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,
The EU patent package: a dangerous precedent? A call for sanity The EU patent package: a dangerous precedent? A call for sanity Reviewed by Jeremy on Friday, March 13, 2015 Rating: 5


  1. Is the first hyperlink correct? It seems to point at an old EU Council document from 2009.

  2. Thanks, Wee Free Men -- I've no idea how that happened, but it's now corrected!

  3. Is it unfair to point out that not a single one of the signatories to this professorially-styled missive appears to be someone who might be PRACTICALLY involved with any of innovation, business, production or even patents at a pan-European level, nor do any of them appear to be people who might be PRACTICALLY involved in prosecution of patents at a European level nor multi-national enforcement thereof?

    13706/09?! How many languages?

  4. I was struck by the sentence "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." I have no idea what it is trying to say, but what it actually says seems to be nonsense, since the EU has changed the national law on patents several times. Surely they have not forgotten the Biotech Directive?

    I have other gripes about the letter but I shall leave it at that for now.

  5. On second thoughts, I won't leave it there. The Letter criticises that the unitary patent is subject to national law and that the Court is set up by international agreement. Yet the 2009 proposal referred to in the final paragraph has at Recital 4a:

    To the extent that this Regulation does not provide otherwise the substantive law applicable to the Community patent, for example as regards patentability, the scope of patent protection and the limitation of the effects of the patent, shall be governed by the pertinent provisions of the
    EPC and national law where this complies with Community law.

    It then says at Recital 9:

    The creation of the Community patent by this Regulation is part of a comprehensive patent reform, which also involves changes to the EPC and the establishment of a unified patent litigation system based upon an international agreement to be concluded between the Community, its Member States and certain other Contracting Parties to the EPC.

    So what is really the problem with the currently-proposed Unitary Patent system? I can see plenty of other things not to like about it, but the matters mentioned in the letter are none of them.

  6. The anonymous of 15:03 suggests that all these people are academics. That doesn't mean they are not also practitioners. Mario Franzosi is a good example. He signed wearing his academic hat but his real life existence is here: Mario is also famously the man who invented the Italian torpedo

  7. And wasn't it also Prof Franzosi who invented the Angora Cat Claim? And now this!

    He's a prolific inventor, it seems!

  8. The names of J. Straus, J. Drexl, R. Hilty, W. Cornish, Di Cataldo and Franzosi are very serious, competent and sensible experts. I shall read myself the document and draw my conclusions, but the fact that these experts express doubts has a considerable weight.

  9. Angora cats have been around since the 1600s according to Wikipedia. Not even a veteran like Mario F can claim to have been around since then. Maybe they invented Mario!

  10. Perhaps I should enlarge upon the relevance to patent claims of the well-known Angora cat.

    Imagine such a cat half-drowned. Pretty small, you would say. Now imagine the same cat, bone dry and at a peak of aggression, with all its hair standing on end. Pretty big, you might think.

    Now draft a claim that can be robustly defended against validity attacks brought against it, in the Federal Patents Court in Munich. Make it seem like the wet cat. Very solid and very small.

    But take care to make your claim ambiguous enough to afford you the scope to get aggressive in the Landesgericht in Duesseldorf, contending that your claim covers everything the accused infringer is doing.

    That's bifurcation lads and lasses, and Mario Franzosi's Angora cat.

  11. I would beg to differ with MaxDrei @ 16:36.

    This is nothing more than proper claim drafting, a skill every practitioner should have.

    With all due respect to the meme here, there is no reason at all to limit this to kats.

  12. I can be among signatories, then please add my name, I would be delighted! I fully agree with what is said in the motion. In addition, I to draw attention to seldom mentioned Article 28 of UPCA, which is about right of prior use - but which can be eventually recognized only in respect of a granted national patent, and subsequently limited to the territory of the State which granted said national patent. As I understand this Article, no right of prior use is foreseen for the Unitary patent. moreover, if there is a national patent granted, does it mean that it shall not be taken into account in accessing the novelty of the presumably later file unitary patent?
    Last but not least, the UPCA system is likely to be prohibitively expensive - a fact recognized by quite a number of EU states.
    I have to admit that I made a public appeal through an article in the leading newspaper to the Government of my country (Slovenia) to adopt at least "wait and see" policy.

  13. Dear BOJANAP
    I did not understand what you meant about Article 28, so I have revisited it, and I think that you have misunderstood it. The idea is to allow a prior user right in each country to the same extent as a prior user right would exist if the unitary patent was instead a national patent in that country. So I fear that one of your reasons for being against the unitary patent may have disappeared.
    Best wishes

  14. Darren Smyth,
    Did the concerns raised in the letter not, at least partly, arise from the fact that the law being applied will be EPC which is determined by a non-EC body which is also non-EU in nature i.e. states outside the EU could have a say in EU law.

  15. Dear Young Man of UPC
    Indeed the letter does appear to say that is a concern, but that also is odd since every proposal this century for an EU Patent has supposed that the EPO would be the granting body and that the patent would be granted according to the EPC. Including the 2009 proposal that the letter refers to with apparent approval.

  16. "University of South Africa (UNISA) in Pretoria, Germany"

    Certainly the most southern university of Germany!

  17. I think that the EU member states as any other states are proud of their own jurisprudence in patent matters, and the erection of the EPC-system was the maximum that a group of states could agree on might be delegated out. The EPC is deficient in one aspect: that of the right of the slighted applicant to have an independent judicial review of the granting process to the highest court, as is the case for national patent applications. It is a fundamental right.

    The only logical approach to uniform EU patent protection is obviously to have a EU-wide patent system, but the negative attitude by the states to real federation is very well displayed by their negative attitude to scrapping their national jurisprudence and abandoning their more or less harmonised patent laws. The time is not yet ripe, and as we know, many years have passed since the first attempts. Commisioner Michel Barnier wanted fame and pressed for the best solution obtainable: that a subset of the EU might go further and create the Agreement for this select group. The EU as such was a willing supplier of Regulations (and certain legal sneakinesses for those single states who were really opposed) that all have to adhere to, but which will only take effect when the UPC has been ratified by sufficient states. Obviously this creates a break in the EU, and it has not solved the fundamental problem of the slighted applicant. It is shoddy work, performed with a final haste that can only come about through pressure from the outside. I cannot believe that Barnier is to be faulted, although it was his dream.

    Now a group of eminent patent scholars deplore the present situation, which is due to premature and defective solidification of a system. In an ideal federalistic world, I would agree with them, but there are apects not yet discussed in this thread that prevent me. The reason is that the EPO is engaged as a subsupplier to the UPC, but by means of a system, where an applicant decides post-grant whether in fact he has intended (or now intends) a Unitary Patent. The logical development would have been to designate the EPO to be the examining entity for a proper Unitary Patent Application, because then the slighted applicant might go to the Unified Patent Court.

    But at present the EPO-system is being dumbed-down (and we are guaranteed this by means of ISO9001), and so it is in my opinion no longer fit to be a subsupplier, irrespective of whether a post-grant conversion is made or as an examining instance under contract for a Unitary Patent Application.

    For this reason we must be happy that the backup system in the form of the various national patent system has not been completely emasculated, and that we have judges in the various states that are capable of dealing with matters in all walks of life, including patents.

    The present development points more and more to go a national route. The grafting of new branches has not been successful. After the happy beginnings in the early 1980s we are being bombed back to the good, old Paris Convention.

    Kind regards,

    George Brock-Nannestad

  18. I am so tired. The debate might be summarised:-

    What is new is different - therefore I am against it.
    What is new is not the best I could hope for - therefore I am against it.
    I cannot get to heaven - therefore I will go to hell.
    Nobody asked me.
    The world is mad except for you and me - and sometimes I wonder about you.
    I am the only sane person in the world.
    Leave me alone.

  19. I am concerned about the way in which European laws and institutions are built nowadays. The UP and its UPC is quite a dreadful example, and now we see the same approach in the reform of the Boards of appeal of the EPO. Extremly short preparation, lack of transparency, design by non-specialists driven by ignorant politicians and wihout real consultation of those who are expected to make the system live, ... Have we completely lost our minds? Why all the hurry? As a friend once told me: it takes a hundred years to make an oak, in 24 hours you can only have a cucumber.

  20. Ipkat observer said:
    Here is an article worth reading

  21. I do agree with George Brock-Nannestad and Meldrew that the current UPC agreement and the basis on which it is founded do appear to be the best possible considering the political circumastances. Criticismis easy and in many cases suffers from a fear for the new situation. I would be tempted to say that in the filed of patents, which by nature deal with novelties and innovations, it would be fundamental to be pro (legal) changes.
    The drawback of the present times, however, as George rightfully mentions is the haste that is applied to the process of legislation. Again, this is mostly due to political reasons and for this it is only to be applauded that the current further drafting of e.g. the rules of procedure are left to (a representation from) the users of the system.
    Lastly, I am very confident that the UP and UPC will have a major boost in the harmonisation of the European patent law, even beyond the European Union only.

  22. I am afraid that most of the arguments in this petition are just incorrect. I have posted detailed comments on the EPLAW Patent Blog

    Wouter Pors
    Bird & Bird

  23. I only know two of the signors of the letter: both of them are linked to major IP firms the main business of which is validations. May this have influenced their positions?

  24. A late comment, but one of the signatories of this letter is Manuel Desantes, who was Vice President 5 of the EPO for a number of years. He was in charge of all the lawyers of the EPO (except those in DG3, that is).
    Just to balance the previous comment...


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