For the half-year to 31 December 2014, the IPKat's regular team is supplemented by contributions from guest bloggers Rebecca Gulbul, Lucas Michels and Marie-Andrée Weiss.

Regular round-ups of the previous week's blogposts are kindly compiled by Alberto Bellan.

Thursday, 18 April 2013

One Down - Two, Three or More to Go … A Closer Look at the CJEU’s Decision on Enhanced Cooperation for the Unitary Patent

Paparazzi caught El Kato, still utterly
confused after the cold shower from the CJEU
(his pal Kattocini went into hiding)
Did we really need proof that the widespread mistrust lingering among the patent community against a CJEU involvement in patent affairs might in the end be justified? After all, the shaky setup of the new patent system for the Internal Market is owed to, in particular, the desire to shut the CJEU and EU law out. On Tuesday, the Court disillusioned the zealots opposing that shaky setup by dismissing the actions brought by Spain and Italy (see here) against Council Decision 2011/167/EU of 10 March 2011 authorising enhanced cooperation in the area of the creation of unitary patent protection (Joint Cases C-274/11 and C-295/11). It is about time to have a closer look at the decision.

Of course, the dismissal by the Court’s Grand Chamber came as no surprise after Advocate General Bot had recommended this outcome in his Opinion delivered last December. The Advocate General’s assessment was markedly based on “a limited review” of the case, out of respect for the Council’s margin of discretion in authorizing enhanced cooperation. As a consequence, Bot trimmed down the scope of the dispute to a minimum by removing all aspects relating to the substance of the cooperation and its effects. He thus accepted to review essentially only whether the procedural prerequisites for enhanced cooperation were fulfilled, i.e. most importantly the non-exclusivity of the competence used and the requirement of last resort for the cooperation. By contrast, all arguments relating to the allegedly negative effects of the cooperation, e.g. for coherence, on non-discrimination or for non-preclusion, were only checked from the coarse point of view of a manifest misuse of powers by the Council. For neither of those points did the Advocate General find a problem in the Decision.

The CJEU’s dismissal of the Spanish and Italian concerns over their exclusion from the cooperation handed down Tuesday is essentially along the same lines. The basic difference is that the Court gives even less reasoning for its findings: This suggests that potentially controversial issues, such as for example an outspoken endorsement of the Advocate General’s limited approach for the review, were just deleted in the judges’ deliberations. This is a problem routed in the CJEU’s procedural rules. In contrast to the US Supreme Court, there are no dissenting opinions. While that may explain the half-hearted reasoning of yesterday’s ruling, it doesn’t excuse the shortcomings of the decision.

On substance, the Court endorses Bot’s assessment that the legal basis used for the Unitary Patent Regulation and the Language Regulation, Art. 118 TFEU, did not incorporate an exclusive EU competence, but instead formed part of the general shared competence for the Internal Market (paras. 16 to 26). This assessment is based on the observations, that the Internal Market is a shared competence and that the competition chapter is an exclusive one, but that Art. 118 TFEU did not relate to competition. Both arguments are as correct as they are beside the point: The competence issue is dismissed under just a systematic interpretation of the structure of the Treaty provisions and without a teleological approach asking about the actual purpose of limiting enhanced cooperation to areas of shared competence. The really interesting question of how on earth the activity that Art. 118 TFEU relates to, i.e. the setup of an own EU patent, could possibly be exercised by the Member States alone (which is what shared competence presupposes) remains untouched and unanswered by the Court. Art. 118 TFEU entitles the Union to define its own, autonomous policy of IP protection. What role are Member States supposed to assume in that context? Clearly, enhanced cooperation for IP can only have its proper place in the context of a harmonization of national patent laws under Art. 114 TFEU.

By the way, allow a side-remark for the competition people: By way of obiter dictum, the CJEU also endorsed the ill-fitted attribution of the competition chapter to the area of exclusive competences. If that was really true, all national competition laws would be pre-empted (at least above the inter-state threshold). For Art. 102 TFEU in particular, we know that this is not the case. The fact that competition law is fully harmonized, which it is, is not to be mistaken for an exclusive competence. The Court overlooked, for competition as well as for IP, that already by virtue of Art. 2(6) TFEU, the competence catalogue is only of a declaratory, not constitutive, character. If it wasn’t, the EU was in real trouble, since the enumeration of competences in the catalogue is at the same time incomplete and chaotic. Be that as it may – in short: IP and competition law competences were badly struck by this judgment. It is to be hoped that its truncated and imprudent approach to interpreting EU competences is not carried on to other areas.

Back to IP proper: In paras. 33 to 41, the Court held that the Decision did not constitute a circumvention of the unanimity requirement for the Language Regulation contained in Art. 118(2) TFEU. There, the Court essentially followed the reasoning of the Advocate General that anything else would have the effect of excluding areas of unanimity from enhanced cooperation because every cooperation could be seen as an attempt to side-step unanimity. While again this is probably true in principle, the Court in that context as well as in the contexts dealing with cohesion and non-preclusion (paras. 75 to 78 and 81 to 86) fails to address the essential question of the relationship between the unanimity requirement and a possible preclusion of the possibility of outside Member States to participate at a later point. In other words, not all unanimity requirements are equal: Some are more important than others. In this case, the unanimity requirement relates to the languages used within the cooperation. Without re-entering here into a discussion of the substance of the language regime, it must nonetheless be remembered that Art. 118(2) TFEU aims at protecting the language interests (cultural interests) of each Member State. This is why it imposes an obligation to find consensus. The exclusion of the language of any Member State permanently prejudices its incentives, prospects and potential accede to the cooperation at a later stage. Given that the Court has repeatedly acknowledged in other contexts that languages are a particularly sensitive area in EU law (ironically even in the judgment in C-202/11, rendered the same day), the Court’s avoidance of this issue in the judgment is as striking as it is telling.

Less controversial points in the judgment relate to the Court’s confirmation (paras. 47 to 59) of the Advocate General’s finding that the venture into enhanced cooperation was indeed one of last resort, as required by primary law. This is in part a question of fact, and in part, it is one of political discretion. It is true that the negotiations among Member States had indeed reached a standstill at the time. But the question remains whether the language controversy really led to a cul-de-sac with respect to the entire project of creating an EU patent, or whether enhanced cooperation was just used as an excuse to change policy and strip down the unitary and autonomous EU patent into a mere shadow of its former self. Of course, the Court also failed to see that, as was checked in other contexts, even where the measure is one of last resort, the intrinsic formal and substantive conditions for enhanced cooperation and its foreseeable effects must still be satisfied. The framework of legal constraints in which enhanced cooperation is embedded is not about balancing the positive effects of that cooperation against its disadvantages for the non-participating Member States, but about ensuring that cooperation is based on an act of mutual agreement and good faith. However broad the Council’s discretion in assessing the political stalemate of negotiations may be, it is the CJEU’s duty to conduct a minimum substantial review in order to safeguard the rule of law in the political decision-making process. The Court failed to assume this responsibility.

A more or less hopeless argument advanced by the plaintiffs, easily dismissed by the Court (paras. 60 to 69), related to an alleged lack of unity of the unitary patent throughout the Internal Market as envisaged by Art. 118 TFEU due to enhanced cooperation. As the Court rightly points out, the fact that in the event of enhanced cooperation only some Member States are covered is a “consequence [that] necessarily follows” from enhanced cooperation and is in itself no sufficient argument against its legality. Even so, what about the effects of enhanced cooperation on the Internal Market, on trade between Member States, and on competition between them? The Commission and the Council already brushed aside this issue by stressing that equal access to unitary patent protection is ensured to all patent holders whether they come from participating Member States or from non-participating Member States. This is a truism, but it completely misses the point. The Court didn’t even bother to dig deeper into the actual problems caused by the segregation of markets along the borders of participating and non-participating Member States. It neglected the fact that in comparison to the status quo of equal fragmentation of the Internal Market for all Member States, a common patent system for just some of them has particularly severe discriminatory and exclusionary market effects. In other words, the assumption that some commonality is always better for the Internal Market than no commonality at all is not always true and it is particularly not true for patents, which are typically directed to cross-border trade in the Internal Market.

So what can we make of this judgment? Clearly, with its partially incomplete, partially unconvincing reasoning it provides hardly the quality of CJEU decisions that we hope for in the patent area or anywhere else. And while it might be greeted enthusiastically by the proponents of the new system, the decision might also backfire on the Court by entrenching mistrust even further.

What does the judgment tell us in terms of assessing the fate of the two actions for annulment Spain recently lodged against the two Regulations for the unitary patent (Cases C-146/13 and C-147/13, see here)? Probably not much: The precise pleas lodged there were not made public yet, but it is to be expected that they will mainly relate to an infringement of fundamental principles of EU law through the unprecedented regulatory technique used and, perhaps, once more to conflicts of the system with the general framework established for enhanced cooperation in primary law. The first point of EU law principles is not touched upon at all in Tuesday's judgment. From a purely legal perspective and blinding out possible Court politics, those arguments would seem particularly promising for the plaintiffs. As regards the second point, i.e. another shot at proving that the way this cooperation works is contrary to the primary law framework, the holes permeating the judgment in terms of issues not touched upon in the reasoning certainly leave some leeway for fresh arguments.

Even though the first CJEU action in the unitary patent saga has thus been struck down, two more are already launched and on the go. But even if these two should also come up empty, more subsequent litigation might be on the horizon: Infringement actions might be lodged against the Unified Patent Court Agreement once ratified by the participating EU Member States. Subsequently, any points of illegality not answered by the CJEU in any of these proceedings might still be picked up by national courts once the system is up and running. So one down, but two, three or more are yet to go. The unitary patent match continues – and while it does, users of the system will not have legal certainty for their economic decisions.

Like AmeriKat already said, the decision did not come as a surprise – which is perhaps even its most worrying feature. Tuesday’s judgment dented this Kat’s and her co-author’s naïve faith in the Court’s capacity to separate law from politics. Yet a spark of hope remains. This Kat is therefore prepared to take AmeriKat’s bet and raise the stake... It calls the hat and raises to a pair of dirty socks.

Posted by: Thomas Jaeger & Matthias Lamping

21 comments:

Anonymous said...

Having to deal with the spat between Italy/Spain and the UPC countries at the CJEU level is not a good way to keep everyone happy because there will be winners and losers. The EU member states should instead have tried to find incentives for Italy/Spain to have tolerated the UPC. Ultimately the EU stays together because of a spirit of cooperation and a lot of give and take. Intergovernmental disputes at the CJEU level will only weaken it.

Kattocini said...

Once again the CJEU carefully avoided to discuss the issue of the language discrimination, after the first opinion (1/09) of the AG, which instead considered the language regime "unacceptable".
Let's see (in two years?) whether the CJEU will still wash its hands.
In the meanwhile I hope to have digested my hat...

Anonymous said...

"In other words, the assumption that some commonality is always better for the Internal Market than no commonality at all is not always true and it is particularly not true for patents, which are typically directed to cross-border trade in the Internal Market."

All the arguments of Dr. Lamping and his team at the Max Planck Institute against the patent package appear to revolve around this point: the assumption that integrating some, rather than all, markets within the IM would be discriminatory against those not integrated. But in that case, wouldn't the Benelux Office for Industrial Property be against Community law?
Indeed, reducing this argument ad absurdum, this could also be used against all national IP rights within the EU, since, for instant, a German patent integrates the markets of Baden Wurttemberg and Bavaria, but not neighbouring Alsace.
Quite frankly, I hope that Dr. Lamping and his team will be ready to eat not their hat and dirty socks, but ample helpings of humble pie once the CJEU issues its decisions on the "Spanish" appeals...
Finally, I find that the opening and closing paragraphs of this post are rather graceless and close to insulting. They certainly reflect much worse on the two authors than on the CJEU.

Anonymous said...

"The EU member states should instead have tried to find incentives for Italy/Spain to have tolerated the UPC".

Actually, Italy not just tolerates the UPC, but has actually joined it! You must be thinking of the unitary patent. Having followed the negotiations quite closely, I think the other EU member states did bend over backwards to try to placate Italy and Spain. The CJEU has apparently arrived to the same conclusion...

Anonymous said...

for french readers : see interview of the EPO president including schedule forecast of the UPC treaty ratification http://www.senat.fr/compte-rendu-commissions/20130408/europ.html

Anonymous said...

germany scheduled for mid 2014
UK unpredictable

Rahul said...

hahaha...I love that Kat pic ! let me first laugh at it and the caption below, then I will read the post !

Kattocini said...

@Anonymous of Thursday, 18 April 2013 14:15:00 BST

"Having followed the negotiations quite closely, I think the other EU member states did bend over backwards to try to placate Italy and Spain."

If you followed the negotiations closely you should know very well that when the current proposal was discussed (september-october 2010: the "last resort" negotiations lasted around two months!!!) no MS "tried to placate Italy and Spain" and also other countries were against it (Poland above all).
The proposal was just a "take it or leave it" (also because I guess that otherwise the "English-only" counter-proposal from Italy could have had some chance of success among the MS).

Anonymous said...

Dear Kattocini:

Maybe you weren't privy to the ins and outs of the negotiation, but I heard from exceedingly reliable sources that it did involve a great deal of cajoling involving, mainly, promises of locating the UPC in Spain and/or Italy. And the last proposal came after a decade of negotiations: it is utterly disingeneous to pretend that it all started in autumn 2010. By then, everybody was rightfully fed up with the obstructionism of those countries.

The "English only" proposal was, in my opinion, utterly hopeless, as it would have involved rewriting the EPC and/or creating a "Unitary Patent Office" besides the EPO. Above all, the commitment of Spain and Italy to that proposal was dubious, to say the least: I read declarations by the Spanish government, after supporting the "English only" proposal, stating in no uncertain terms that Spain would never accept a patent to be valid in Spain that wasn't translated into Spanish.

In my opinion the "English only" proposal was pushed forward in sheer bad faith as a last resort diversionary maneuver.

Anonymous said...

Also, dear Kattocini, if the three-language regime of the EPC was discriminatory, wouldn't OAMI's five-language regime be also discriminatory?

Kattocini said...

@Anonymous:

1 the negotiations on the seat of the UPC occurred well after (2011/2012) the decision on the enhanced cooperation (2010), and definitely involved not only Spain or Italy (why do we have now a good three central courts? In which countries? Maybe Spain, Italy and Poland ?)

2. most, if not all, started in autumn 2010, when the current regulations were proposed. The discussions on the current regulations were immediately closed.

3. it was not necessary to amend the EPC or create a new patent office to have unitary patents written only in English

4. Spain, as far as I know, has never supported the "English only" proposal

5. 1-, 3-, 5- or x-language regimes at multinational patent offices are of course discriminatory, but only w.r.t. applicants using other languages. The unitary patent goes much further by discriminating also all third parties who must translate unitary patents in their own languages: may I obtain and enforce in the USA a US Patent written in Japanese?

Anonymous said...

@Kattocini:
1. and 2. There was much horse-trading going on involving the seat of the UPC well before 2010, really...

3. Please read up Art. 14(2) EPC. According to it, "a European patent application shall be filed in one of the official languages (English, French and German, according to Art. 14(1) EPC) or, if filed in any other language, translated into one of the official languages in accordance with the Implementing Regulations."
According to the "English-only" proposal, a unitary patent application would have had to be filed specifically in English, which would have been incompatible with the EPC. There would only have been two solutions: amending Art. 14(2) EPC (complicated, to say the least), or circumventing the EPC altogether, which would have required creating a completely new framework including rules on patentability and the procedure for grant of the unitary patent, if not necessarily another patent office. But just imagine the debates at the European Parliament regarding the criteria for patentability...

4. The Spanish government actually did issue some half-hearted support of the English-only proposal, then to contradict itself within days, as I said. But that does rather counter your previous assertion that the English-only proposal had a chance of success...

5. The patent package gives ample consideration to the rights of third parties with languages other than that of the patent, see in particular Art. 4 of the Regulation regarding the translation arrangements. I don't see in any case how the English-only solution would have been any better in this respect, especially since the granted patent claims will always be available in English anyway, under R. 71(3) EPC.

Kattocini said...

@Anonymous:

1 and 2. There could have been horse-trading before 2010, but at least Italy entered in this horse-trading on 5 December 2011, really...

3. no need to amend the EPC: to get the unitary patent the regulation could have requested the filing of an English translation (legally valid) of the European patent or even that (of course after a transitional period) only European patents granted in English could have become unitary patents

4. Spain was and still is officially against any solution which does not contemplate Spanish. The English-only proposal was not supported by Spain (maybe El Kato was) but was seen with interest by other counries like Poland and Sweden. The negotiations, just started, were interrupted IMMEDIATELY after this proposal was circulated by Italy.

5. Art. 4 gives a very poor consideration to the rights of third parties (only Art. 4.4 is relevant, however it is weakening the whole patent system). The English-only soultion would have significantly improved the system because it would have given the opportunity to discuss all unitary patents in English before the central division of the UPC and because English is the "patent language" understood by every user (and most third parties), while French and German are spoken only in four MS.

When it is a matter of right, the description of a patent is VERY important, see e.g. Art. 69 EPC and the Protocol on its interpretation.

Kattocini said...

Actually, French and Germany are spoken in a good 5 MS, I forgot Luxembourg.

Anonymous said...

@ Kattocini :

1. The first official Italian pronouncements proposing Milan as seat of the UPC were indeed made in December 2011. But it was hardly a secret that the other negotiators had been dangling that carrot in front of (successively or simultaneously) Italy, Spain and indeed Poland well before that time. Indeed, by the time Italy officially put Milan forward, it was far too late: the enhanced cooperation had started nine months before, and the other countries had no longer any particular interest in sweetening the deal for Italy. There was no horse-trading, because Italy no longer had any horses left to trade!

3. Of the two alternatives you propose, the first is not the "English-only" option, but rather what was called the "English-always" option. The only difference with the solution that was finally adopted for a transitional period (and transitional solutions have a way of becoming quite permanent at the EU) is that the English translation will not be legally binding. In fact, making an English translation legally binding for the whole territory covered by the unitary patent would have been incompatible with the EPC, which only contemplates the possibility of such a legally binding translation under Art. 70(3) EPC, stating:
Any Contracting State may provide that a translation into one of its official languages, as prescribed by it according to this Convention, shall in that State be regarded as authentic, except for revocation proceedings, in the event of the European patent application or European patent in the language of the translation conferring protection which is narrower than that conferred by it in the language of the proceedings.

Consequently, a Contracting State (and the EU is not and cannot be a "Contracting State") can only request such a legally binding translation into one of its own official languages. It would thus go against the EPC to request a legally binding English translation, and consequently restrict the scope of protection of the European patent if the translation is narrower than the granted text, for the whole of the EU, including Contracting States, such as Sweden or Italy, whose official languages do not include English!

The second option is even more obviously problematic: there's no opening whatsoever in the EPC to refuse validation to European patents granted in any other language than English.

4. According to Manuel Desantes (see par. 35.), Spain did "suggest" an "English-only" solution in a document of August 31st 2010. However, Spain's negotiating tactics have been chaotic, to say the least, owing to a great extent to utter ignorance of the patent system in general and the EPC in particular among the negotiating officials (for what it's worth, I've heard rumours of late-night scrambles for copies of the EPC in the Spanish Permanent Representation before the EU).

6. The proceedings at the UPC will normally be in the language of the MS of either the infringer or the infringement. I don't see how "English-only" would have been an improvement on this for third parties.
I'd also very much disagree with your assumptions that "all users" are necessarily fluent in "English", never mind "patent English" (most native English speakers would probably also struggle with the latter...)

Kattocini said...

@Anonymous

1. I agree with you: the seat was just a "carrot", since Milan, Madrid or Warsaw had no chance to get the central division (ooops, divisionS).

3. I disagree, since the translations is English would have been required by the UP, not by the EP, so as it happens now with the London Agreement (see Art. 1.2).
These possible provisions would have not interfered with the EPC.
On the other hand, the current Regulation is not compatible with Art. 142 EPC.

4. I agree: El Kato worked hard at night, however the discussions on the current regulations were interrupted immediately before the "English-only" or "English-always" solution could be proposed and discussed. Why giving only few days for negotiating these completely new regulations? Why all this hurry after around 40 years of stalemate?

5. All patent users are much more fluent in English than in French or German, apart of course of mother-tongue French of German. The language of the proceedings of the central division is only the language of the patent (not even one of the three languages of the EPO): this language regime has been considered "unacceptable" even by the CJEU (see opinion 1/09 of the AG, par. 121)



Anonymous said...

1. I disagree with you: back then, those countries had a chance. Afterwards, none. Bringing Milan into the ring after the enhanced cooperation mechanism had been started was a ridiculous stunt by the Lega Nord.

3. Please, read the whole of Art. 70 EPC again. Art. 70(1) EPC clearly states that the text of the European patent in the language of the proceedings shall be "the authentic text in any proceedings before the EPO and in any Contracting State". The only exception is that provided by Art. 70(3) EPC, which grants that a Contracting State "may provide that a translation into one of its official languages, as prescribed by it according to this Convention, shall in that State be regarded as authentic, except for revocation proceedings, in the event of the European patent application or European patent in the language of the translation conferring protection which is narrower than that conferred by it in the language of the proceedings."

"Into one of its official languages", but not into English, if it isn't one of that Contracting State's official languages. Italy or Sweden may ask that a translation into, respectively, Italian or Swedish, be considered legally binding in their territories, but they can't ask the same for an English translation.

The London Agreement didn't change anything there: the possibility that a Constracting State requests a translation into English or another EPO official language, rather than into one of its own official languages, is explicitly contemplated in Art. 65(1) EPC, last sentence.

What Art. 65 EPC, however, does not contemplate or allow, is that this translation into another EPO official language be made legally binding. Which is why neither the London Agreement nor the Unitary Patent Regulations have attempted this.

4. Anybody with some knowledge of the EPC, and in particular of Arts. 14, 65 and 70 EPC, knew that those proposals were dead in the water without a revision of the EPC. The Italian and Spanish delegations had ten years to brush up on the EPC (and even try to amend it during the EPC 2000 revision) and it is absolutely inexcusable that by 2010 some of the negotiators in charge still hadn't even seen the cover of the EPC. Full disclosure: I am a Spaniard myself, and I felt extremely disappointed at the performance of my own country's officials.

5. Par. 121 of opinion 1/09 of the AG stated:

"In the absence of any provision in the draft agreement allowing the central division to depart from the rule of the language of the patent or allowing the defendant to obtain translations of procedural documents, this linguistic system appears to be unacceptable with regard to observance of the rights of defence."

However, that opinion was written on the basis of an old draft agreement! The UPC Agreement that has finally been signed specifically contains, in Art. 51(3), a provision giving such a defendant (from any EU member state, and not just those in the UPC) the right to obtain translations of relevant documents in his own language. It has therefore very specifically been answered to that objection in exactly the manner the AG suggested.

Kattocini said...

@Anonymous:
1. Do you really think that e.g. Spain had any chance to get the central division? (Let's draw a veil on Italy's attempt...)

3 and 4: Maybe I used an incorrect term: I meant legally valid in the meaning of Art. 65 or the London Agreement, nothing more (Art. 70) nothing less (the useless translations which should be filed in the transitional period of the UP). By the way, I do not think that the translations in English of the London Agreement are not contemplated by Art. 65(1) EPC.

I still believe that no revision of the EPC was needed for the "English-only/always" solution (which was also considered in the impact assessment). At any rate a revision is also needed now because of Art. 142 EPC.

5. Ok, that particular objection has been overcome, but it is exhaustive? For example, is it sufficient to obtain translations of procedural documents to satisfy all rights of defense?

Anonymous said...

@Kattocini:

I certainly believe that, if Spain had played its cards well, it could have got the Central Division of the UPC.

Unfortunately, for years, the first and only priority of the Spanish (and Italian) negotiators was to preserve the obligation to translate as much as possible into their national languages (this was even deemed much, much more important, in Spain's case, than to try to establish Spanish as an official language of the EPO). In this, for a long time, Spain and Italy deemed themselves covered by France, and it was Sarkozy's sudden decision to ratify the London Agreement that blindsided the two countries and left their negotiating tactics in tatters.

There's no particular "legal validity" for Art. 65 EPC translations, unless the relevant Contracting State also invokes Art. 70(3) EPC, making their accuracy much more important for the patentee. The translations to be filed during the "transitional" period are Art. 65 EPC translations.

Art. 65(1) EPC does contemplate the English translations of the London Agreement. In particular, Art. 65(1) EPC specifies:

"Any Contracting State may, if the European patent as granted, amended or limited by the European Patent Office is not drawn up in one of its official languages, prescribe that the proprietor of the patent shall supply to its central industrial property office a translation of the patent as granted, amended or limited in one of its official languages at his option or, where that State has prescribed the use of one specific official language, in that language."

It's rather awkwardly drafted, but note that the "one specific official language" does not necessarily refer to one of the official languages of the Contracting State. It can also refer to "one specific official language"...of the EPO.

On the other hand, I really don't see any problem whatsoever with Art. 142 EPC! On the contrary, the unitary patent regulations have really been drafted with Art. 142 EPC and Part IX of the EPC in mind. Where do you see a problem?

As for your last question, I can only say that the AGs certainly seemed to imply so in their opinion, and it would certainly be awkward for them to say otherwise now. Of course, the CJEU does not always agree with its AG, but...

Kattocini said...

@Anonymous:

Ok, Spain and Italy could have done (much) better, but for sure they have not been given sufficient time to negotiate after the new Regulations were proposed.

I do not believe (but I am not sure) that before a national court now the English translations of the claims of EPs written in German or the English translation of its description filed in Sweden "shall have no legal effect and shall be for information purposes only" like the translations of Art. 6.2. By the way, what about the "legal status" of the translations under Art. 4.1 and 4.2?

Considering the context ("in one of its official languages at his option or...") I still think that Art. 65(1) does not contemplate the English translations.

Art. 142 EPC prescribes that a "European patent granted for those States has a unitary character throughout their territories", which means that EPs should be UPs (if requested by the applicant) already at grant, not one month later, retroactively.

P.S.: it would be nice to read the opinion on these issues from the other Kats

Anonymous said...

@Kattocini:

I would say that a national court which gave any legal weight to the translation in a country not invoking Art. 70(3) EPC would be in clear breach of Art. 70(1) EPC. Unless Art. 70(3) EPC, the version in the language of the proceedings is the authentic version, period.

Re. the English translations and Art. 65(1), I very much disagree with you. Just because of the context (every other mention of "official languages" in the EPC refers to the three official languages of the EPO), if the lawmaker had wanted to limit this to "one specific official language of that State", it should have written so, just as in Art. 70(3) EPC! In law, what is ommitted is as significant, if not more, as what is included. Whether this ommission was intentional or not is irrelevant: what matters is that it opened the way to the English translations of the London Agreement.

Regarding Art. 142 EPC, it simply does not prescribe what you claim. To quote Art. 142(1) EPC in full:

"Any group of Contracting States, which has provided by a special agreement that a European patent granted for those States has a unitary character throughout their territories, may provide that a European patent may only be granted jointly in respect of all those States."

The Contracting States in the enhanced cooperation have provided by a special agreement (the unitary patent regulations) can have a unitary character throughout their territories. They haven't, however, (yet) chosen that a European patent may only be granted jointly in respect of all those States (contrarily to Switzerland and Liechtenstein, which do make use of that option, so that European patents can only be granted jointly in respect to those two countries).

With respect to the, in your opinion, "retroactive" choice,I think that there's a widespread misconception about the "validation" of granted European patents. In fact, European patents do not become effective in a designated State upon validation. By default, European patents are effective in all designated States directly upon grant, with the effect prescribed by Art. 64 EPC, namely the same as that of a national patent. According to the EPC, and in particular Art. 65 EPC, Contracting States may add some conditions to be fulfilled within certain time limits to confirm this effect, and the European patent is deemed to be void ab initio in that State in case of failure to fulfill those conditions (Art. 65(3) EPC). But until then, a granted European patent is effective in that country.
The unitary patent will add, to the separate national designations, a joint designation for the participating EU member states. This will mean that, upon grant, the European patent will become effective in those countries both as a unitary patent and as a national patent. Then, the patentee will just have the choice between two different sets of conditions to validate in those countries, and depending on which set of conditions are fulfilled, it will be maintained as a national or unitary patent, but there will be no "retroactivity" in this, apart from that already provided by Art. 65(3) EPC.

Subscribe to the IPKat's posts by email here

Just pop your email address into the box and click 'Subscribe':