“One person’s happiness is another person’s misfortune” (i.e., “le bonheur des uns fait le malheur des autres”)… This French proverb could easily be applied to the subject I’m dealing with today: conflicts between UPCA and national laws, which will undoubtedly be a joy for legal Counsels and a misfortune of the system’s users, mostly because of the resulting legal uncertainty.

I’ll confine myself here to the case of French law, in keeping with my role here as French referent of this blog, but it should be noted that this problem is not particular to France; we also find, for instance, numerous disparities between the UPCA and preexisting German law (one need only compare Section 10 of the Patentgesetzt with Article 25 UPCA to see this).

Firstly, without claiming to be exhaustive, either on the differences or on their analysis, we can quickly identify some examples. Firstly, Article L. 613-3 of the French Intellectual Property Code prohibits export, which is not covered by Article 25 of the UPCA. Ordinance No. 2018-341 of May 9, 2018, that amends French law to bring it into line with the UPCA, modifies Article L. 613-3, but merely replaces “mise dans le commerce” (i.e., “put on commercial sales”) with “mise sur le marché” (i.e., “placing on the market“).

Regarding exceptions to infringement, UPCA gives a stricter definition of the “Bolar” exception (generic drugs, European Union MA) than French law (any drug, MA for any territory). There is also a more singular exception, known in French law (and not in the UPCA), for “objects intended to be launched into outer space and introduced into French territory“. Under this exception, there is no infringement of a foreign satellite launched from France (including French Guiana from where Ariane launchers are launched) which contains components likely to infringe a patent having effect in France.

Secondly, with regard to the interpretation of these conflicts of laws, three possible approaches: Distinguishing according to the type of title involved (a different law for a French patent than for a unitary patent, for example), applying the Agreement to all titles, or the application of national law by national courts and of the Agreement by the UPC.

The last position has been adopted by the Preparatory Committee. On January 29, 2014, the Preparatory Committee of the Unified Patent Jurisdiction published an interpretative note under which national courts seized during the transitional period must apply their national law. Thus, according to this interpretation, national courts should apply their national law, while the UPC should apply the Agreement. As a result, the law applicable to a case would depend on the court seized, so that the outcome of a case could be totally different depending on the said court (e.g. Bolar exception, or export, etc.).

However, the position adopted by the interpretative note is perplexing. I fail to see how it can be legally founded, either in terms of the UPCA or the fundamental principles recognized by European law. In any case, it will undoubtedly be up to national courts to decide, since they will be the only ones in a position to do so.

At the end of the day, we can only conclude that there is no clear answer to the question of the applicable law in the event of a difference between national law and the UPCA. Perhaps the possibility of a interlocutory ruling from the Court of Justice of the European Union could provide a solution to this difficulty?


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  1. Also the wording of the research exemption will be different. So the same act is infringing when litigating before the UPC and non-infringing in litigation before national courts.

  2. This question has been debated for at least a decade now. See, for example:

    Frankly, it is a disgrace that the Participating Member States have brought the UPC into force without doing anything to provide a clear answer to such an obvious (and serious) problem.

    1. You’re right, but although differences are reported here and there, to my knowledge we don’t have a general study of all these differences across Europe, or even by country, and, as you point out, still no solution. At the end, it is difficult to give answers (especially when we are building proceedings tactics that include UPC).

      What is certain, however, is that the interpretative note referred to above sets out a solution that is, to say the least, surprising.

      1. Someone has to lead by example and provide the analysis for their national law (national patent, European patent with and without unitary effect), haven’t they …

      2. The law(s) that the UPC will apply is one matter. However, enforcement of the UPC’s decisions will only not be open to challenge if those decisions align with the laws of the relevant Participating and/or Contracting Member States. What will therefore matter in the end are the infringement provisions that apply under the NATIONAL laws of the Participating Member States (and other UPCA Contracting States).

        To determine the applicable laws, it is necessary to consider:
        a) the legal effects of the UPCA provisions under the various national laws;
        b) whether the UPCA provisions conflict with those of national law, EU law, the EPC and/or other international treaties relating to patents; and, if so
        c) how those conflicts should be resolved.

        Determining a) and b) above is FAR from straightforward, as it requires detailed consideration of the constitutional arrangements / conventions of the countries concerned AND the conventions applied in those countries for determining whether there is any conflict between a national law and an international treaty (or between two international treaties).

        However, some conflicts are evident even before detailed consideration is given to points a) and b) above.

        For example, Article 64(1) EPC suggests that national patents and European patents (of ANY type) should confer the SAME rights. A plain reading of Article 64(1) EPC therefore conflicts with both Article 5 of the UP Regulation and the 29 January 2014 interpretative note of the UPC’s Preparatory Committee.

        There are no doubt attorneys out there that will provide “creative” explanations of why there is no conflict on that ground. However, no amount of creativity will be able to explain away the worst conflict, which is with the principle of LEGAL CERTAINTY.

        In this respect, the problem with the UPCA is the combination of:
        1) the lack of harmonisation amongst the various national laws and the UPCA; and
        2) the ability of a patent proprietor to take POST-FILING actions that, in view of that lack of harmonisation (and the provisions of the UPCA and the UP Regulation), could change the law(s) under which infringement will be judged.

        Actions to mention under 2) above include the following.

        Firstly, a request for “unitary effect”. This can be filed up to 1 month after grant, and possibly even later than that.

        Secondly, filing an opt-out. In the absence of a prior, relevant (UPC) court action, an opt-out can be filed any time up to 1 month prior to the end of the UPCA’s transitional period.

        Thirdly, withdrawal of an opt-out. Absent a prior, relevant (national) court action, an opt-out can be withdrawn at any time.

        Fourthly, with a “non-unitary” patent, a proprietor can choose to litigate at either a national court or at the UPC.

        It is an affront to the principle of legal certainty that any such POST-FILING actions might make a difference to whether an act committed by a third party infringes the patent. The situation is made even worse by the fact that these actions are entirely within the control of the patent proprietor.

        The only interpretation of the law that might eliminate this problem is one where the same provisions apply to all types of EP patent (unitary EP, opted-out EP and not opted-out EP). Of course, that is the only interpretation that cannot reasonably be derived from the UPCA and the UP Regulation (bearing in mind the effects of the EPC and national laws).

        All of the above was either self-evident or well known before the UP Regulation was drafted and the UPCA was signed. The authors of those documents have therefore (deliberately) created a hugely complicated mess of conflicting laws and then simply walked away … apart, of course, from those authors who will now earn a decent living from dealing with the fall-out of the mess that they helped to create.

        Disgraceful. Absolutely disgraceful.

        1. Don’t European Union Law (more especially its fundamental principles), which is above National Laws. Its application may be crucial for this type of question. I’m thinking in particular of the principle of equal treatment or the fundamental nature of the right of property, which applies to all owners, and which should prevent different treatment for owners of the same type of good (an invention).

    2. And let’s not forget the Max Planck study on SPCs (May 2018) and its recommendation on this matter (page 357)!

      1. You mean a uniform regim of the Bolar Exemption and a broad acceptation of it? I’m agreed. Actually it is the interpretation adopted in France (as in other Contracting Member States, i.e., Germany, Italy and Ireland).

  3. The blueprint is as follows:

    The matter will be referred to the CJEU under a carefully written question that implies the answer, as happened with the Phoenix case regarding preliminary injunctions for patent infringement.

    This move will work on first-come-first-served basis, as CJEU does not have much clue of patent law. Whoever comes first to set/refer the question in their terms.

    1. The odds are that CJUE is going to be busy on UPC preliminary questions from the outset (this could take place for its very first case, the Amgen Sanofi antibody case). If so, CJUE will have no choice but quickly climb the learning curve as to patent law.

      1. Are you referring to the question that has already been asked to CJUE?
        I heard about it but didn’t find any trace. If you have an input, it would be greatly appreciate.

  4. No, I have no information about a question already asked to CJEU. I was only suggesting that UPC cases will likely give rise to referrals fairly soon. The first UPC case (Amgen Sanofi antibody case) is a revocation case, it relates to a patent which has just been granted by the EPO. If there are oppositions, this would raise the issue of whether UPC proceedings should be stayed and of the factors to be considered.

    Other referrals could take place soon on procedural issues e.g. the production of evidence under Art 59. The recent decision C 628-21 addressed the right to information in a copyright case.

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