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The Viability of the Unitary Patent Package After the UK’s Ratification of the Agreement on a Unified Patent Court

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Abstract

The viability of the unitary patent package after the Brexit vote depends, to a large extent, on a political choice. However, whichever choice is made will entail certain legal consequences that deserve careful consideration. This article analyses the various possible scenarios for the viability of the unitary patent system after the UK’s ratification of the Agreement on a Unified Patent Court. The study traces different angles, with and without the participation of the United Kingdom in such system. Along this line, the hypotheses used cover several situations, either blocking the UK’s participation in the system or envisaging it to the fullest. The consequences of the UK’s participation in the system for third States are also addressed. The study reveals that there are several alternatives for setting the system in motion after the UK’s ratification of the Agreement on a Unified Patent Court; however, the option of keeping the status quo is not among them.

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Notes

  1. Hess and Requejo Isidro (2016).

  2. OJ C No. 175, 20.06.2013.

  3. The UK Government announced on 28 November 2016 its willingness to continue with preparations to ratify the UPCA: https://www.gov.uk/government/news/uk-signals-green-light-to-unified-patent-court-agreement (last accessed on 22 August 2017).

  4. OJ L No. 361, 31.12.2012.

  5. OJ L No. 361, 31.12.2012.

  6. OJ L No. 76, 22.03.2011. Criticism regarding the use of enhanced cooperation in this field can be found in Lamping (2011), pp. 912–913; Lamblin-Gourdin (2012), pp. 254–269; Pocar (2014), pp. 3–5.

  7. European Patent Office: “Unified Patent Court”, available at https://www.epo.org/service-support/faq/procedure-law/upc.html (last accessed on 22 August 2017).

  8. See the ratification status at: http://www.consilium.europa.eu/en/documents-publications/agreements-conventions/agreement/?aid=2013001 (last accessed on 22 August 2017).

  9. See the opinions that urge the UK to ratify the UPCA while it holds the status of EU Member State, Gordon QC and Pascoe (2016), para. 115; Hoyng (2016); Ohly (2016); Tilmann (2016). Justifying such ratification, McDonagh (2017). Contra, Jaeger (2016), p. 21, criticising that these opinions are based on formalisms, without taking into account the effect of the UK’s ratification – knowing that the UK will leave the EU.

  10. Apparently, there are no constitutional obstacles for the UK’s ratification of the UPCA. See Gordon QC and Pascoe (2016), para. 49.

  11. It could be advocated that it is a sui generis source of EU Law, taking into account the precedent set by the 1968 Brussels Convention (DO C No. 27, 26.01.1998), which was qualified as such (Ekelmans (1999), p. 190; Tagaras (1999), p. 173). However, the difference lies in the participation in the Brussels Convention of all the Member States of the – at that time – European Communities from the beginning. Moreover, the consistent interpretation of that Convention lied with the Court of Justice of the European Communities, which is not the case in relation to the interpretation of the UPCA.

  12. In the same vein, Jaeger (2016), pp. 21–22; Stjerna (2016a)-2, p. 6.

  13. DO C No. 326, 26.10.2012.

  14. Tilmann (2016); Ohly (2016).

  15. DO C No. 326, 26.10.2012.

  16. From the moment of triggering of Art. 50 TEU until the date of entry into force of the withdrawal agreement, the State in question shall not participate in the discussions of the European Council or Council or in the decisions concerning the withdrawal (Art. 50.4 TEU). However, nothing prevents its compliance with EU law in the meantime.

  17. Judgment of the CJEU (First Chamber), 26 May 2011, joined cases C-165/09 to C-167/09, para. 78.

  18. According to Art. 7.2 UPCA, the central division will have a section in London. Although nothing in the wording of the UPCA requires that the sections of the central division must be located in a Member State, that requirement is demanded for the local divisions (Art. 7.3 UPCA). Therefore, it could be assumed, mutatis mutandis, that this is a necessary requirement also applicable to the sections of the central division.

  19. The section of the central division placed in London has an assigned location since August 2015: the Aldgate Tower. See the website of the UK Government: https://www.gov.uk/government/news/upc-london-location (last accessed on 22 August 2017).

  20. The call for applications for covering positions of legally qualified and of technically qualified judges was open from 9 May to 4 June 2016. Information available at: https://www.unified-patent-court.org/news/upc-judicial-recruitment (last accessed on 22 August 2017). 16% of the 840 candidate judges originated from the UK. See http://kluwerpatentblog.com/2016/07/08/840-candidate-judges-for-the-unified-patent-court/ (last accessed on 22 August 2017).

  21. As suggested in Gandía Sellens, (2016).

  22. United Nations, Treaty Series, vol. 1155.

  23. This situation of the UK resembles in a certain way to the previous position of Italy. Italy signed the UPCA without taking part in the enhanced cooperation authorised by Decision 2011/167/EU, in the area of the creation of unitary patent protection. This implied that Italy took part in the system only regarding the UPC jurisdiction on the “classic” European patents granted for Italy. See Scuffi (2014), pp. 86–87. However, thereafter Italy joined the aforementioned enhanced cooperation (see Commission Decision (EU) 2015/1753 of 30 September 2015 on confirming the participation of Italy in enhanced cooperation in the area of the creation of unitary patent protection – OJ L No. 256 of 1 October 2015). Nevertheless, the fundamental difference between the British and the Italian case is the membership to the EU. Therefore, both cases cannot be equally treated.

  24. OJ L No. 351 of 20 December 2012, amended by Regulation (EU) No. 542/2014 (OJ L No. 163 of 29 May 2014).

  25. OJ L No. 339 of 21 December 2007.

  26. Article 31 UPCA.

  27. There are differences in these two set of rules (cf. Art. 71b Brussels I Recast).

  28. European Free Trade Association.

  29. Gordon QC and Pascoe (2016), para. 109; Jaeger (2016), p. 17.

  30. It is worth recalling here the “reflexive effect” theory conceived by Droz (1972), pp. 109–110. According to this theory, if the exclusive jurisdiction grounds are located in a third State, the courts of that State should be the competent. However, the CJEU established the mandatory nature of the Brussels system of jurisdiction (see the Judgment of the CJEU (Grand Chamber), 1 March 2005, Case C-281/02, Owusu, paras. 37 and 45). Therefore, in a case about the nullity of a patent, if the exclusive jurisdiction grounds led to the UK (and the UK had the status of third State), it would be necessary to check if other connections could justify the international jurisdiction of any Member State.

  31. Contra, Ohly (2016). Others have suggested the signature of a Protocol to the UPCA or the inclusion of a reference to the UPCA in the exit agreement between the EU and the UK (Tilmann (2016)). However, this option gave rise to criticism, based on its lack of respect for the principles of legality and legal certainty (Jaeger (2016), p. 23). Other possibilities are opening the UPCA to the ratification of third States, with some modifications (Jaeger (2016), p. 24), or conducting the necessary reforms in the UPCA in order to allow the UK’s participation even after abandoning the EU (Gordon QC and Pascoe (2016), paras. 105 ff.).

  32. There are also proposals for modifying Arts. 257 and 262 TFEU, in order to include international law-based courts in the system for requesting preliminary rulings from the CJEU or to abandon such system and establish direct appeals to the General Court or the CJEU. See Jaeger (2016), pp. 24–25.

  33. Tilmann (2016); Gordon QC and Pascoe (2016), para. 107.

  34. Tilmann (2016); Gordon QC and Pascoe (2016), para. 112.

  35. It is worth remarking that there are several ways for obtaining an opinion from the CJEU, beyond the possibility foreseen in Art. 218.11 TFEU, which would be only available if the EU becomes a party to the UPCA. Other options include the possible constitutional review of the UPCA foreseen in some Member States during the process of ratification, which would entail involving the relevant Constitutional Court or even the alternative left open to the private individuals for asking for a constitutional review, as it is the case of the German system. See Stjerna 2016-1, pp. 8–9. This last option has already been used and the German Constitutional Court will issue a judgment on the German ratification of the UPCA (https://www.unified-patent-court.org/news/message-chairman-alexander-ramsay-june-2017 – last accessed on 22 August 2017).

  36. In this regard, see Tilmann (2016).

  37. See on this point supra, Sect. 4.1.

  38. Jaeger (2016), p. 26; Stjerna (2016)-2, p. 7.

  39. Henschel (2016).

  40. See the ratification status at: http://www.consilium.europa.eu/en/documents-publications/agreements-conventions/agreement/?aid=2013001 (last accessed on 22 August 2017).

  41. This would imply to categorise the UPC as an internal national court of all the Contracting States, including the UK. The reason behind it lies with the State’s sovereignty, meaning that any State can designate as national court whatever court it deems appropriate. It has been said that the UPC is not part of the EU legislation and thus cannot create a court that is part of the EU legal order (Gordon QC and Pascoe 2016, para. 59). However, the national courts of the Member States are not established by virtue of EU law, but of national law. What makes those courts part of the EU legal order is the EU membership of the States. That is what is missing in the case of the UK. Nevertheless, if a third State and the EU reach an agreement for considering an EU common court as covering that third State too, that common court should not lose its character and affiliation to the EU legal system, and it should be stated as such in the agreement between the EU and the UK.

  42. Gordon QC and Pascoe (2016), para. 103; Jaeger (2016), p. 25.

  43. This is a problematic question inherent to the UPCA procedural regime, which arises beyond the UK’s participation as a third State. It has been discussed somewhere else, see Gandía Sellens (2015), pp. 625–626.

  44. See Galli (2017), who, although advocating for the inclusion of the UK in the UPC system, does not support the location of one of the sections of the central division in the UK, given that the UPC has been “established within the framework of EU legislation, according to an Agreement expressly limited to EU members”.

  45. Convention on the Grant of European Patents of 5 October 1973 – as amended by the act revising Art. 63 EPC of 17 December 1991 and by decisions of the Administrative Council of the European Patent Organisation of 21 December 1978, 13 December 1994, 20 October 1995, 5 December 1996, 10 December 1998 and 27 October 2005. United Nations, Treaty Series, vol. 1065, No. 16208.

  46. According to the CJEU, Regulation 1257/2012 has as legal ground Art. 118 TFEU and constitutes, at the same time, a special agreement within the meaning of Art. 142 EPC. See the Judgment of the CJEU (Grand Chamber), 5 May 2015, Kingdom of Spain v. European Parliament and Council of the European Union, paras. 28 and 39–51. See a dissenting opinion to this Judgment in Desantes Real (2015), paras. 7–8. Prior to this CJEU judgment, it was warned that Art. 118.1 TFEU was not the proper legislative basis for establishing the unitary patent system. See Hilty et al. (2012), para. 10. Jaeger (2013), p. 391.

  47. As discussed above. This “repair solution” arose as an answer to the Opinion of the CJEU (Full Court), 8 March 2011, No. 1/09. See Baratta (2014), p. 102; Scuffi (2014), p. 87.

  48. Opinion of the CJEU (Full Court), 8 March 2011, No. 1/09.

  49. In favour of the participation of third States (modifying the UPCA), see Gordon QC and Pascoe (2016), paras. 53 ff.; Hoyng (2016), p. 20; Stjerna (2016b)-2, p. 7.

    Against the participation of third States, European Commission Legal Service, “Possible solution for the European and EU Patent Court (EEUPC) replying to the concerns raised by the Court of Justice of the EU in its Opinion 1/09”, (MARKT.D2/AL D(2011)331035), 18 April 2011, para. 9. Also, Legal Service of the Council of the European Union, “Draft agreement on the European Union Patent Jurisdiction (doc.13751/11) – compatibility of the draft agreement with the Opinion 1/09”, 21 October 2011, document No. 15856/11, paras. 30–31.

    In favour of including a Member State that will lose that status after ratifying the UPCA, see Tilmann 2016 and German Bar Association 2016, p. 6.

  50. Opinion of the CJEU (Full Court), 8 March 2011, No. 1/09, para. 6.

  51. Ibid., para. 8.

  52. Opinion of the CJEU (Full Court), 8 March 2011, No. 1/09, paras. 1 and 7.

  53. Council of the European Union, Draft Agreement on the European and Community Patents Court and Draft Statute, working document 7928/09, Art. 3a.

  54. Council of the European Union, Revised proposal for a Council Regulation on the Community patent, working document 8588/09, Art. 2.2.

  55. Council of the European Union, Draft Agreement … cit., Art. 3.

  56. Ibid., Art. 4.

  57. Ibid., Art. 5.

  58. Ibid., Art. 58b.

  59. Ibid., Art. 14a.

  60. Opinion of the CJEU (Full Court), 8 March 2011, No. 1/09, para. 80. This point was previously addressed by Jaeger et al. (2009), pp. 833, 837 prior to the publication of the Opinion. The solution proposed was “[…] the establishment of a committee charged with monitoring the bodies of case-law of the CJEU and the ECPC. If a divergence occurs, the committee should attempt reconciliation and take a final decision on the interpretation of the norm at issue […]”. A similar proposal was made after assessing the CJEU Opinion 1/09. See Jaeger (2012), pp. 299–300.

  61. Opinion of the CJEU (Full Court), 8 March 2011, No. 1/09, para. 71.

  62. Stressing the consequences of the PC being outside of the EU jurisdictional system, rather than the fact as such of the PC not pertaining to the EU legal order, Gordon QC and Pascoe (2016)s, para. 55.

  63. Opinion of the CJEU (Full Court), 8 March 2011, No. 1/09, para. 89.

  64. Ibid., para. 88.

  65. Article 1 in fine of the UPCA states: “The Unified Patent Court 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”.

  66. As already discussed above.

  67. On the interplay between the unitary patent system and EU competition law, see Malaga (2014), pp. 639–644; Enchelmaier (2015), pp. 117–128; Anderman (2015), pp. 132–143.

  68. In this vein, before CJEU’s Opinion 1/09 was issued, Jaeger (2010), pp. 106–107.

  69. OJ L No. 285, 16 October 2006.

  70. OJ L No. 1, 3 January 1994.

  71. Gordon QC and Pascoe (2016), para. 64, referring to the cases of the EEA Court (Opinion of the CJEU, 14 December 1991, No. 1/91) and of the EFTA Court (Opinion of the CJEU, 10 April 1992, No. 1/92).

  72. Opinion of the CJEU (Full Court), 8 March 2011, No. 1/09, paras. 74–76, especially para. 75: “[…] the Court has stated that an international agreement concluded with third countries may confer new judicial powers on the Court provided that in so doing it does not change the essential character of the function of the Court as conceived in the EU and FEU Treaties […]”.

  73. Contra, Gordon QC and Pascoe (2016), paras. 57–58; Jaeger (2016), pp. 23–24, although the author also expresses some concerns regarding primary law, at p. 25.

  74. See a positive assessment on the relationship between the UPC and the CJEU in Baldan and Zimmeren (2015), pp. 1567–1568. According to the authors, the interaction between the UPC and the CJEU will strengthen vertical and global judicial coherence. Similarly, Dimopoulos (2015), pp. 63–64.

  75. Article 8.1 UPCA.

  76. Some authors express their doubts about the EU “common” trait of the UPC if third States are involved. See De Miguel (2016).

  77. Other court models were proposed after the CJEU’s Opinion 1/09. See Jaeger (2012), pp. 302, 307–308.

  78. See for more Hillion (2015), pp. 128–129.

  79. See above; other commentators advocate that the mere modification of the UPCA in this regard would be enough, see Gordon QC and Pascoe (2016), paras. 57–58.

  80. Similarly, De Miguel (2016).

  81. See Sect. 4.1, supra.

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  1. Ph.D., Senior Research Fellow, Max Planck Institute Luxembourg for Procedural Law, Luxembourg, Luxembourg

    María Aránzazu Gandía Sellens

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Gandía Sellens, M.A. The Viability of the Unitary Patent Package After the UK’s Ratification of the Agreement on a Unified Patent Court. IIC 49, 136–152 (2018). https://doi.org/10.1007/s40319-017-0666-y

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