration panel referred to in the investment treaty had no jurisdiction in view of EU law, having regard to the principle of supremacy of EU law, also regarding treaties that have provisions that conflict with EU law. See also https://ec.europa.eu/commission/presscorner/detail/fi/MEMO_18_4529.

            In view thereof, it is pretty straightforward to conclude that the PPA requirement that the UK must be a PPA party has to be disregarded for the simple reason that 2 CJEU decisions (AETR C-22/70 and Opinion 1/09) show that non-EU states cannot be a party to the UPC system.

            As regards the UPC Agreement itself, there is no requirement that the UK must be a party: the entry into force provision in the UPC Agreement simply refers to 3 EU states meeting a certain criterion, and after Brexit, those 3 EU states are DE, FR and IT.

            As regards the UPC Agreement mentioning London: clearly, London has been mentioned in the UPC Agreement based on the assumption that the UK would be a party. So, from Brexit, those references to London are incompatible with EU law as because of the AETR decision and Opinion 1/09 of the CJEU, a non-EU state like UK cannot participate in the UPC system. That means that Article 87(2) UPC Agreement empowers the UPC Administrative Committee to take whatever decision that is needed to bring the UPC Agreement into line with EU law.

            Note that the wording of Article 87(2) is not limited to one-way street situations in which only 1 possible decision can be taken. It suffices that prior to the UPC Administrative Committee decision, there is a conflict with EU law, and that after the UPC Administrative Committee decision, there is no longer a conflict with EU law.
            So, a hypothetical decision to replace the references to London by references to one or more other cities within the EU would be perfectly OK under Article 87(2) UPC Agreement.

            By agreeing to the UPC Agreement, national parliaments have also agreed to Article 87(2) of the UPC Agreement. So, no power is stolen from national parliaments. They have explicitly authorized the UPC Administrative Committee to take whatever decision that is needed to bring the UPC Agreement into line with EU law.

            1. “By agreeing to the UPC Agreement, national parliaments have also agreed to Article 87(2) of the UPC Agreement. So, no power is stolen from national parliaments. They have explicitly authorized the UPC Administrative Committee to take whatever decision that is needed to bring the UPC Agreement into line with EU law.”

               The third article also says:

               “A decision of the Administrative Committee taken on the basis of paragraphs 1 and 2 shall not take effect if a Contracting Member State declares within twelve months of the date of the decision, on the basis of its relevant internal decision-making procedures, that it does not wish to be bound by the decision. In this case, a Review Conference of the Contracting Member States shall be convened.”

               If a National Parliament calls for a Review Conference, should it happen at 8:30AM?

            2. “the principle of primacy of Union law means that whatever legal provision is not compliant with Union law must be disregarded”

               Then they can scrap the whole UPCA because it is not a common court, despite politicians writing that it is one in the Brussels regulation.

               But they will wait that a complaint reaches the CJEU, for example another country complaining using art259tfeu “violation of EU law by other countries”.

               For violation of TEU19(1), which the CJEU clarified in Opinion 1/09 that it was National Courts, some countries from the Eastern block might me interested to hear that they were used on the same article, and that those other countries participating in the UPCA project have invented a new kind of ‘common court’ which is not one.

            3. Leo, I have no doubt that you have convinced yourself that your arguments are bullet-proof. However, with the greatest of respect, it seems to me that your “logic” relies upon a nonsensical mish-mash of provisions of EU and international laws.

               To illustrate, let us consider the situation where an international treaty is incompatible with EU law. In the situation where an EU Member State is party to such a treaty, the case law of the CJEU indicates that the incompatible (provisions of the) treaty will be – or at least should be – unenforceable in the courts of the EU Member States. Importantly, however, the mere fact that an international treaty (or one or more provisions thereof) is unenforceable in EU courts does NOT, on its own, have any effect upon the interpretation of that treaty UNDER INTERNATIONAL LAW.

               Thus, a finding of incompatibility with EU law is just that. It does not somehow, magically amend the international treaty in question. It simply leads to a conflict of laws. The treaty can only be interpreted (and amended) in accordance with international law, and, in particular, the provisions of the VCLT.

               I happen to agree with you that the UPCA and the PPA are, for several reasons, incompatible with EU law. However, for the reasons outlined above, I also believe that their provisions mean what they say, and that there is no reason under the VCLT to interpret crystal-clear references to the London or the UK to mean any different city or country.

               As you may recall, the original plan was to address the Art 7(2) UPCA point by issuing a joint declaration / agreement on the interpretation of the UPCA. But, for no good reason that I can see, that plan seems to have been dropped. It is therefore evident that the signatories to the UPCA do NOT have a common understanding / agreement regarding relocation of the London branch of the central division. For this reason, if the UPC commences operations before this issue has been resolved, it will have achieved the dubious distinction of being incompatible with both EU and international laws (the latter including the ECHR).

               Regarding your argument relating to Art 87(2) UPCA, I believe that this is addressed in the comments from “Don’t pull my leg”. To those comments, I would add that the proposed relocation of the London branch remains one of the most controversial issues between the UPCA’s signatories. It is therefore inconceivable that those signatories would have willingly handed the Administrative Committee the power to decide the new location. Also, it is somewhat of a stretch to view Brexit as being “Union law” – as, in common with the UPCA, the UK’s Withdrawal Agreement is an international treaty. There is therefore no “Union law” upon which an Art 87(2) amendment could be based.

               Finally, there is a timing issue. That is, even assuming that the PPA is somehow (magically) in force in a manner that complies with international law, Art 87(2) is NOT one of the provisions that is given any effect before the UPCA proper enters into force. Your arguments therefore rely upon the assumption that the UPCA can legitimately enter into force in a manner that breaches both EU and international laws, but then somehow be magically “fixed” by an administrative body whose decisions do not even require unanimity amongst the signatory member states. Whilst certainly an entertaining theory, this does not remotely approach the kind of watertight legal basis that a new, international court will need in order to be widely perceived as having legitimacy.

4. The delay is actually not caused by an IT issue at the UPC. In order to provide secure access that prevents for instance unauthorized opt-outs, the UPC decided to rely on the level of protection that is offered by the EU eIDAS Regulation. This is the new standard for digital transactions in the European Union.

   There is a list of providers on a website hosted by the European Commission, the eIDAS Dashboard. However, it has become clear that not all of those providers can really already provide the necessary certificates. Some will never; the Dutch Ministry of Defence is on the list but will not issue certificates to civilians.

   There now is a list on the UPC website of providers that can deliver. The provider of my attorney smart card, QuoVadis Trustlink, has confirmed to me that they can indeed deliver.

   So, this is not really something that the UPC can be blamed for.

   1. Not in the slightest can the UPC be blamed… except that the UPC left users of the CMS without reliable information on how to use it while they already had to advise clients on opt-out schemes and received opt-out instructions. Except that even modest attorneys now tend to think that the UPC creates bureaucratic obstacles intentionally.

      1. It has always been the case that those behind the UPC have rigged the system in order to maximise the number of patents that can be litigated at the new court. The bureaucratic obstacles that you mention form only a small part of the plan.

         For example, why was the system designed with an automatic opt-in? Why should patentees have to go to a lot of time and effort merely in order to retain the current status quo? Many of the affected patents will have been filed years before the UPC Agreement was signed. Given that the owners of those patents could not possibly have predicted the design of the new court, why should their consent to the jurisdiction of that court be presumed?

         It would have been far more sensible (and legally justifiable) to presume that owners of pre-existing patents did NOT consent to the new court’s jurisdiction, and therefore to require an opt-in. Indeed, from the perspective of legal certainty, by far the best solution would have been to require applicants to designate a “unitary patent” upon filing, and to provide the new court with jurisdiction for those patents only. A key reason that this would have increased legal certainty is that it would have removed concerns that “late” (ie post-filing) actions of the patentee, including opting for a EPUE or filing / withdrawing an opt-out, could change the applicable law of infringement … and hence change the conclusion on FTO in certain countries.

         Whether by accident or design, another part of the plan now seems to be flaws and loopholes in the UPCA and RoP, as well as blatant inconsistencies between the two. As all EP attorneys will now be painfully aware, it can be fiendishly difficult to work out precisely which states (and “proprietors”) should be named on an opt-out application, and hence which individuals / companies need to consent to the filing of that application. Even more alarmingly, it is not clear how, during the sunrise period, the UPC will handle / process applications to register as a representative … and hence whether, as a precaution, a qualified representative filing an opt-out should also file a mandate from the “proprietors”.

         And then there is the cherry on top: the possibility / likelihood that third parties will be able to file AND CONTINUE WITH revocation actions in respect of patents for which a (valid?) opt-out has been filed. If one believes the pronouncements of certain UPC supporters, then such revocation actions will continue unless and until the patentee proves that the opt-out was valid. In other words, third parties may be able to press ahead regardless of an opt-out and hope that the evidence filed by the patentee reveals some kind of (technical) flaw that can be pounced upon to invalidate the opt-out. Oh, and merely objecting that the UPC does not have competence for the case will not lead to suspension of the TWO-MONTH deadline to file one’s COMPLETE response to the revocation action … with the consequence that even a plainly hopeless UPC revocation action will cost the patentee a great deal to (prepare to) defend.

         It is as plain as a pikestaff that all of these provisions are designed to plump the (initial) caseload of the UPC, and to tilt the playing field in favour of the well-resourced litigants that want to edge out their smaller competitors. However, it now seems too late to do anything about it. The coup has been achieved.

      2. To add to the above comments, I have just learned that, in the opinion of one of the authors of the UPC’s Rules of Procedure that an opt-out will essentially be ineffective unless actively defended against a revocation action at the UPC.

         Thus, all of the time and expense spent working out how to file a valid opt-out, obtaining a secure device to access the CMS, and then learning how to use the CMS (including adding signatures to all documents) will essentially be for nothing if one fails to file (within a one month deadline) a preliminary objection that simply points out what the claimant and the UPC already know – namely that the patent in question is opted out.

         I would love to understand the legal justification for this conclusion. The UPC does not have jurisdiction for a (validly) opted-out patent. Therefore, upon what basis can the UPC continue to hear a revocation action in respect of a patent for which a valid opt-out has been filed? The whole point of filing an opt-out is to ensure that one does not have to engage in proceedings before the UPC. It therefore makes no sense that, in order for an opt-out to be effective, one must do precisely what the opt-out is intended to prevent (namely, engage in proceedings before the UPC).

         It seems to me that this effectively means that opt-outs will be presumed to be invalid, and that the UPC will reverse the burden of proof when (without evidence) a revocation action implicitly challenges the validity of any opt-out. But since when has any court started from the presumption that a registration (in this case, a registered opt-out) is invalid? And what ever happened to the principle of he who asserts must prove?

         All troubling enough. But it gets worse when one considers that the Rules of Procedure say nothing about any of this. Thus, for example, we have no idea what evidence (if any) the court will require to uphold the validity of an opt-out. More worryingly, there would appear to be no such thing as a certificate of contested validity for an opt-out. This means that, for any one patent, the proprietor may need to REPEATEDLY defend the validity of the same opt-out. Also, in the absence of provisions governing the handling of (abusive) repeat filings, it is unclear whether a patentee will need to defend the validity of the same opt-out each time the same third party files a new revocation action against the same patent.

         Absolute madness.

   2. “the UPC decided to rely on the level of protection that is offered by the EU eIDAS Regulation”.

      Three questions:

      1) Why? The UPC is an international court, and so therefore had no obligation to adopt an EU law-based solution. Other solutions, including some form of 2FA, could have been acceptable alternatives.

      2) Even if there were good reasons to select (qualified) signatures under the eIDAS Regulation, why did the UPC not sense-check / conduct due diligence on their chosen solution? Given the course of events since August, it is clear that the UPC either did not know or did not care that there were so few providers that could issue secure devices containing the certificates that the UPC had selected.

      3) Why did it take the UPC almost three months to provide the key, technical details that attorneys (and Qualified Trust Service Providers) needed to figure out whether existing products offered by the QTSPs would work with the UPC’s CMS?

      So, this IS really something that the UPC can be blamed for.

      1. Re: “The UPC is an international court, and so therefore had no obligation to adopt an EU law-based solution”:

         Per the UPCA, the UPC “shall be a court common to the Contracting Member States and thus subject to the same obligations under Union law as any national court of the Contracting Member States”, see Art. 1, and “shall apply Union law in its entirety and shall respect its primacy”, see Art. 20.

         I surmise that the choice to require eIDAS-compliant authentication was made at least in part for this reason.

         Of course, your second and third questions are not any less valid.

         1. As far as I am aware, there is no EU law that REQUIRES national courts to insist upon eIDAS-compliant certificates / secure devices as a condition of access to an e-filing portal. My understanding is that this is just one (relatively standardised) solution that EU-based entities CAN adopt for such portals.

            Then there is also the question of the specific authentication certificate selected by the UPC. In case you are not aware, the eIDAS legislation covers signature certificates (including QCert for ESig) but NOT authentication certificates. In this respect, the UPC had no EU law obligation whatsoever to select any particular authentication certificate. From my discussions with Qualified Trust Service Providers (QTSPs), it seems that even those with an intimate understanding of the eIDAS legislation and eIDAS-compliant secure devices had a hard time figuring out:
            – which authentication certificate the UPC had selected; and, ultimately
            – WHY they had selected a very peculiar type of authentication certificate, which most of the biggest QTSPs were not authorised to issue.

            In the light of the above, I think that my first question still stands.

            Regarding Arts 1 and 20 UPCA, there is an interesting question of what those mean in terms of the obligations of the UPCA. This is because no provision of any law can really be classified as a true “obligation” unless there is a mechanism for ENFORCING that provision. As you will see from CJEU case law relating to “common courts”, this is a very important point for determining whether a court is compliant with EU law. In this regard, I would question whether the mere possibility (from Art 22 UPCA) of seeking DAMAGES in respect of breaches of EU law really provides an adequate mechanism for ENFORCEMENT of the provisions of EU law … especially in view of the privileges and immunities afforded to all of the UPCA’s key players.

            I suppose that we will just have to wait and see what the CJEU makes of all of this. However, in the light of the above considerations, I cannot say that I am 100% confident that the set-up of UPC will get the CJEU’s stamp of approval.

5. Dear Russell,
   It was today confirmed by Pierre Treichel from the EPO in the epi conference on the UP and UPC in Munich that the transitory period for the EPO (in which it is possible to file a request for unitary patent early and in which it is possible to delay the grant of the European patent until after the start of the system) still is available from 1 January 2023 until the entry into force of the UP/UPC, which is now forseen for 1 June 2023. So this period still starts on 1 January 2023.

6. @W.Pors,
   It would have been a surprise if you would not have defended the UPC!
   In the past you have claimed that those against the UPC were not capable of understanding it and were actually backwards.
   Whatever you may say, the problem comes from a choice made by the UPC.
   A decision was taken by the UPC without measuring the effect of it.
   It is exactly as for the UP/UPC system as such.
   No impact on European SMEs has ever been carried out. No economic study about the necessity of such a system has ever been done.
   Lots of nice announcements have been made but never any quantitative determination has been carried out.
   This is to remind you that the number of validations of granted EPs lies between 3-5 for all EPC contracting states and barely a third of proprietors of EP reside in a contracting state of the UPC! Claiming that the annual fees for a UP is lower than for a validated EP is a fallacy as you compare apples with pears.
   Those are not approximations but hard figures directly derivable from official statistics published by the EPO.
   How many true supranational litigations are actually going on in Europe. Less than 10! No need for such a complicated system like the UP/UPC.
   But it will allow firms like yours and that of Mr Tilmann to fill your pockets!

   1. “No impact on European SMEs has ever been carried out”

      Just recycle an old impact assessment from the Community Patent, and pretend it’s good enough.

      Of course, don’t tell those poor SMEs that the new court will be self-financed, and too expensive for them.

      Follow the money!

7. @B. van Wesenbeek,
   It would be interesting to get figures from the EPO about how many requests for UPs will be filed at the EPO.
   Delaying the grant will represent a loss of annual fees for EPC contracting states. Will the AC be pleased or will the “cooperation” budget will have to be increased?
   The rest should be automatic opt-outs if R 5(1,b) UPCA would not have unnecessarily complicated the opt-out procedure!

8. Dear Wouter,

   If I’d chosen to have my bathroom renovated and the architect I tasked with the work chooses a building material recommended by the European Union but that is not available in Germany, who is to blame? I’d say the architect. He should have been aware of the fact before chosing. That why I use a specialist for the task.

   It isn’t as if the EPO hasn’t got a working and established smart card system …

   Kind regards,
   Christopher

9. @ L. Steenbeek,

   It is not a secret that you are among the staunch supporters of the UPC.
   The solution you propose has been suggested a long time ago, but suffers some drawbacks which you cannot sweep under the carpet.

   I maintain that the proposal you bring in would still let a first year law student heavily blush.
   When a treaty needs interpretation, such an interpretation is only possible under the Vienna Convention of the Law of treaties, and especially Art 31 and 32 VCLT.
   Art 31(1) VCLT provides that: “A treaty shall be interpreted in good faith in accordance with the ordinary meaning to be given to the terms of the treaty in their context and in the light of its object and purpose”.

   The ordinary meaning of Art 7(2) UPCA provides that there will be a London section of the Central Division.
   It is difficult to see how this ordinary meaning is at all unclear.
   This is the text which has been submitted to all parliaments having ratified the UPCA.
   Annex II defining the technical domains to be allocated to the various sections of the Central division is also part of the treaty as ratified. And now you tell us, that Art 31 and 32 VCLT can simply be ignored. It is a quite daring position.

   As far as ratification is concerned it is not just 13 states including Germany and France which are necessary, but 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. This meant at the moment of signature Germany, France and the UK.

   Before the entry in force of the protocol of provisional application a declaration according to Art 31 VCLT was announced.
   This was also announced to the German Parliament in the explanatory note drafted by the German Ministry of Justice before the second ratification. I have never heard anything about such a declaration since.

   At a pinch this could be accepted as the UK was not required to ratify expressis verbis, but London is mentioned expressis verbis in the treaty itself, as none of the three contenders DE, FR and GB were trusting each other so that the actual locations had to be introduced in the treaty itself, with all the known consequences.

   The only proper way in order to respect the right of the parliaments having ratified the UPCA was, after Brexit, and certainly after withdrawal of the ratification by the UK, would have been to renegotiate Art 7(2) UPCA and amend the treaty which has not yet entered into force.

   All the supporters of the UPC knew too well that a new ratification would not has been so easy as the numerous drawbacks of the UP/UPC system came more and more apparent and would have raised doubts about the necessity of such a system in view of the modest number of really supranational litigations in Europe. An optimistic guess lies around 10 a year.

   In how far the AETR decision C-22/70 is applicable to the present situation is highly debatable. The AETR decision C-22/70 relates to a dispute between the commission and the council and to an agreement to be concluded with third parties. The AETR decision does thus not appear applicable by analogy as the UPCA does not apply to all member states of the EU and there is no apparent dispute between the commission and the council.

   Opinion 1/09 did not say non-EU member states cannot participate to the UPC, it merely stated that the then envisaged European and Community Patents Court is not compatible with the provisions of the EU Treaty and the FEU Treaty.

   It is not even sure that the UPC can be considered as court compatible with the provisions of the EU Treaty and the FEU Treaty for the simple reason that the question has never been raised before the CJEU. It is an assumption from its promoters, no more.
   Asked in a recent conference why the UPCA was never submitted for opinion to the CJEU, Me Véron, another staunch supporter of the UPC, simply said: “because nobody thought of it”. It is hard to believe, but true. The reason is more probably that the answer of the CJEU might not have brought the desired result.

   There might be an apparent mismatch between EU law and the UPC Agreement but the meaning of Art 87(2) UPCA is to avoid a renegotiation and re-ratification of the UPCA if all member states have ratified an international treaty relating to patents, or new Union law has entered into force in all member states which would actually need to amend the UPC. Only under those conditions the UPCA can be amended in what be considered as an administrative way.

   Art 87(2) has never been intended to short-circuit the various parliaments, it has for sole aim to adapt the UPCA of what has been ratified or entered in national legislation by all the member states. One example could be the introduction of a true European SPC. Present SPC are only decided at national level.

   Art 31 and 32 VCLT are far from allowing a provisional transfer of the duties devolved to London to Paris and Munich.
   Any decision taken in the central division at the Paris or Munich sections in IPC classes A and C will not be taken by a court according to Art 6(1) ECHR.
   .
   Claiming that if on June 1, 2023 at 8 AM, the UPC Administrative Committee can “repair” the UPCA so that when the UPC opens its doors at 9 AM, the UPC will have a fully operational Central Division having jurisdiction for all IPC classes is at best wishful thinking as it is blatantly in contradiction with what is said in the treaty itself.

   It has as much probative value as all the theories which were brought forward by all those in favour of the UPC, seconded by some legal scholars and Mr Tilmann, another staunch supporter of the EPC, when they explained why the UK could stay in the UPCA in spite of Brexit.

10. If you read my posts, it is clear that I do not promote to ignore the VCLT. I do acknowledge that London is mentioned in the UPC Agreement. I just say that there is a UPC Agreement provision, viz. Article 87(2), that allows modification of the UPC Agreement provisions that refer to London. So, no violation of the VCLT.

    The entry into force provision of Article 89 UPC Agreement has to be evaluated at the date that it is presumed that the provision is met. That date is now presumed to be in 2023. In 2023, a reference to “Member States” no longer covers UK as UK is not an EU Member State anymore.

    I did not refer to any declaration under Article 31 VCLT as no such declaration is necessary in my reasoning. It suffices to disregard requirements that conflict with EU law. I also showed that such disregarding of conflicting provisions is required under EU law and practiced in CJEU case law.

    The AETR decision is not limited to treaties to which all EU states would be a party. It even prevents an individual EU state to enter into a treaty with a non-EU state if by doing so, a conflict between that treaty and EU law arises. See “17 In particular, each time the Community, with a view to implementing a common policy envisaged by the Treaty, adopts provisions laying down common rules, whatever form these 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.”

    Opinion 1/09 concluded that the envisaged treaty was incompatible with EU law because as a result of the participation by non-EU states (at the time, it was planned that e.g. CH would be a party), the envisaged patent court would not be a court of one or more member states. See
    “80. While it is true that the Court has no jurisdiction to rule on direct actions between individuals in the field of patents, since that jurisdiction is held by the courts of the Member States, nonetheless the Member States cannot confer the jurisdiction to resolve such disputes 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.” Herein, the notion “international agreement” is an agreement as mentioned before in paragraph 7 of the Opinion 1/09, viz. an “international agreement to be concluded between the Member States, the European Union and third countries”.
    and
    “82. It must be emphasised that the situation of the PC envisaged by the draft agreement would differ from that of the Benelux Court of Justice which was the subject of Case C-337/95 Parfums Christian Dior [1997] ECR I-6013, paragraphs 21 to 23. Since the Benelux Court is a court common to a number of Member States, situated, consequently, within the judicial system of the European Union, its decisions are subject to mechanisms capable of ensuring the full effectiveness of the rules of the European Union.”
    So, while a treaty including non-EU states would not be OK for a patent court that has to deal with (amongst others) EU law such as the unitary patent regulations, a treaty like the Benelux treaty establishing a Benelux court common to (some) EU states only would be OK.

    It is not just me that says that the UPC will be a court that fits in with what Opinion 1/09 allows under EU law; it is also the EU legislator that does so by explicitly referring to the UPC in Regulation 542/2014, which deals with both the Benelux court and the UPC in one set of added provisions.

    The CJEU has not been asked to look at the UPC Agreement under Article 218(11) TFEU because it has somehow been forgotten to do so; EU law does not provide a possibility to do so because the EU itself will not be a party to the UPC Agreement. In contrast, the draft treaty discussed in Opinion 1/09 could be submitted to the CJEU because the EU itself would be a party to that draft treaty. See Article 218(11) TFEU that only relates to agreements referred to in Article 218(1) TFEU.

    Article 87(2) UPC Agreement is not limited to conflict resulting from new EU law.

    In sum, there is nothing fundamentally wrong with the PPA or the replacement of references to London by references to one or more cities within the EU.

    1. Leo, I refer to my comments above. I should also add that your arguments for the PPA and UPCA are inconsistent with one another. As both are international treaties, what works for the PPA must surely also work for the UPCA. So, if we follow your logic, should we not just disregard the whole of Art 7 UPCA, on the basis that it conflicts with EU law?

       By the way, I agree with you about the lack of a mechanism for the CJEU to review the EU law compliance of the UPCA. However, this just serves to emphasise the point that the UPCA is a stand-alone international treaty that should only be interpreted in accordance with the VCLT (and NOT by reference to CJEU case law).

       It is true that Regulation 542/2014 defines the UPC as a court common to (some) Member States. However, it is an interesting question whether that fact alone serves to convert what is undoubtedly an international court into an “EU court”. To me, the answer to that question is clearly “no”. Whether the UPC’s set-up is consistent with the supremacy and integrity of EU law is a question that can only be answered by the CJEU, on the basis of substantive considerations and regardless of the views of the authors of Regulation 542/2014. It therefore remains to be seen whether the CJEU will accept preliminary references from the CJEU. Whilst this seems like a racing certainty in view of the political will behind the UPC, a shadow of doubt remains – as there is a chance that the CJEU will find it impossible to provide its blessing to the UPC without trashing some of its sacred legal principles.

       1. I also encourage readers to read the CJEU decision on EnergyCharter, emphasis on the ***a court of a Member State***:

          http://arbitrationblog.kluwerarbitration.com/2021/09/07/cjeu-ruling-in-moldova-v-komstroy-the-end-of-intra-eu-investment-arbitration-under-the-energy-charter-treaty-and-a-restrictive-interpretation-of-the-notion-of-protected-investment/

          “Such tribunals are not located within the judicial system of the EU, and cannot be regarded as a court or tribunal of a Member State within the meaning of Article 267 TFEU, and Awards rendered pursuant to Article 26 ECT are not subject to review by ***a court of a Member State*** capable of ensuring full compliance with EU law and guaranteeing that questions of EU law can, if necessary, be submitted to the CJEU for a preliminary ruling.”

11. @ L. Steenbeek,

    The interpretation of Art 87(2) you give is rather surprising not to say at odds with any legal common sense.

    The UPCA is a stand alone treaty for which the only way of interpretation is the VCLT, not just the way you wish to interpret it.

    Why were Art 31 and 32 mentioned in the explanatory note for the second ratification of the UPCA in the German parliament? Are the legally qualified people in the German ministry of justice, helped by Mr Tilmann, so ignorant of the way an international treaty should be interpreted How can you claim you know better?

    Art 87(2) can only be applied when the a new legislation relating to patents, directly or indirectly, be it at international level or at EU level has been ratified by the parliaments in the member states. I gave an example: the upcoming of an European SPC.

    Art 87(2) is not there to resolve a conflict with Union law about Art 7(2).
    This is a very specious interpretation.

    The conflict with Union law results from the non adaptation of the UPCA after Brexit.
    Have all the parliaments accepted an amendment to the UPCA allowing provisional transfer of the London duties to Paris and or Munich, and a subsequent transfer into another country. I am inclined to say no.

    The Administrative Committee of the UPC might be allowed to amended the Rules of implementation, but not what was the core of the treaty and certainly not Art 7(2) which is crystal clear.

    The only way to avoid a conflict with Union law would have been to renegotiate Art 7(2) before the entry in force of the UPC.

    The rest boils down to save, with every possible flimsy reasoning, a treaty which got a strong dent with Brexit.

    But in view of the interests at stake, it is absolutely necessary to save the “soldier UPCA”.

    Your arguments fail to convince.

12. May I refer the esteemed readers to some of Mr Steenbeek’s earlier musings, published as comments on the EPLAW blog in April 2011 (https://archive.ph/BJfcM#selection-993.1-999.454) and in June 2016 (https://archive.ph/nxqrX)?

    Noteworthy are the following sections from the April 2011 piece in particular:

    “2. Under Article 4(3) TEU, the EU states are obliged to excercise sincere Union loyalty. In particular, “The Member States shall take any appropriate measure, general or particular, to ensure fulfilment of the obligations arising out of the Treaties or resulting from the acts of the institutions of the Union.” This implies that EU states may not conclude an agreement amongst themselves that affects common rules or alters their scope. The same reasoning explains the exclusive Union competence in Article 3(2) TFEU. The common rules that would be affected / altered by a patent litigation agreement include Regulation 44/2001 and Directive 2004/48. In my view, this renders it impossible to go for an agreement in which only EU states participate.

    (…)

    3. An agreement has the disadvantage that it can only enter into force after ratifications, and we need it to cover at least all 25 states participating in enhanced cooperation, all 25 of which should thus ratify.
    This will take an awful lot of time, especially if one considers that Ireland needs a referendum while Denmark needs either a 5/6th majority in its parliament or a referendum. It may thus appear impossible to get the required at least 25 ratifications within a reasonable period in time.”
    These cumbersome ratifications are not necessary if one considers that using a treaty to create EU legislation is very old-fashioned. For example,
    – the Brussels Convention on jurisdiction and enforcement has now been replaced by Regulation 44/2001; and
    – the originally envisaged Community Trademark Agreement was never concluded because it was more efficient to adopt the Community Trademark Regulation.
    In view thereof, I would suggest that now that only EU states can be covered, the draft EEUPC Agreement is replaced by a regulation. I suggest that Article 114 TFEU is a suitable basis for harmonizing national enforcements systems for EP patents to get an EU enforcement system for EP patents including unitary patents. If Article 114 TFEU appears to be legally impossible as legal basis for a patent litigation regulation, Article 352 TFEU can be used.”

    It seems that Mr Steenbeek’s theories have a tradition of being among the most consistent and convincing ones forwarded by “Team UPC”.

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