The EU patent package: a dangerous precedent? A call for sanity

Taken by itself and out of context, the question "Is it acceptable that the European Union abandons its powers in favour of the Member States?" might attract a variety of possible answers. Yet this question, which opens the following discussion of the legal basis and the desirability of the current European patent package, strongly invites and encourages readers to conclude that the answer is "no" and provides some serious grounds on which that answer might be correct.

The text which appears below is the English version of an English-and-French motion to which this Kat has added a few hyperlinks, and the names of some very impressive signatories and supporters.

If the unitary patent package and unified patent
court don't work out, does it help that we are
all in it together?

This Kat's personal position is that his first instinct is always to examine any proposal for reform on the criteria of its inherent virtues and vices, rather on the bases of the legal foundation on which it was built and through which it operate. However, several factors combine to tilt him away from taking this approach alone: these include (i) the sheer complexity of the mechanisms for operating the proposed system which will be as hard to amend and fine-tune as it has been to establish in the first place, (ii) its plainly divisive nature, (iii) the absurdly convoluted structure for litigating unitary patents and matters relating to them, (iv) the fact that the realities relating to the satisfactory governance of the European Patent Office remain unaddressed, (v) the manner in which the views and opinions of experienced patent attorneys and litigators were shamefully brushed aside or stigmatised as being motivated by self-interest during the rush-rush process of fusing together the current package and (vi) the fact that, despite his initial scepticism, he has gradually come to appreciate the manner in which the use of Regulations has brought about EU trade mark and design regimes that work well both at the levels of administration and litigation.

Anyway, this is what the document he has received says, together with those who say it:

The Union cannot be stripped of its powers by the Member States: the dangerous precedent of the patent package

Is it acceptable that the European Union abandons its powers in favour of the Member States? Certainly not. And yet, there is every cause to fear that a deft mechanism written into the patent package adopted at the end of 2012 will soon receive validation. If it is not censured by the Court of Justice, the Member States will have succeeded in stripping the Union of one of its powers. A regrettable precedent for the EU.

The Union is under an obligation to exercise the tasks set by the treaties, and to do so according to the procedure they lay down. And that applies to the Union’s legislature, formed of the European Council and Parliament, which numerous provisions of the Treaty on the Functioning of the European Union (TFEU) expressly require to apply the ordinary legislative procedure in adopting rules of substantive law in fields as diverse as access to documents, personal data, customs, judicial and police cooperation, economic and monetary policy, harmonisation of laws, public health, consumer law, and so on. The Union may not simply invest other authorities with rule-making powers and abrogate its duty to enact the relevant substance (or procedure), without rendering the precise powers devolved onto the EU’s legislature devoid of sense.

Regulation 1257/2012 on the unitary protection conferred by patents constitutes a dangerous precedent. It was adopted on the basis of the first paragraph of Article 118 TFEU, which provides that the European legislature should “establish measures for the creation of European intellectual property rights to provide uniform protection of intellectual property rights throughout the Union” “[i]n the context of the establishment and functioning of the internal market.” However, the regulation does not create any European protection, which will therefore essentially be subject to national law and international law.

Under pressure from certain lobbies that sought to have substantive patent law removed from EU law, the regulation (Articles 5, 7 and 18) actually refrains from regulating the substantive law of patents with unitary effect. By means of a reference to national law, it has the matter governed by the Agreement on a Unified Patent Court (UPC Agreement), an international treaty signed by some of the Member States, whose Articles 25 to 27 lay down rules setting out the scope of European patents (direct and indirect infringement) and the limitations on them.

The complaint raised by Spain in its annulment proceedings against the regulation highlights how pernicious this is for the EU’s rule-making prerogative, since, although the “uniform protection” of the unitary patent falls within EU law, it will thus be governed by an international treaty concluded outside the Union. This reference to international standards means that no provision of the law of the EU will, nor can it, in future contain the most essential and inherent rules on European patents, as provided for in Article 118 TFEU.

Because this scheme of things leaves it up to an international treaty concluded among the Member States to determine the scope and limits of a patent, it is those Member States, and they alone, that henceforth hold the key to any reform of patent protection under EU law. If, tomorrow, the EU wanted to amend the protection afforded by unitary patents, say, by altering or adding an exception, the regulation’s reference to national law (and, hence, the UPC Agreement) will prevent it from doing so. Moreover, oversight of patent protection by the Court of Justice will be impossible. Since the subject-matter of European patents and the conditions for their protection are governed by another international treaty to which the Union is not party (the European Patent Convention, with its 38 signatories), patent law will thus lie completely outside the EU’s ambit, despite its economic importance (impact on innovation) and its issues of general interest (for instance the scope of patents for software and medicines).

It seems that the Opinion of Advocate-General Bot in the context of the Spanish proceedings fails to comprehensively address some serious questions regarding the regulation’s conformity with article 118 TFEU.

Furthermore, if, following the opinion, we admit that the Member States are under an obligation (of loyal cooperation) to ratify the UPC Agreement, this Agreement, which contains the major rules defining patent protection and instituting a new court and its rules of jurisdiction, would not have been subject to any form of decision by neither the European Parliament nor the national parliaments. The same holds true of the significant, detailed collection of procedural rules that will be laid down by an intergovernmental committee outside any form of parliamentary control, and even outside any judicial control. Such an outcome is incompatible with both the democratic principle (article 10 TEU) and the rule of law (Article 2 TEU).

This same mechanism of referring to national law (and, if one will, to an international treaty) could be further used in future by the European Parliament and Council in any area where the TFEU nonetheless requires that they themselves set down the appropriate rules, in accordance with the ordinary legislative procedure, for effecting the various tasks assigned to them by that treaty.

A mechanism of this sort strips the Union of its powers and is unacceptable. To acquiesce in it for patents is to open the door to other circumventions of EU law. The questions raised over, and, we hope, the annulment of, Regulation 1257/2012 are a signal and urgent reminder to the EU’s lawmakers that it is incumbent on them alone to exercise the legislative powers invested in them and not to divest themselves thereof in favour of the Member States. The Union’s rule-making and the representative democracy that underpins its functioning so require.

Aside from this, as far as the development of Europe’s system of patents is concerned, annulment of the regulation will not have the negative consequences mentioned by some. At least one could design a EU protection of inventions inspired by the regulations adopted for Community trade marks and designs. One might think, for instance, of Council Proposal 13706/09 for a similar regulation dealing with patents. And there are other ways to go forward. What is more, it would be far less complex to institute a solution of that sort than the system discussed here.

The signatories (in the order in which they signed) are

Alain Strowel, Professeur, Fernand de Visscher et Vincent Cassiers, Maîtres de conférences invités, Université catholique de Louvain (Centre CRIDES - Jean Renauld), Louvain-la-Neuve, Belgique,

Bernard Remiche, Professeur émérite de l’Université catholique de Louvain, Louvain-la-Neuve, Belgique,

Frank Gotzen, Professeur émérite de la Katholieke Universiteit Leuven, Leuven, Belgique,

Joseph Jehl, Docteur en droit, secrétaire général, Institut euro-africain de droit économique (INEADEC), France,

Philippe Coppens, Professeur à l’Université catholique de Louvain, Louvain-la-Neuve, Belgique,

Nicolas Binctin, Professeur à l’Université de Poitiers, France,

Paul Torremans, Professor of Intellectual Property Law, School of Law, University of Nottingham,United Kingdom,

Andrée Puttemans, Professeure à l’Université libre de Bruxelles, Belgique,

Julien Cabay, Assistant-chercheur à l’Université Libre de Bruxelles, Belgique,

François Dessemontet, Professeur honoraire de l’Université de Lausanne, Suisse,

Hakim Haouideg, Avocatà Bruxelles, Belgique,

Maxime Lambrecht, Assistant-chercheur à l’Université catholique de Louvain, Louvain-la-Neuve, Belgique,

Manuel Lopes Rocha, Avocat à Lisbonne, Portugal,

Richard Milchior, Avocat à Paris, France,

Bernard Van Brabant, Chargé de cours, Université de Liège, Belgique,

Marie-Angèle Hermitte, Directeur de recherches au CNRS, directeur d'études à l'EHESS, France,

Arnaud Van Waeyenberge, Professeur de droit européen à HEC (Paris) et à l’Université libre de Bruxelles, Belgique,

Patrick Wautelet, Professeur à l’Université de Liège, Belgique,

Bernt Hugenholtz, Professor, University of Amsterdam, The Netherlands,

Mario Franzosi, Visiting Professor, University of Washington, avocat à Milan, Italie,

Enrico Bonadio, Senior lecturer, City Law School, City University London, United Kingdom,

Jan Rosén, LLD, Professor of Private Law,Law Faculty, Stockholm University, Sweden,

Gustavo Ghidini, Professor of IP law, University of Milano and Luiss University, Rome, Italy,

Marco Saverio Spolidoro, Prof. Avv., Ordinario di Diritto industriale, Università Cattolica del SacroCuore, Facoltà di Giurisprudenza, Milano, Italia, Nicoletta Parisi, Full Professor in International and European Law, Department of Law, University of Catania, Italy,

Marco Ricolfi, Prof., Chair of Intellectual Property, Department of Legal Sciences, University of Turin, Italy,

Manuel Desantes Real, Catedrático de Derecho internacional privado, Facultad de Derecho, Universidad de Alicante, Espagne,

Jean-Sylvestre Bergé, Professeur à l'Université Jean Moulin Lyon 3 (EDIEC - GDR CNRS ELSJ), France,

With the support of

Josef Drexl and Reto M. Hilty, Directors, Max-Planck-Institutfür Innovation und Wettbewerb, München, Germany, Paul Belleflamme, Professeur à l’Université catholique de Louvain, Louvain-la-Neuve, Belgique,

Hanns Ullrich, Prof. Dr. Iur., Professeur visiteur au Collège d’Europe(Bruges, Belgium),Germany,

William R. Cornish, Former Herchel Smith Professor of Intellectual Property Law, Cambridge University, Honorary Queen’s Counsel, Fellow of the British Academy, United Kingdom, 

Timo Minssen, Associate Professor, Jur. Dr., LL.M, M.I.C.L., Faculty of Law, University of Copenhagen, Denmark,

Geertrui Van Overwalle, IP Professor University of Leuven, visiting professor University of Tilburg, the Netherlands; Member of the Economic and Scientific Advisory Board of the European Patent Office (ESAB), Belgium,

Gunnar W. G. Karnell, Prof. em, LL. D., Hon.FSALS, Stockholm School of Economics, Sweden,

Franck Macrez, Maître de Conférences, Centre d’Études internationales de la Propriété Intellectuelle (CEIPI), Université de Strasbourg, avocat, France,

Martin R.F. Senftleben, Professor and Director, Kooijmans Institute for Law and Governance, VU University Amsterdam, the Netherlands,

Daya Köklü, Senior Research Fellow, Max Planck Institute for Innovation and Competition, Munich, Germany,

Vincenzo Di Cataldo, Professor of Business Law, University of Catania, Department of Law, Italy,

Maurizio Ammendola, Professore ordinario di diritto industriale nell'Università di Firenze, Italia,

Jean-Victor Louis, Professeur émérite de l’Université libre de Bruxelles, Belgique,

Joseph Straus, Director em. Max-Planck Institute, Munich, Professor, University of South Africa (UNISA) in Pretoria, Germany,