There are now three interesting developments, albeit in quite different areas, which have in common the effort to avoid stepping on banana skins on the path towards a more unified patent system.

The first one, published last week, was a decision by the Court of Appeal (CoA) itself, which took the opportunity to clarify that a three member panel consisting only of legally qualified judges neither contravenes Art 9(1) UPCA nor violates Art 6 of the European Human Rights Convention (EHRC).

Why was this an issue? Because Art. 9(1) UPCA reads as follows:

Any panel of the Court of Appeal shall sit in a multinational composition of five judges. It shall sit in a composition of three legally qualified judges who are nationals of different Contracting Member States and two technically qualified judges with qualifications and experience in the field of technology concerned. Those technically qualified judges shall be assigned to the panel by the President of the Court of Appeal from the pool of judges in accordance with Article 18 UPCA.

If you are just a humble patent attorney like yours truly, you might think that this Article could hardly have been drafted more clearly. Is it not evident that this provision requires that the CoA must decide its cases in a multinational composition of five judges, among which must be three legally qualified judges (LQJ) and two technically qualified judges (TCQ)?

How naive have I been. Read the judgment, dear readers. It’s illuminating.

In fact, the CoA’s judgment is almost a paradigm case of “purposive construction” of a seemingly clear statute. The CoA derives from the last clause of Art 9(1) that there is a sort of (core?) panel of three LQJs to which the President of the CoA assigns (may assign?) two TQJs.

“The fact that technically qualified judges are assigned from the pool of judges, on the basis of their qualifications and experience in the field of technology concerned, confirms that they are not appointed permanently to the Court of Appeal and as such not part of the panel, until assigned to one on a case-by-case basis.”

The very first clause, which in my humble opinion would have suggested the opposite, i.e. that the panel must contain five members, was not really discussed by the CoA, which instead placed a lot of emphasis on the field of technology concerned. It is certainly true that there are cases of a purely legal nature, which are as such not “concerned” with a field of technology. Adopting a narrow reading of Art 9(1) UPCA, the President of the CoA would then have to assign TQJs from an “unconcerned” field, which may be a bit awkward.

The CoA referred to several further provisions in the Statute and the Rules of Procedure from which it can be taken that the CoA can also sit en banc, i.e. decide an important case “by the full court”, and that it may delegate certain tasks to a single judge. Well and good, but none of these provisions mention a three-member panel either.

I remain a bit concerned whether a three-member panel consisting of LQJs was really the composition intended by the drafters of the UPCA for purely legal questions. If so, they could have done a better job to clarify their intentions. Conversely, the interpretation reached by the CoA certainly is a pragmatic one, helps to economize on the UPC’s resources, enables faster decisions, and above all, ensures that the CoA’s previous decisions rendered in a three-member composition do not suddenly become illegal. Thus, a first banana peel was certainly avoided.

On the merits, the CoA decision dealt with the question whether, when and under which circumstances the public is allowed access to the written pleadings of the parties in a UPC case. The court’s second headnote provides the general principles:

When a request to make written pleadings and evidence available to a member of the public is made pursuant to R.262.1(b) RoP, the interests of a member of the public of getting access to the written pleadings and evidence must be weighed against the interests mentioned in Art. 45 UPCA. These interests include the protection of confidential information and personal data (’the interest of one of the parties or other affected persons’) but are not limited thereto. The general interest of justice and public order also have to be taken into account. The general interest of justice includes the protection of the integrity of proceedings.

What the court means by “integrity of proceedings” seems to be mainly a situation where a pending case is openly discussed in the public domain in a way which may, in the worst case, influence the court:

The protection of the integrity of proceedings ensures that the parties are able to bring forward their arguments and evidence and that this is decided upon by the Court in an impartial and independent manner, without influence and interference from external parties in the public domain. The interest of integrity of proceedings usually only plays a role during the course of the proceedings.

After a case has concluded, either by a decision or by settlement, however, the general interest of the public in free file inspection will usually prevail. And even during a pending case, third parties may obtain access to the written pleadings if they have a direct interest in the subject-matter of the proceedings, such as the validity of a patent that they are also concerned with as a competitor or licensee. Similarly, access may be granted where a party in the case is accused of infringing a patent by a product which is the same or similar to a product (to be) brought on the market by the third party. In such a case, the Court may, however, impose certain conditions on granting access, such as the obligation for that member of the public to keep the written pleadings and evidence he was given access to confidential as long as the proceedings are pending.

The second banana skin was placed on the floor by Technical Board of Appeal (TBA) 3.2.01 in case T 439/22, where the TBA announced that it would refer legal questions of claim interpretation to the Enlarged Board of Appeal, in particular whether it is permissible to interpret a (seemingly) clear term in the claim by using the description. While reliance on the description for claim interpretation is pretty standard for any infringement court, and in fact mandated by Art 69 EPC, the case law by various TBAs of the EPO has been much less clear, and it seems that TBA 3.2.01 thinks that a clarification by the Enlarged Board of Appeal will therefore be necessary.

The TBA has not yet issued its decision. It plans to do so by June 2024, so let’s not spend too much time on this developing story now. I only hope that the EPO avoids the banana peel for a harmonized patent law by coming to a view on claim interpretation that is consistent with the clear and unanimous (as far as I can tell) view of the judges of the UPC, namely that interpretation is always necessary and that the description of the patent is the primary source to use.

The third banana skin on the UPC’s path currently seems to lie in Ireland. The Irish government has now postponed the referendum to amend the constitution and allow transfer of (part of) its judicial sovereignty from Irish courts to the UPC, which was originally planned for June 7th. Thus, Ireland will not join the UPCA for a while.

In this article the Irish Times explicitly expressed the view that it is better to avoid a banana skin and allow voters to be properly briefed about the UPC than to risk another “resounding defeat” as recently happened with referendums on care and family. The journal mentioned a few factors – a lack of preparation, confused messaging, a lacklustre campaign – that might have been repeated in June, if the referendum had not been postponed.

As such, the Irish government’s decision to postpone deftly clears another banana skin from the UPC’s path, albeit just by kicking it down the road.


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  1. The Irish UPC referendum was doomed to failure in the current political climate, after the earlier 2 failed referendums in March, where there is a clear degree of mistrust among the population wrt the EU in the light of the current Irish government’s failure to address immigration, housing and health issues. The current coalition is well aware of this public mistrust, and has rightly decided to stall holding a referendum until such time as it will seem politically opportunistic with favorable winds to do so. Currently, the only groups I see in the Irish press touting UPC membership as a good thing for Ireland are IBEC, which does not appear to represent the view of Irish SMEs, but rather the large multinational non-Irish businesses that Ireland has so deftly been able to attract, and the legal services profession, of which the loudest voices are but local branches of the large litigation firms from the UK. Most of the comments from Irish politicians appear to be ludicrously short on any informed, or thought out reasoning. One Sinn Fein MP is quoted as having commented on how the UPC would be “good for content creators”. With that level of awareness amongst the political class, it is not hard to imagine that there is still a massive hill to climb to convince the public to “do the right thing”.

  2. Dear Mr. Bausch,

    You are not the only one to have raised an eyebrow upon reading this the UPC-CoA decision.

    Art. 21(3) of the Statute reads: “The panel may delegate, in accordance with the Rules of Procedure, certain functions to one or more of its judges.” The Statute is an integral part of the UPCA, see Art. 2(i) UPCA, so it is on the same footing as the UPCA itself. On this basis, there would not be any problem if, pursuant to the RoP, the panel delegated some matters like this one to these three LQJs.

    However, Art. 21(3) of the Statute presupposes that the five-member panel of Art. 9(1) UPCA already exists. To get around this limitation, one needs to adopt a less natural reading of the Statute and the UPCA, and/or to ignore the fact that the RoP cannot override the UPCA and the Statute, see Art. 41(1) UPCA.

    I am afraid that, like the EBA, the UPC-CoA has reached a convenient decision but has ignored the concept of hierarchy of norms along the way.

    1. Could not agree more.

      Question: given the 3LQJ composition of the panel, would it even have been possible IN THEORY for them to reach the opposite conclusion (namely that Art 9(1) requires a 5-judge panel)? Logic tells me that the answer to this question is “no” … in which case the composition of the panel also gives rise to an objectively justifiable suspicion of partiality on the interpretation of Art 9(1).

      Determining the correct TQJs for a decision is not hard. One need only look to the subject matter of (the claims of) the patent. I mean, what else would be done in cases where even the Court of Appeal agrees that TQJs are required?

      Also, I do not think that it helps the Court of Appeal’s cause to point to existing exceptions to the general rule of Art 9(1). As might be expected, all of those exceptions are very specific. If the legislators had intended to create a more general exception, ie covering ALL procedural matters, then they clearly would have done so. Moreover, as you point out, Art 21(3) of the Statute already provides a sensible route to 3LQJ panels.

      With this in mind, it is clear that paragraph 30 gives the game away regarding the REAL reasons for preferring 3LQJ panels for procedural matters. That is, the Court of Appeal believes that it simply cannot wait the time that it would take to deal with potential conflicts of interest for PART-TIME TQJs.

      So there you have it. One problematic aspect of the UPC (its potentially conflicted, part-time TQJs) leads to another problematic aspect (a clear breach of the rules governing the composition of panels of the Court of Appeal). I can only wonder what further problematic aspects of the UPC will emerge over time.

  3. “Conversely, the interpretation reached by the CoA certainly is a pragmatic one, helps to economize on the UPC’s resources, enables faster decisions, and above all, ensures that the CoA’s previous decisions rendered in a three-member composition do not suddenly become illegal.”

    So, cheap, fast and sweeping mistakes under the carpet. I hope I will never be at the mercy of a court that acts on these maxims.

  4. Dear Thorsten,

    You are not the only one querying the latest “performance” of the CoA of the UPC.

    I invite you to look at the following post on IPKat and the comments added in the post:

    There are more banana skins under the feet of the UPC:
    1) The provisional allocation of duties originally allocated to London to the Paris and Munich sections of the central division and then, the opening of a Milan section of the central division.
    2) The exit by the UK from a treaty not containing an exit clause.

    The provisional allocation of duties was decided by the presidium of the UPC in contravention of Art 7(2) UPCA and of Annex II of the same, even before the UPC actually opened its doors. Where was it ever seen that a court can decide by itself to amend and interpret its founding treaty and thereby willingly ignore Art 31 and 32 VCLT?

    The amendment of the UPC by the Administrative Committee of the UPC under Art 87(2) UPCA seems as well to be lacking a legal basis. According to Art 87(2), the Administrative Committee may amend the UPCA to bring it into line with an international treaty relating to patents or Union law. Which international treaty on patents or Union law can be used as a pretext to amend the UPCA as it has been done? In the decision of the committee there is also no trace of Art 31 and 32 VCLT.

    Art 87(2) UPCA has been designed to align the UPCA to legislations adopted in all contracting states, be it under a international treaty on patents or Union law, for example a EU SEP or SPC regime.

    Art 87(2) UPCA was never devised in order to adapt the UPCA to Brexit. This is even more the case since the UPCA does not contain any exit clause. The withdrawal of the UK with a simple “Note Verbale” is as well rather doubtful. Here as well the VCLT provides some mechanisms in the absence of an exit clause in an international treaty.

    It does thus not come as a surprise when the Court of Appeal decided to get rid of the 5 member composition for reasons of efficiency. Efficiency was also the reason invoked by the presidium when it decided to change the allocation of duties, even before the UPC opened its doors. The same can be said of the decision of the AC under Art 87(2) UPCA.

    However, what should matter here is the rule of law and not some efficiency considerations. Parties and the public at large should be able to trust a court. This is the reason d’être of Art 6(1) ECHR.

    Why have Art 6(1) ECHR and Art 31/32 VCLT not been considered when devising all those “adaptations” of the UPCA? The reasons are well explained the comment of “Interested3rdParty”: large multinational businesses and large Anglo-Saxon litigation firms originating from the US and having branches all over Europe, UK included.

  5. Dear Thorsten,

    As far as EP 3 076 804 (T 439/22) is concerned, the minutes of the OP held on 10.04.2024 make clear that an interlocutory decision will be issued on 10.06.2024.

    It is clear from the minutes that the board has decided a referral to the EBA on the application of Art 69 on the interpretation of claims in procedures before the EPO.

    In view of the diverging case law on the application of Art 69 in procedures before the EPO, the referral is more than welcome.

  6. if the problem were the high costs and the multinationals interests why not abolish the EPO as well? The national courts and patent offices are for sure more convenient and approachable by SMEs

    1. I would be more concerned with the “L’État, c’est moi” mentality of UPC – and EPO, for that matter.

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