In June 2023 the European patent landscape will see one of the most dramatic changes in decades with the introduction of the Unitary Patent (UP) and the opening of Unified Patent Court (UPC). In a short series this blog will go through the main characteristics of the system and decisions that need to made to get ready and to protect inventions, both new and existing. Part one: the bumpy road of the creation of the Unitary Patent system.
For decades the creation of a truly harmonized European patent system has been on the agenda. Since 1978 the European Patent Office (EPO) has been examining European applications and granting patents for its (currently) 39 member states. This was just a first step. Traditional European patents have to be validated in every single member state; they are essentially a bundle of patents enforceable before national courts according to different national legislations and procedures. The Unitary Patent is something else, once granted it will be valid in every UP member state and has to be maintained by yearly payments of renewal fees to the EPO. The new Unified Patent Court is the only competent court in case of conflicts.
Negotiations about the Unitary Patent system came off the ground after the Court of Justice of the EU (CJEU), as requested by the European Council, had concluded in 2011 that setting up a court with exclusive jurisdiction for both European patents granted by the EPO and EU patents with unitary effect was incompatible with EU law, as it “would deprive courts of [EU, ed.] Member States of their powers in relation to the interpretation and application of European Union law. The agreement would also affect the powers of the Court to reply, by preliminary ruling, to questions referred by those national courts.” (Opinion 1/09)
After this ruling it was decided to set up the Unified Patent Court Agreement (UPCA) outside the EU framework, but open to EU members only. It was signed in 2013 by 25 states. In the meantime, the EU regulations 1257/2012 and 1260/2012 about enhanced cooperation for a unitary patent had entered into force in January 2013.
Although Poland was involved in the process up to 2013, in the end it didn’t join the Unitary Patent project out of concern it would harm its economy. Spain stayed out as well. It objected and objects to the language regime for the Unitary Patent, which doesn’t include Spanish as official language. Italy only fully joined after the CJEU had rejected two challenges (in 2013 and 2015) of the new system.
Constitutional complaints filed in Germany severely delayed the start of the UP system
Just when it seemed all hurdles were out of the way, the UK – paramount in the creation of the UP system – voted to leave the European Union on 26 June 2016. After initial declarations of the government of prime minister Theresa May that the Brexit would not change its position regarding the Unitary Patent system, it was Boris Johnson who pulled the plug in 2020. He declared the UK would withdraw from the UP and UPC, leaving its members in uncertainty about what should happen to the pharma division of the Court, which had been designated to London.
Another blow was a constitutional complaint against the UPCA, filed in March 2017 by German patent lawyer Ingve Stjerna. The three years that it took the German Federal Constitutional Court (FCC) to decide the case were years of stagnation. The FCC upheld parts of the complaint, due to procedural flaws: the German Act of Approval of the UPCA should have been ratified by a a two-thirds majority in both chambers of the Bundestag, and this hadn’t been the case.
Late 2020, the procedure was repeated in the proper way and although two new constitutional complaints were filed immediately, these failed to delay the process for another long period. In June 2021 the FCC rejected two applications for an interim injunction against German UPCA ratification, and made clear the main proceedings had no chance whatsoever to be successful. From that moment preparations relaunched with full vigour. The thirteenth – Austrian – ratification of the UPC’s Protocol for Provisional Application (PPA) on 18 January 2022 marked the birth of the Unified Patent Court as an international organisation and the start of an official period of preparations.
The thirteenth – Austrian – ratification of the UPC’s Protocol for Provisional Application on 18 January 2022 marked the birth of the Unified Patent Court as an international organisation
Judges were appointed in October 2022. Klaus Grabinski from Germany was appointed president of the Court of Appeal and the French judge Florence Butin president of the Court of First Instance. The recruitment of a few more judges is underway. Alexander Ramsay, long-time chairman of the UPC’s Preparatory Committee, was recently appointed as the court’s first Registrar. A first training for judges took place in Hungary in January.
Currently, IT systems are being prepared for registering unitary effect and handling cases of the UPC, among others. An initial roadmap foresaw 1 January 2023 as the beginning of the Sunrise Period – a period of three months preceding the UPC’s opening, during which European patents can already be opted out from the jurisdiction of the court – with an entry into force of the UPCA on 1 April 2023. But both dates were postponed two months because of problems with accessing the UPC’s content management system. ‘The additional time is intended to allow future users to prepare themselves for the strong authentication which will be required to access the Case Management System (CMS).’
Since 1 January of this year, it is already possible to request transitional measures for traditional European patents with a view to the entry into force of the Unitary Patent system. Forms have been made available relating to requests for unitary effect, as well as to requests for delay in issuing the decision to grant a European patent, so as to benefit from unitary effect in due course.
As Article 89 of the UPCA says, the Unitary Patent system and the UPC will fully start functioning on the first day of the fourth month after Germany deposits its instrument of ratification with the European Council. As things stand now, Germany will do this in in February, in close contact with the EPO and UPC management, which means the court will open its doors on the first of June 2023.
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Great! I look forward to filing my first revocation action at the central division of London! Could you please give me the address?
As Article 89 of the UPCA says, the signature of the UK is still required for its entry into force.
Any other reading should be challenged in court.
“In June 2021 the FCC rejected two applications for an interim injunction against German UPCA ratification, and made clear the main proceedings had no chance whatsoever to be successful.”
When Karlsruhe denied escalading violation of EU law to the CJEU (notably TEU 19.1, TFEU 267), using a dubious argument of “we only do it when fundamental rights are involved”.
It’s called a political decision.
Dear Mrs Claessens,
The decision of the FCC rejecting the claims about the independence of the BA is as well a political decision.
In view of the political context, it could, at a pinch, be understandable the FCC did not want to open Pandora’s Box and declare the UPCA or the appeal system of the EPO illegal.
As far as the rejection of the complaints for the UPC is concerned, some important considerations in the first decision negating the ratification were not found in the second decision.
As far as the complaints about the EPO appeal system are concerned, only one complaint was filed after 2016. What would the FCC have said without the reform of 2016? For all interested people it was manifest that the reform had only for aim to increase the perception of independence of the boards.
With due respect to the importance and function of the FCC, I would expect a bit more argumentation as to the substance.
By claiming that in the complaints against the UPCA and the EPO appeal system, the respective requests were not sufficiently substantiated and hence had to be rejected, the FCC makes its life a bit too easy.
Well, there are also other reasonable opinions. E.g. the view in this IAM article is that the FCC decision on the EPO needs to be understood in view of the UPC sunrise:
https://www.iam-media.com/article/german-court-establishes-legal-certainty-appeals-against-epo-decisions
“To the extent that the complaint was dismissed as inadmissible, the court’s decision is unsurprising
…
the court took the opportunity to define some general principles for inter-governmental courts, the minimum standards for legal protection and the independence of judicial bodies. The court seems to continue to oblige German legislators to ensure that supranational or inter-governmental courts comply with rule-of-law principles.
Such a detailed decision on these merits was unnecessary, since the complaint was rejected as inadmissible. This indicates that these standards should be established with a view to the Unified Patent Court”
Dear Denis,
Thanks for drawing the attention on what has been published in IAM.
To be honest it paraphrases the FCC decision and does not bring one more element forward, but the wink with a barge pole for the UPC. This is indeed unsurprising coming from IAM.
As far as the UPC is concerned, the last word has not yet been said. It is difficult to reconcile the way supporters of the UPC want to fiddle with the UPC, e.g. revision at 8.00 the day the UPC opens at 9, and the rule of law.
Just look at the post of Mr Montana on this blog.
https://patentblog.kluweriplaw.com/2023/01/31/what-will-the-irish-population-vote-on-in-the-upc-referendum/
It does however not alter the fact that it took the FCC more than twelve years to deal with the oldest complaint.
I can agree that the decision is unsurprising, but it fails to convince. The reference in the FCC’s decision to EU institutions is somehow surprising as the EPO is anything but a EU institution.
That the FCC does not want to be entangled in what are actually foreign policy matters is understandable, but does not exonerate the FCC to take a decision in a reasonable time.
One fundamental question has not been answered: why did it take 6 years for the FCC to hide behind the reform of 2006. This reform was there to increase the perception of the independence of the boards and not their real independence.
The proposals of the EPO in 2004/2005 would have brought a real independence to the boards, albeit at the price of a further revision of the EPC. Whether it was wise to launch such a proposal a few years after the Diplomatic Conference which had not yet been ratified and entered into force remains open.
Dear DX Thomas,
I do not know why it took so long to decide. But I would not be surprised if the EPO Board of Appeal reform was the result of these complaints triggered by informal information exchange between the German constitutional bodies including the FCC and the FCC was waiting for its completion (as this is an international matter it cannot be handled in Germany alone by simply invalidating some acts and needed special treatment therefore). Then the complaints became inadmissible after the reform and the FCC gave everybody enough time to adjust to the changed legal situation. In Germany, we are used to expect many years for such kind of FCC decisions given the huge number of constitutional complaints filed each year and the rather low level of importance for the public of this decision (not to mention the legal complexity and the goal of the FCC to reach an unanimously decision). And here the clock was simply reset after the EPO reform, which is kind of obvious.
Hence, I find the decision quite convincing and in line with the established FCC case law: Every German lawyer needs to learn that the FCC is no super-revision instance quite early in the legal studies. Especially, as it is no such instance, you cannot expect the same speed for a decision as in the normal legal system.
I am also not biased regarding the author of the IAM article. The article fulfills typical German legal scholar standards and comes from someone with some academic background on legal arbitration (and no IP law background), which matches well with that kind of internal treaty matter.
“The court seems to continue to oblige German legislators to ensure that supranational or inter-governmental courts comply with rule-of-law principles”.
This assumes that the German legislators will do their job (and that, to date, they have done their job). I see no evidence of this. For example, what are German legislators doing to ensure that the EPO abides by rulings of the ILO AT? Or to otherwise ensure that the EPO respects fundamental rights enshrined in the ECHR and EU Charter of Fundamental Rights?
That the FCC decided to pass the buck is clear. Whether, from a rule of law perspective, they should have done so is another question entirely.
There is one simple way: that the AC does carry out its role of control organ and stops rubber stamping what comes from and the 10th floor.
This is not just something for German authorities but for the authorities of all member states sitting in the AC.
If they continue milking the cow as they presently do, the cow might stop giving milk!
Immunity should not be equated with impunity.
Dear Patent Robot,
You seem to have forgotten that the Administrative Committee of the UPC will amend the UPCA according to Art 87(2) at 8.00 on the day the UPC will open its doors at 9.00. In the eyes of the UPC supporters, there is thus no need for an address in London!
There are however some “minor” problems:
– Art 87(2) is not mentioned in the PPA and still mentions expressis verbis the UK, and Art 7(2) UPCA still mentions expressis verbis London.
– Art 87(2) UPCA has a different function than that thought by the proponents of the UPC, but this is no more than a trivial nuisance which can easily be ignored.
– The UPC does not contain an exit clause and the VCLT has some provisions in this situation which as well cannot be ignored.
– In view of the clear wording of the PPA and of the UPCA, there is not much to interpret under the VCLT
Note: for the proponents of the UPC it is possible to ignore the VCLT, so life is easy. Furthermore, by ratifying the UPCA, the parliaments have given the AC Committee of the UPC any power it needs for amending the UPCA at will.
A more detailed argumentation on those points is to be found under:
https://blog.ipappify.de/is-after-brexit-the-upc-agreement-compatible-with-eu-law/
Up to now, I have not heard any argumentation against the views expressed in this post.