Here we are (at last), the UPC has opened its doors to claimants. Attorneys-at-Law before national Courts, like European patent attorneys, can now bear the new title of “UCP Representative” and thus exercise a new function of representative before UPC. This raises a number of questions for them.
Like my colleagues, I have been consulted on the topic of possible actions before UPC for month now, sometimes recommending to go, sometimes not. In most cases, however, I have essentially questioned my clients’ real interest in using the system. Here are a few thoughts resulting from this exercise.
Observation no. 1: the most important is to keep clients’ interests at the forefront of our mind. Not always easy for us, when you consider that the first among us to use the system will set precedent and, perhaps, go down in history in the blink of an eye. But, having forgotten this essentially egotistical bias, we must also remember that a litigator likes to win, but, above all, hates to lose. It’s not so much the thirst to win that should guide us in our task as the detestation of losing. In this case, the system is still in its infancy, which is why we must remain restrained in our advice, always guided by this hatred of defeat, which, in the final analysis, is and remains the best compass for working effectively in the interests of our clients.
Observation no. 2: the system offers numerous possibilities for litigation strategies. Particularly with regard to the territory covered. For example, it seems conceivable to carry out a saisie-contrefaçon in France for infringement acts committed in another territory, particularly if there is a contributory infringement (i.e., supply of means). More generally, it is reasonable to assume that many litigations begin with saisie-contrefaçon before extending to the whole territory, with possible preliminary injunctions in between.
Observation no. 3: collaboration between representatives of different nationalities and qualifications should, in principle, be on an unprecedented scale and, at the end, very fruitful. This is of course due to the territories where the actions will be carried out, but also either because of the legal instruments used (saisie-contrefaçon or preliminary injunctions are often linked to certain countries without it being necessary to name them) or because of the technical fields (i.e., due to the technical specialization of certain patent attorneys).
Observation no. 4: UPC is the result of pan-European efforts, in which we find here and there traces of one system or another. This also implies potentially dangerous consequences, which is likely to give rise to a number of difficulties: what about cases in which the UPCA’s provisions diverge from those of the national laws in question? Let’s take the example of article 25 of the UPCA: export does not constitute an act of infringement. This is also the case in German national law for instance (Sec. 10 of the Patentgesetz). On the contrary, in France, export constitutes an act of infringement (art. L. 613-3 of the French Intellectual Property Code). Which law should prevail in this case for acts committed in France? The UPCA regulation should certainly prevail, by virtue of the direct applicability of European regulations. However, the scope of such applicability is uncertain. Should the UPCA regulation apply only to unitary patents, or also to non-unitary European patents and national patents? In principle, as surprising and even shocking as it may seem, national titles should not be affected. Articles 24, 25, 26 and 29 of the UPCA refer to a “patent”, which is defined in Article 2(g) as a European patent or a unitary effect. On the other hand, the national patent, which is referred to in article 29, is distinguished and the Agreement is not intended to apply to it. However, in both cases, we are the owners of an invention, in other words, the right of ownership of the invention remains identical, even if the title recognizing this right is different. Is this not a breach of the principle of equal treatment under European law (article 21 of the Charter of Fundamental Rights of the European Union and article 2 of the Treaty on European Union)? For sure, we’ll have some complicated discussions here, such as: what about export to a country outside the Agreement (i.e., UK), in this case does export nevertheless constitute an act of infringement under French law or not? Does it depends on the type (EP/ unitary EP or FR) of patent you invoke, or not?
Observation no. 5: last but not least, should we prefer to be claimant or defendant? At first glance, this may seem a strange question, because, as litigators, we don’t really choose, however, we can’t help but wonder. It seems to me that everything depends on the claim. I won’t propose any risk that seems too great for the time being, preferring to stick to classic litigation strategies (“à la française” with first a saisie-contrefaçon and then an action on the merits). Because I prefer security for my clients. Of course, this doesn’t depend solely on me, and urgency may call for riskier procedures such as preliminary injunctions (that are very exciting in btw.); but I would only favor them if they appeared to be the only solution. The truth is, as it is often the case before the Courts, it might seem easier to defend a case, at least for the start of a new Court (more especially for this one in fact). Admittedly, the system requires (welcome) speed. That said, let’s not forget that this system is still subject to numerous controversies which could easily justify an appeal to the European Union Court of Justice (see, for instance, here, one of the most interesting Miguel Montañá’s posts). In other words, there is little doubt that the first defenses will soon see the emergence of this type of appeal to the EUCJ. Nor is this to be regretted, as it should strengthen the legitimacy of the system as a whole.
In conclusion, beyond these few thoughts, it seems clear that while the opening of the UPC will only become truly “historic” with the hindsight that only time can offer, there can be little doubt that, along with the unitary patent, UPC already constitutes a new tool offering a number of litigation strategies to its users to enforce their rights, which we can only welcome.
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“That said, let’s not forget that this system is still subject to numerous controversies which could easily justify an appeal to the European Union Court of Justice (see, for instance, here, one of the most interesting Miguel Montañá’s posts). In other words, there is little doubt that the first defenses will soon see the emergence of this type of appeal to the EUCJ. Nor is this to be regretted, as it should strengthen the legitimacy of the system as a whole.”
When can defendants raise those issues? The Charter of Fundamental Rights of the EU also has a similar guarantee of a Tribunal Established by Law, which there are strong doubts the UPC is, since the signature of the UK is still missing.
Any person may file an action for annulment targeting the UPCA before the EUCJ (art. 263, 264 and 266 of the Treaty on European Union).
The questions you are raising in your Point 4 make me wonder.
My understanding is that non-unitary patents which are opted out from the UPC are therefore not in scope of the UPCA provisions. By opting-out, patentees decide to exclude their patent from the competency of the UPC, and the logical conclusion I derive from this is that it also has the consequence of excluding it from the provisions of the UPCA. I cannot really come to a different conclusion, but would be interested to read your thoughts on this.
Admittedly, the very idea of a unitary effect that differentiates certain European patents from others is, in itself, strange (they are, after all, the same patents). However, as it stands, the system implies that certain patents will have a unitary effect on all the territories for which the Agreement has been ratified. Thus, an opt-out simply makes it possible to exclude a patent from the system to protect it from “unitary” attacks.
However, the European Regulation makes no mention of the fate of substantive law rules, and these rules are undoubtedly intended for all European patents. In fact, when it refers to substantive law, it means both European patents (with opt-out) and those with unitary effect. Indeed, the text systematically refers to “a patent” in relation to substantive law (art. 25, 26, 27 and 29), and not to a “European patent with unitary effect”. However, according to the definition in the Agreement, a “patent” is a European patent or a European patent with unitary effect (art. 2 g).
Moreover, from a fundamental point of view, an inverse rule would contradict the rule of equal treatment resulting from European Union law: in this case, certain invention owners would be discriminated against according to the title recognizing their rights. The owner of a unitary European patent might not be able to prohibit export, while the owner of an opt-out patent might be able to prohibit export. Yet these are two owners of inventions (who should therefore be treated in the same way), albeit with different titles, and in reality their titles are not even really different (since only the potential unitary effect differentiates them).
Finally, once the agreement has been ratified, its rules apply throughout the territory of the member states. If there is a contradiction, in principle the Regulation prevails.
Your comment appears rather favourable for proprietors.
I am looking at the situation of a potential infringer or a party seeking nullity of a European patent.
The possibility of an opt-in following an opt-out, raises in my opinion some issues which are not resolved.
During the transitional period, an opt-out is always possible, cf. Art 83(3) UPCA. Provided no action before a national court has been started, such an opt-out can be withdrawn at any moment during the life of the patent, cf. Art 83(4) UPCA. It is clear that an opt-in has an ex tunc and not an ex nunc effect. It will at least end up with the end of the transitional period.
Question:
Is, during the transitional period, an opt-in possible once an action before a national court has exhausted all means of redress and has become res judicata? What is the the value of such a “national” decision if after an opt-in, the UPC looks again at the case?
The question of a possible retroactive application of the UPCA also arises.
If an opt-out is requested by the proprietor, then the EP falls into a bundle of national patents which can only be attacked before separate national courts in the member states in which the patent has been validated. The same applies for an action for infringement. It can only be started at a national court.
When the opt-out is withdrawn, the patent then falls under the exclusive competence of the UPC, and for all member states of the UPC.
For any possible infringer, the situation changes drastically after withdrawal of the opt-out.
From only being able to be summoned before a national court with limited territorial competence, he will then be able to be summoned in front of an international court with a much more extended territorial competence.
If the EP has fallen into a bundle of national patent any action in order to obtain a declarative judgement of non-infringement can only be thought for at national level. It is then only valid in the country in which nullity has been acquired, but at a much lower cost as before the UPC.
Once the patent becomes a UP after withdrawal of the opt-out, then the possible infringer can only obtain a declarative judgement of non-infringement at the UPC. If the patent is susceptible to affect its business, the party seeking nullity will have to act at a much higher cost, to start with the basic fee, before the UPC.
In any case the possibilities offered to a potential infringer or a party seeking nullity of a granted European Patent depend on a decision of the proprietor to withdraw the opt-out.
It is doubtful that such a retroactive change of position to the detriment of a potential infringer, but to the exclusive advantage, and only within the realm of the proprietor is at all tolerable.
This open issue is further exacerbated in view of the possibility of being invited to intervene, cf. R 316 UPCA, and of a forced intervention R 316A UPCA.
I have some difficulties with “strengthening the legitimacy” of the whole UPC!
A court without the possibility of a revision and in which the proprietors are unduly advantaged, as are patent holders from outside Europe!
Legitimacy as legally well founded is another legitimacy than that offered to big industrial firms helped by lots of lawyers in internationally acting lawyer firms!