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Monday, 28 January 2013

Unitary Patent: the Brussels problem

The author of the EU Commission's webpage
on the Unitary Patent realises his
entirely inadvertent omission
For the Unitary Patent to come into force we all know by now that 13 states, including the UK, France and Germany, need to ratify the Unified Patent Court (UPC) Agreement. Well, although this is what the Commission's webpage says (as does the EPO's page on the subject), these conditions are necessary but not sufficient - which is a logician's shorthand for saying that whoever wrote the Commission's press release was being economical with the truth.

Apart from those ratification requirements, the Unitary Patent cannot become a reality until the current regulation on jurisdiction and enforcement of judgments across the EU, a.k.a. the Brussels I Regulation, is also amended -- and this might not be trivial, especially since not all 27 member states are on board.
This point was highlighted and brought to the IPKat's attention in a comment left by Gibus -- one of our frequent and valued commenters -- on a post on the Dutch Battle of the Tablets.  Gibus explains the issue further:
 
Since Brussels I regulation (EC 44/2001) is referred to in this judgement, I jump on this to raise two issues which seem to not have been considered by any Kat interested by the Unitary Patent here.

First, it has been rightly recalled by some Kats here and by others elsewhere that the unitary patent regulation could only enter into forced once the Unified Patent Court (UPC) international agreement has been ratified by France, Germany and the United-Kingdom (raising sometimes some concerns with regard to the referendum about UK leaving EU as proposed recently by Cameron [Merpel interjects that apparently this might not be greeted with universal disappointment, were the UK to go its own way] and 10 other Member States. But what has not been pointed out is that, according to Article 89 UPC, the UPC cannot entered into force before Brussels I regulation has been amended with specific provisions with regard to UPC jurisdiction.

Too bad, a recast of Brussels I regulation has just been voted by the EU Parliament and the Council (EU 1215/2012, published on EUOJ of December 20th, 2012, L 351/1). But nothing about UPC was taken on board in this recast. Therefore the Commission has to make another proposal which has to go through the EU legislative procedure. That is: the UPC agreement, nor the unitary patent regulation cannot enter into force before another amendment of Brussels I is voted by the European Parliament and the Council. Who has said that first unitary patents should be granted in early 2014?

But the second point is that the Commission could be quite reluctant to propose such an amendment of Brussels I regulation. Because it would prove without any doubt that the UPC is affecting, and even is altering, the scope of common EU rules. According to Art. 3.2 TFEU, in such a case, the Union would have exclusive competence for the conclusion of an international agreement. This has been recently confirmed by the CJEU (Case C‑370/12 of November 27th, 2012, about the Treaty establishing the European stability mechanism (ESM) that it follows from Art. 3.2 TFEU that “Member States are prohibited from concluding an agreement between themselves which might affect common rules or alter their scope.” Therefore, Art. 3.2 TFEU shall apply to the UPC international agreement, and the EU shall have exclusive competence to conclude UPC. There is no way to consider that the unitary patent regulation could amount to an explicit authorisation from to EU to waive its exclusive competence. Therefore, Member States are not authorised to conclude the UPC between themselves.

Any thoughts on this?
For a more in-depth analysis of why the UPC Agreement was deemed to require the amendment of Brussels I, see the post here by Axel H. Horns on the KSNH Law Blog. Thanks to Gibus for his comment (and indeed thanks to all those who take time to comment on the IPKat's posts).

15 comments:

Mark Richardson said...

That's an interesting point! Out of interest how long did the previous recasting of the Brussels I regulation take?

It seems like 2013 is going to be a year of challenges for the unitary patent package. Over on IPcopy we've wondered about the impact of Article 47(5) in the UPC agreement (does it hardcode bifurcation in some circumstances) and also whether Malta's relatively recent status as an EPC state will limit the number of unitary patents that can grant (http://ipcopy.wordpress.com/2013/01/25/why-malta-could-inadvertently-block-your-unitary-patent/)

NoMore said...

As Mr Teschemacher, Consultat in the Bardehle lawfirm, has noted in his post on the EPLAW Patent Blog (http://www.eplawpatentblog.com/eplaw/2013/01/eu-unitary-patent-final-texts-of-the-patent-package.html), this is not the only issue:

"Surprisingly, the final text still contains in Article 33(2) the obligation of a regional division to refer, at the request of the defendant, an action for infringement to the central division if the infringement has occurred in the territories of three regional divisions. This provision which appeared in brackets in the draft may substantially impair the readiness of patentees to bring an action before a regional division."

And we all thought that this issue was resolved at the EU Summit in June 2012..

Harald said...

Rubbish!

The UPC does not affect EU law acc. Art.89 (1).

The opposite is true: The UPC is affected by EU law!

The rest is wishful thikning of UPC enemies

Harald

Anonymous said...

The article raises as an aside the issue of the UK leaving EU. Presumably we'd also be leaving the UPC agreement if that happened. I'd be interested to know more about the implications of this, if anyone has thought about it. Should we all be filing separate UK national patent applications now?

Also if Scotland decides to secede from the UK, does anyone know how that will affect things, from a UPC or EPC or just plain UK IP perspective?

Anonymous said...

The EU is distinct from the EPOrg. Hence, a referendum on the EU will not affect the operation of the EPOrg, and of Britain vis-a-vis the EPO. British Courts would still likely follow BoA settled case law, and give due regard to European decisions. But the UPC has no mechanism (that I have seen) to allow participation of non-EU states. Hence, if Britain left the EU (unlikely, but mooted), or negotiated out of the UPC, it would seem that the rest of the UPC states could get on happily, with Britain having the same status as a designated state of an EP application as now. The issue of ratification should not be a problem, since UPC could well be ratified before any British exit and British ratification is only a gate, not a life-support, for the UPC.

Gibus said...

@Harald Thx for your kind words.

To determine whether an international agreement affects common rules, I suggest you to read carefully ILO Opinion 2/91 (§ 22, 25, 26), where the Court made it clear that in order to determine whether the conclusion of an international agreement affects common rules, it is necessary to look at: (1) whether common rules cover to a large extent the same subject matter dealt with the international agreement and (2) whether EU rules were adopted with a view to achieving an ever greater degree of harmonisation.

The regulation on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters (Brussels I) was indeed passed to achieve a greater degree of harmonisation. And Brussels I does undoubtedly cover to a large extent the same subject matter dealt with UPC (namely the recognition and enforcement of judgements in patent proceedings).

@Mark Richardson

Your point with Malta and late Contracting States of the EPC is interesting. But aren't there some provision for a patent holder to extend the designated states? I know (while I haven't had time to see in which rules of EPC), that this is the case for so-called "Extension States" (right now Bosnia and Herzegovina, and Montenegro). Wasn't Malta (and Croatia) an "Extension State" of the EPC for some years before becoming Contracting States?

Anonymous said...

I followed Mark's link to IPcopy and found, as well as the article he linked to about Malta, another about how if an action is brought by an exclusive licensee instead of the proprietor, then invalidity cannot be raised and so bifurcation is forced on the defendant. I had a comment on this, but since IPcopy doesn't appear to allow anonymous comments I'll make it here instead...

This could end up even worse than it looks. Certainly the English courts have decided that, if you lose on infringement and exhaust the appeal process for the case, you still have to pay the damages even if the patent is subsequently revoked. See

http://www.bailii.org/ew/cases/EWCA/Civ/2004/213.html

and

http://www.bailii.org/ew/cases/EWCA/Civ/2007/364.html

Gibus said...

@Mark Richardson

You're right about malta. According to EPO OJ 1/07: “European patent applications filed on or after 1 March 2007 will include the designation of the new contracting state. It will not be possible to designate Malta retroactively in applications filed before that date.”

About recent recast of Brussels 1, it took 2 years between the Commission proposal and the publication in OJ.

Emily Weal said...

Interesting article from KSNH - thanks Gibus & Kats for flagging it up. Even without the latest talk of the in/out referendum, it's increasingly difficult to see how the UK will be able to ratify without a referendum first - could we really argue that handing over jurisdiction on EP(UK) patents to the UPC wouldn't constitute moving power to Brussels? If an amendment to Brussels I is needed, this isn't going to help that argument. Ireland already seem to think a referendum will be necessary: http://www.thejournal.ie/ireland-referendum-patent-court-771051-Jan2013/.

@Gibus - Our initial thinking re Malta was that there surely has to be some way around the issue, but we've yet to see anything in the Regulation or in the EPC that we think could overcome it. Of course, if ratification is delayed, the problem will become less significant. The bigger issue could potentially be what will happen if a country joins the EPC and becomes a unitary patent Member State in quick succession.

@anonymous - Thanks for flagging up the comments point - we've now changed the comments on IPCopy to allow for anonymous posting.

Tim Roberts said...

"The following members of the European Patent Organisation were formerly, but have now ceased to be, extension states: Albania, Croatia, Latvia, Lithuania, Macedonia (former Yugoslav Republic), Romania, Serbia and Slovenia." (European Patents Handbook, Release 82, 2012). Malta was never an extension state, apparently. Nor is there any option to add an extension state that was not designated on filing (though nowadays that is done automatically).

I'm not completely convinced that Malta et al. are to be considered 'participating states' where the original European patent application could not (under the EPC) give rise to protection there. Alternatively, perhaps signing up to the Unitary Patent may be considered as accepting that all European unitary patents will have effect in your territory. That would not be as a consequence of the EPC, but independent of it (as with registration of a granted patent in a former colonial territory).

Anonymous said...

This being the EU, surely even if the implementation of the UPC is against Brussels I in its present form, a "fudge" will be found to implement it anyway without having to bother with such niceties as amendments or consultations. A trivial matter such as illegality cannot stand in the way of the political will dictated from on high by the Commission...

Anonymous said...

could we really argue that handing over jurisdiction on EP(UK) patents to the UPC wouldn't constitute moving power to Brussels?

@Emily Weal: Is Brussels among the many seats of the UPC?

I'm not just nitpicking because I'm tired of hearing "Brussels" as a dismissive shorthand for whatever form of European authority somebody wants to complain about, whether it's the EU, the Council of Europe and its European Court of Human Rights (based in Strasbourg), or even EFTA (you know, the "free-trade" outfit originally created by Britain as a foil for what was then called the EEC, and whose Luxembourg-based court has recently taken Iceland's side in the Icesave case).

No, it isn't just that. I also want to point out that the UPC has been (controversially) formulated as an intergovernmental body completely outside of the scope of "Brussels" (that is, in this case, the EU), and it is indeed the potential conflict between the UPC and the "acquis communautaire" (the EU body of law David Cameron is currently proposing to unravel) which may be the undoing of the UPC.

Anonymous said...

I agree with Tim Roberts second alternative "signing up to the Unitary Patent may be considered as accepting that all European unitary patents will have effect in your territory. That would not be as a consequence of the EPC, but independent of it (as with registration of a granted patent in a former colonial territory)." i.e Unitary Patents will cover Malta (assuming it ratifies) and whether or not it is designated is irrelevant.

Art 3(1) does not seem concerned with which states are designated merely whether there are single or multiple sets of claims.

Anonymous said...

I'm sure Gibus could find support on the back of my Kit Kat wrapper that supports his anti-patent position on anything if he put his mind to it, and it appears to be the sort of thing he does put his mind too.

As for being a 'welcome commentator'. His unsupported rants and inability to consider a balanced view on anything makes his contributions about as equally welcome of those of my neighbours' kats, in my garden!

Mark Richardson said...

@Anonymous at 17:51

That sounds like a discussion that we had on the Keltie twitter feed last week!

I agree that that is an alternative way of interpreting the unitary patent regulation. However, if all unitary patents are deemed to cover Malta because it is part of the unitary patent package, then what about the rights of third parties?

A company may have started working an invention in Malta after the filing date of an EP patent (filed before Malta became a contracting state) on the assumption that they were free to do so because the patent owner would not have the option of validating in Malta.

If unitary patents are deemed to extend to Malta for EP applications filed before Malta joined the EPC then where does that leave this company?

I note that Article 18(2) of the unitary patent regulation contains a derogation clause to account for countries that haven't ratified the UPC agreement. Would a similar clause to account for the Maltese issue be easier than trying to construe the wording of the existing regulation?

We picked Malta as our example but of course the same situation will arise for Croatia should it join the enhanced cooperation club once it becomes a member of the EU.

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