The team is joined by Guest Kats Rosie Burbidge, Stephen Jones, Mathilde Pavis, and Eibhlin Vardy, and by InternKats Verónica Rodríguez Arguijo, Hayleigh Bosher, Tian Lu and Cecilia Sbrolli.

Thursday, 1 June 2017

To UPC or not to UPC? That is the question... (Part 1)

What is the future of the Unitary Patent and Unified Patent Court following the Brexit referendum? When and how will the new system go live? What does industry make of it all? These were the issues up for debate at AIPPI's exclusive seminar yesterday evening on: "The UP and UPC - institutions and industry panel debate", hosted at Bird & Bird's offices in New Fetter Lane.

London Central Division: a stage set for triumph or tragedy?
The panel comprised: Michael Froehlich (EPO) providing an institutional perspective on what practitioners can expect when the new system comes into effect; Tim Frain (Nokia) giving an industry insight on what users are doing to prepare for the new system; and Alan Johnson (Bristows) providing a private practice view on the creation of the UP/UPC - a topic he has been following since 1999.  Laura Starrs of the UKIPO had been scheduled to speak, but was unable to participate due to purdah rules that govern civil servants in the run up to a UK general election (see the Cabinet Office's 39 page guide on purdah here...).  The speakers expressed their own private views which are not necessarily reflective of those of their organisations. 
The report of this excellent AIPPI seminar will be posted in two parts.

Brexit - implications, predictions and unanswered questions

Up first was Alan Johnson to identify some of the short and longer term implications of the Brexit referendum on the UP/UPC.  He noted that the Brexit question does not just affect the UK - it affects the whole UP/UPC system given that the UK is one of the 3 mandatory countries and the host of a central division of the UPC.  Before the referendum result, the UK had made real progress on implementing enabling legislation, and it was on track for ratification in accordance with the timetable.  Between 23 June and 28 November 2016, there was little progress, and Alan was as surprised as anyone when the UK government gave an unconditional 'yes' to the UP/UPC project at the end of November by setting out its intention to ratify the agreements.  Following that announcement, the Protocol on Privileges and Immunities was laid before Parliament on 20 Jan 2017 [the day of President Trump's inauguration - a coincidence or an attempt to bury a news story? wonders Merpel], and statutory instruments (SIs) for Scotland and the rest of the UK [i.e. secondary legislation] were drafted to implement the P&I Protocol.  Shortly before the SIs were due to be considered by the Westminster and Holyrood legislatures, Theresa May announced her intention to call a general election, stalling the passage of the SIs. These are now unlikely to pass before the Holyrood and Westminster summer recesses begin on 30 June and 20 July respectively - thereby delaying UK ratification.  
Aldgate Tower

Given the requirement for 10 countries (in addition to the UK, Germany and France) to ratify before the new system comes into force, Alan noted that other countries are not yet ready for the provisional application phase (PAP) (e.g. Austria, Bulgaria and Portugal).  Germany appears ready, but the question is whether it will proceed given continued uncertainty regarding the UK's involvement.  The PAP phase is an important one, and includes adoption of the draft rules and judicial preparations.  In light of the above, there are two likely possibilities - either the project remains on schedule, or there is a delay of around 3-4 months.  This could mean that the new system goes live on 1 April 2018 [April Fool! cries Merpel].  What happens as regards the UK's involvement? There are several options:

1. Can the UK remain in the UP/UPC post-Brexit?  Alan noted that before Brexit, it was widely assumed that one had to be a member of the EU to participate in the new system under the legal framework.  Now, the general consensus seems to be that the UK can participate even after it leaves the EU (see for example the Pascoe opinion here.[Switzerland and others: watch this space] A big query is whether the UK would need a mechanism to allow a reference to the CJEU to participate in the UPC, and what that mechanism might be [not to mention the political acceptability of such a reference mechanism ...]

2. Must the UK leave after Brexit, and if so, how?  Alan noted that the UPCA has no exit provisions.  If the UK joins and then leaves the UP/UPC system, would there be an implementation period?

3. Is there a hybrid option? Alan mooted a potential hybrid option.  The UK may opt to stay within the UPC (on the basis that it is an international rather than a European Court), but exits the unitary patent component given that a UP constitutes a European right.  Would this hybrid solution be politically more palatable? 

It is difficult to second guess the UK government's position, but historically every UK government has been in favour of the UPC/UP on the basis that it is good for industry.  Considerable time and money has been expended in getting to this point.  Would the UK government really proceed with ratification with a view to leaving again in 18 months' time? On this basis, Alan optimistically predicted that the UK would make at least efforts to remain part of both the UPC and UP system.  However, the current uncertainty is likely to continue for the next 12-18 months, and so users must plan with all options in mind.

The Unitary Patent system - a practical perspective

Michael Froehlich
Michael Froelich was up next to explain the practical aspects of the UP system.  He noted that a European patent would remain to be granted by the EPO in the usual way - it is only after grant that a patent can be converted to a UP.  The claim set must be identical for all participating territories.  Michael observed that UPs do not replace EPs, they co-exist with both EPs and national patents (for example, EPs will live on in Switzerland and other non-participating countries). 

On costs, the renewal fees have been set at the level of the top 4 countries' renewal fees combined (i.e. Germany, UK, France and the Netherlands - given that Italy was not participating at that time).  The cost advantages of a UP are significant, particularly when invalidation and translation costs for classical EPs are taken into account.  Further, there are administrative benefits for users - one single renewal fee, one set of deadlines, one payee etc. 

Michael explained that the EPO is currently finalising technical implementation of the UP, and the procedure for filing requests for UPs will be fully automated.  There will be a new "Register for Unitary Patent Protection", which will form an integral part of the EP Register.  There are three official languages for entries on the register.  Michael demonstrated the new register by reference to a series of screen shots, which showed the information available to users of the new system (e.g. date of request for unitary effect, decision on request, date of registration of the UP, date of legal effect).  Helpfully, the new register also displays the relevant territories for each unitary patent.  Michael pointed out that UPs will vary with territorial coverage depending on the ratification dates for relevant countries. 

Michael then covered some current UP initiatives at a European and national levels:

1. Possible EPO "sunrise period"

Michael explained that the EPO is considering allowing users to file requests for unitary effect 3 months before the system goes live (this would coincide with the opt-out provisions).  The aim is to allow for a smooth transition to the UP system.  No decision has yet been taken - watch this space for a decision.

2. Supplementary Protection Certificates

The agreements do not provide for a unitary SPC.  Given the commercial importance of SPCs, the European Commission ultimately envisages a unitary SPC, however, this may not be achievable in the short term.  Pending the creation of a unitary SPC, the Commission is expect to clarify (by way of a communication) that national SPCs can be obtained on the basis of a UP.

3. National validity deadlines

What happens if a patentee applies for conversion to a UP but that request is rejected after the deadline for a national patent has passed? The Select Committee is considering this issue.  There seems to be momentum for a 'safety net' approach, whereby national deadlines should be held open until after the outcome of a unitary conversion request (Sweden, Finland, Netherlands and Germany are in the process of taking steps to implement a safety net).   

4. Double protection of unitary patents and national patents?

The relevant regulations leave the question open as to whether double-protection of an invention is possible through both a unitary patent and a national patent.  The vast majority of countries have opted not to allow double-patenting (for example, an offending UK national patent can be revoked by the Comptroller).  However, Germany is lifting the prohibition on double-protection, and other participants are wondering whether to follow suit.  One issue to avoid with double-patenting is double-enforcement.  In Germany, a new provision provides for an 'estoppel defence' so that national proceedings would be dismissed by the German Courts where UPC proceedings are pending (or have already been decided) that cover the same subject matter. 

Next up in part 2 - Tim Frain and Q&A session

23 comments:

Anonymous said...

The PAP phase? Not only is that an extremely unfortunate name it is also an shining example of RAS syndrome.

Ashley Roughton said...

The P&I statute is an extraordinary document. The most intriguing part of it is that judges and employees of the court are exempt from tax and national insurance (so far as it amounts to a health contribution tax)on their salaries, but not their pensions. However just when you candidate employees and judges out there are saying "whoopee, me pay no tax", those taxes and insurances are replaced by an "internal" tax and a contributory health scheme to support the court ... and pay for the health scheme.

I think that this creates a worrying incentive on judges and employees to encourage potential users to become actual users (and give judgments accordingly) since the more money that is derived from issue fees, the lower the internal tax.

Ashley Pedant

Anonymous said...

Apparent typo: "validation"?

"The cost advantages of a UP are significant, particularly when invalidation and translation costs..."

Stay on Earth said...

Once again, wishful thinking at its best.

It would be nice to obtain the views of other people than from Bristows and consorts who have had their finger in the pie for a long time.

It is by far not a "general consensus [seems to be] that the UK can participate even after it leaves the EU". This might be the opinion of Bristows and Co, and we all know the reasons for this, but not everybody shares this opinion. Even the Pascoe report has clearly stated the difficulties facing this option. Saying now that the Pascoe report has gíven a green light for this is more than wishfull thinking, it is a gross distortion of facts.

All the proponents for a continued participation of the UK after Brexit, now want to bring in other non-EU countries. Have those people forgotten why EPLA was dead borne, and for what reason? You might turn opinion 1/09 the way you want, but without a reference to the CJEU, any "international" court system about unitary protection will not be in line with EU Law. By the way Opinion 1/09 is not as obscure as the Pascoe report says...

The last avatar of trying to keep UK in the UPC is the "hybrid" system. Imagination has no limits, but please stay on Earth.

With the present head of the EPO, nothing bad about the UPC can be uttered. But I would like to know what is the legal basis for a "EPO sunrise"?

The more the discussion goes along, the more confusing the issues become, and more uncertainty comes into the system. Even Bristows' representative had to recognise the big uncertainty ahead of us.

Here we are are the opposite of what the EPO claims it wants, i.e. "early certainty", or is it that by pushing things through at any cost, will there be creation of facts which make a (Br)exit impossible? I do not think that IP users deserve this.

Rather than getting exited about the non-taxation of the judges salaries, one should look at the real problems. Does anybody consider that the judges at the CJEU are not independent because their salaries are tax free? Here again, stay on Earth.

There are more fundamental issues, for instance at constitutional level, which deserve our attention than the question of taxation of salaries of judges.

Techrights and Co fingers off, even by reference!

Proof of the pudding said...

Is there a problem with the comments facility on this thread? My comments from 2 June and from this morning seem to have both gone astray...

Eibhlin Vardy said...

Thank you all for your comments. Proof of the pudding - I'm not aware of any technical issues, and cannot see any pending comments from you, but will investigate.

Proof of the pudding said...

Hmmmn. Can't think what was wrong with my comments that (twice) failed to reach this thread. Let me try again, with a bit of rephrasing.

The article states that "Now, the general consensus seems to be that the UK can participate even after it leaves the EU". But what is meant here by “the general consensus"? Is it the consensus of all informed practitioners or instead the majority view amongst regular commentators on the UPC? I suspect the latter, not least because I have never heard of any survey seeking views on this point. If my suspicion is correct, then I would caution against using phrases such as “the general consensus”, particularly in view of the fact that regular commentators on the UPC are a pretty self-selecting (and likely unrepresentative) group.

There is another aspect of all this that puzzles me even more, though.

Before the Brexit vote and the Gordon and Pascoe opinion, the "general consensus" was quite the opposite of what it is now alleged to be. But how is it that the consensus amongst regular commentators on the UPC has performed such an astonishing volte face when there has (to my knowledge) been so little attention paid to the key arguments that underpin the rather surprising conclusion in the Gordon and Pascoe opinion?

It appears to me that there are two main possibilities here. The first is that Gordon and Pascoe’s opinion is so clear, persuasive and obviously correct that it has removed the scales from all of our eyes so that we can now see how wrong we were beforehand. On the other hand, the second possibility is that the desire of proponents of the UPC to believe in the conclusion has hindered detailed, critical analysis of the opinion.

Sadly, I suspect that the latter possibility is the best explanation of what has happened. This is primarily because Gordon and Pascoe’s opinion is heavily reliant upon what appears at face value to be a very counter-intuitive conclusion. That is, despite several statements to the contrary in the UPC Agreement itself (the recitals, Article 1 and Article 21), Gordon and Pascoe conclude that the UPC is not "a court common to the Contracting Member States". Whilst I would not expect commentators to dismiss that argument out of hand, I am more than a little surprised that so little attention has been paid to the question of whether it can possibly be correct.

More worryingly, no one seems to have questioned whether, apart from the possibility of the UK remaining in the UPC post-Brexit, any further consequences might flow from Gordon and Pascoe’s conclusion. I find this particularly alarming as it seems to me that one inevitable conclusion is that the UPC Agreement would be incompatible with EU law.

The reason for my conclusion on this point is that it is only by being "a court common to the Contracting Member States" that the UPC becomes part of the EU legal order, which (amongst other things) affords it the ability to refer questions to the CJEU.

I cannot overstate the importance of this point. If Gordon and Pascoe are correct and the UPC is truly an "international" court (as opposed to part of the national legal system of various EU Member States), then it would have the same status as the Boards of Appeal of the EPO... which are of course unable to refer questions to the CJEU.

Does the “general consensus” take this consideration into account?

Proof of the pudding said...

Two days on and no one has rushed to counter the proposition that either the UK cannot stay in the UPC post-Brexit or the UPC Agreement is incompatible with EU law.

Does this mean that either everyone agrees with that proposition or that no one who disagrees has noticed it?

Tim Jackson said...

Gordon and Pascoe conclude that the UPC is not "a court common to the Contracting Member States".

I've not gone back to check, but I don't think that's quite what they said. They did acknowledge that there would need to be some changes to the definitions and wording around "Member State" and "Contracting Member State".

At the moment, the definitions in Article 2 UPCA say that a
"Contracting Member State" is a Member State party to the UPCA itself. The suggestion is that the UK could remain as a contracting state party to the UPCA, with those changes to the wording and given the necessary political will.

However, Article 2 also defines a "Member State" as an EU Member State. I think that's why changes to the wording would be needed.

Proof, in the past I've also had posts that just disappeared. I've come to the conclusion that it happens when I make a long post that includes HTML tags. If I get the HTML syntax wrong, the error message is very small and tucked away at the top of the post. In a long post, you can't see it unless you scroll up looking for it, and it is easy to assume that the post was successful.

Proof of the pudding said...

Tim - I agree that the missing comments have likely been "lost" for technical reasons. I very much doubt that there is any "selective editing" going on.

The part of the G&P opinion that I am thinking of is at the end of para 59:
"Whilst Article 1 of the UPCA and Article 71a of the Brussels Regulation designate the UPC as a “court common to a number of Member States”, we do not consider that such secondary legislation is capable of converting the UPC’s fundamental status as an international court into that of a court which is part of the national legal order".

That seems to pretty clearly set out the position that G&P view the UPC as not being a "court common to the (EU) Member States". Or am I missing something?

This is a key point, as my understanding is that the UPC will only retain the ability to refer questions to the CJEU if it remains part of the (national) legal order of EU Member States... which it can only do by being a court common to EU Member States. The participation of a non-EU State would seem to rather throw a spanner in the works on that point.

Tim Jackson said...

Your quote from Gordon & Pascoe doesn't say that the UPC is not a court common to the Member States. It says that despite having that designation, that doesn't convert it from being an international court to a court which is part of the national legal order.

The context is that this is one of the reasons for saying that CJEU Opinion 1/09 doesn't prevent a non-EU country remaining in the UPCA. G&P say that Opinion 1/09 doesn't have the effect that courts outside the Union legal order may not be granted jurisdiction to decide disputes which raise questions of EU law. Though safeguards are required, including the ability for the court to refer questions of EU law to the CJEU.

Since the UPC is an international court, not part of the UK national legal order, it will retain its jurisdiction to refer questions of EU law to the CJEU, even when the UK courts lose that jurisdiction on Brexit.

Stay on Earth said...

It is amazing to see how wishful thinking is acting. I fully agree with proof of the pudding.

You may read Opinion 1/09 anyway you like, but it does not say that non-EU members can be part of the UPCA. The possibility to refer questions to the CJEU is and stays reserved to member states of the EU. Do you think the CJEU will simply accept referrals to it by any court in a non-member state of the EU?

If this would be possible, we would have heard about it, and EPLA would have been adapted to provide for this possibility.

What other safeguards would be needed, beside at least the ability to refer questions to the CJEU? What about enforcement? Lugano yes, but.

Proof of the pudding said...

Tim - many thanks for your comments. With respect, however, I think that you are missing the main point here.

Perhaps I can best illustrate that point by posing the following question: what is the legal basis for the ability of the UPC to refer questions to the CJEU?

The answer, of course, is that the UPC is a court that forms part of the national legal order of the EU Member States. Being such a (national) court would allow the UPC to make references under the provisions of Article 267 TFEU.

This explains why Article 21 of the UPC Agreement reads as follows:
"As a court common to the Contracting Member States and as part of their judicial system, the Court shall cooperate with the Court of Justice of the European Union to ensure the correct application and uniform interpretation of Union law, as any national court, in accordance with Article 267 TFEU in particular. Decisions of the Court of Justice of the European Union shall be binding on the Court".

Now, I do not think that it is impossible that there might be other ways in which the UPC could be granted authority to refer questions to the CJEU - perhaps even if the Member States of the UPC Agreement include non-EU countries. However, as things currently stand, Article 267 TFEU is the sole basis on which the UPC could refer such questions. Thus, if the UPC is not actually "part of the national legal order" of EU Member States, then that removes the sole basis upon which it can make a reference.

2bears said...

Why is the author of this post so reluctant to allow comments referencing the paper at http://bitly.com/2r1ZQdI on the Gordon/Pascoe Opinion and its implications for the topic of UPCA compatibility with EU law, as it was raised here by Proof of the Pudding?

Mysteriously, two previous comments have not yet made it to the comments section. Why is the author so eagerly blocking any mention of this assessment?

Tim Jackson said...

Stay on Earth and Proof of the Pudding:

You both point out problems coming from the current wording of the UPCA. No-one has suggested that there are none. So Gordon and Pascoe were asked about that, and about what changes would be needed to overcome the problems. They gave a list in their paragraphs 104-109, and they discussed how those changes could be implemented from paragraph 110 onwards.

Note for example the subtle interplay between the amendments suggested to Articles 1 and 21. These would amend the statement in Article 1 that the UPC was a court common to European Union Member States - it would just be common to the contracting states of the UPCA. And Article 21 would substitute an obligation on the UPC to cooperate with the CJEU as any national court of an EU Member State does.

So rather than relying on being part of the institutional legal order of an EU Member State, the UPC would instead be obliged to cooperate as though it was. See G&P paragraph 102 (which does nevertheless acknowledge that the CJEU's reasoning is opaque).

As you say, there is some debate as to whether the CJEU could accept referrals from such a revised UPC. Gordon and Pascoe noted in paragraphs 85-88 that the CJEU can accept referrals from other non-EU tribunals. Interestingly, they quoted Opinion 1/09 which acknowledges this. An example is the European Common Aviation Area Agreement, under which non-EU tribunals apply EU law.

However, G&P believed that there would still need to be an international agreement between the UK and the EU to allow the CJEU to accept referrals from the UPC, and suggested this could be dealt with as part of the Brexit deal (paragraph 107).

Proof of the pudding said...

Tim - thanks again for your comments.

Whilst your comments are certainly illuminating in some respects, they leave me a little bit confused in other respects.

Are you suggesting that the "problems" with the current UPC Agreement are that it does not permit:
(a) the participation of non-EU Member States; or
(b) the UPC to make preliminary references to the CJEU?

As far as I can see, it has to be one or the other. That is, the UPC as currently constituted is either:
(1) part of the national legal order of EU Member States (thus having the ability to make references to the CJEU, but not the ability to accommodate non-EU Member States); or
(2) not part of that national legal order (thus enabling the participation of non-EU Member States but not enabling the UPC to make references to the CJEU).

Which do you think it is?

I cannot see any logical way that the current UPC Agreement can be workable if the answer is option (2). Indeed, would that not suggest that it would be plain irresponsible for the Member States to ratify the agreement?

I think that we need to be very careful here when it comes to the question of whether the UPC has the ability to make preliminary references to the CJEU. This is because that ability is a matter of fundamental legal substance and not form. That is, the UPC cannot be granted that ability merely by writing it into the Agreement. There needs to be more than this, namely conformity of the entire Agreement (and the composition of its Member States) with the relevant provisions of EU law.

In this respect, comparisons with the ECAA are a bit deceiving. This is because the European Community was (in addition to nation states) a signatory to that Agreement. We are most definitely not in that situation with regard to the current UPC Agreement: hence, Article 267 TFEU really is all that can currently be relied upon.

2bears said...

Thank you for making my comment public, I desist from asking where the previous ones have gone. They also may have fallen victim to the mysterious "technical glitches" that seem to abound these days, often for comments expressing a certain position.

As to the discussion, it is, depending on the perspective, either amusing or dreadful to see some people arguing based on the Gordon/Pascoe Opinion (GPO) as if it had any kind of authority. Please note that this is an interpretation of what its authors think the legal situation is/could be, and not even a convincing one.

Of course, the GPO was commissioned for exactly this purpose, namely for creating a baseline for the discussion to follow and for drawing people's attention away from the legal situation that was widely accepted prior to the Brexit incident, as sticking with it would make a UK participation in the UPCA at least very difficult. Even the GPO can only in part avoid the problems caused by Brexit, at the price of relying on an understanding of CJEU Opinion 1/09 that is wishful thinking at best while at the same time, and this is the point touched upon by Proof of the Pudding, lending support to the notion that the UPCA as it stands (still) violates EU law.

Frankly, looking at the style of argumentation applied in the GPO, not to mention its repeated formal/linguistic flaws, I would be surprised if a QC was involved in this beyond simply allowing his name to be put on it. I understand the strains many members of the legal profession are under as regards the UPC and the desires they have, but trying to substitute an objective legal analysis for an obviously biased, inconsistent and poorly written opinion that has been paid for by law firms and certain circles of the major industry and that appears to derive its authority mainly from the fact that it bears the name of a renowned barrister amply demonstrates the level of desperation meanwhile reached in certain circles.

Tim Jackson said...

Proof of the Pudding:

You keep referring to problems with the current UPC agreement. But everyone agrees that the current agreement would need to be amended to overcome these problems. Gordon and Pascoe explain how it can be done.

You argue that comparison with the ECAA is a bit deceiving, because the European Community (now the European Union) itself is a party to the ECAA. Gordon and Pascoe argue that in addition to amendments to the UPCA, it would also be necessary to have a separate agreement to which the European Union would be a party. They suggest that this could be part of the Brexit agreement.

I'm having difficulty understanding your objections?

Proof of the pudding said...

Tim - with the greatest of respect, it's quite simple.

If G&P are to be believed (and I take this to be your position), the UPC - if it came into being under the provisions of the current UPC Agreement - would not form part of the national legal order of EU Member States. This means that bringing the UPC into being under the current Agreement would create a court that is not able to refer questions to the CJEU. This is because there would simply be no legal basis for the UPC to make such references.

The situation would be different if G&P were wrong in the sense that, under the current Agreement, the UPC would actually form part of the national legal order of EU Member States. In that event, the UPC could rely upon the authority of Article 267 TFEU to make references to the CJEU. The flip side of this, however, is that it would be impossible for the UK to continue to participate in the current UPC Agreement post-Brexit...

In other words, you can't have your cake and eat it.

Tim Jackson said...

Proof, you are still talking about the current UPC agreement.

Why?

Everyone agrees that the current agreement wouldn't enable the UK to stay in the UPC after Brexit. Everyone agrees that it therefore needs to be amended.

In those circumstances, I think it's rather irrelevant to take an abstruse point about whether the UPC (under the current agreement) would form part of the legal order of national EU states.

But I think where G&P are coming from, perhaps, is that the UPCA is an international agreement, which doesn't naturally form part of the EU legal order in and of itself. Currently it gets that status by reason of being a court common to a number of EU member states, and only EU member states. But it would lose that status when one of the states leaves the EU. Amendments are then required so that the EU legal order continues to apply in some other way.

Proof of the pudding said...

Firstly, the current UPC Agreement is the only one currently on the table. There is no amended Agreement, and there may never be.

Secondly, if the current Agreement does not comply with EU law (because, as argued by G&P, it is incapable of creating a court that forms "part of the national legal order" of EU Member States), then it would be irresponsible to bring it into force... as it would be unworkable from the off.

Also, just because the UPCA Member States are all currently EU Member States, it does not necessarily follow that the UPC (under the current UPCA) will form "part of the national legal order" of the EU Member States. Indeed, it would be absurd if the status of the Member States was the only relevant factor.

For example, why should the UK's departure from the EU suddenly remove the UPC from the national legal order of other EU Member States? Conversely, why should the mere fact that all signatories are EU Member States mean that an international agreement is capable of creating a court forming part of the national legal order of those states? Does there not need to be something more than just a common status of the participants to properly "embed" the UPC in the national legal order?

Remember that Spain raised this very complaint (incompatibility of the UPCA with EU law) in one of their cases - and that complaint was only dismissed because it was inadmissible, not because it was wrong.

Tim Jackson said...

"Secondly, if the current Agreement does not comply with EU law (because, as argued by G&P, it is incapable of creating a court that forms "part of the national legal order" of EU Member States), then it would be irresponsible to bring it into force... as it would be unworkable from the off."

Indeed it would, if that were correct. Except that this is not quite what G&P are saying. There is more than one way to provide the safeguards required in order to comply with EU law.

One is if the UPC itself were part of the national legal order of the contracting EU member states. Article 267 TFEU and the rest of EU law would then apply directly, with no need to say more. But it isn't, as you point out. As stated by G&P it's an international agreement, and the fact that it is common to the contracting EU member states doesn't change that.

So the way in which the current UPCA provides the necessary safeguards is by stating explicitly that the UPC is common to a number of EU Member States (Article 1). And by imposing obligations on the UPC as a court common to those EU Member States (Articles 20-23). Including an obligation to make references to the CJEU in accordance with Article 267. (See G&P paragraph 15).

This is not a direct application of EU law (including Article 267 TFEU), but instead it hard-codes the same obligations into the UPC itself.

The other side of the coin (currently) is that the CJEU automatically has jurisdiction to receive references and decide questions of EU law, because the UPC is common to a number of EU Member States, and the CJEU has jurisdiction over all those Member States. No need to hard-code anything.


However, this current form of the UPCA needs amendment after Brexit. G&P's proposed amendments keep the hard-coded obligations, but adapt them to the new situation that one of the contracting states is no longer an EU Member State. As previously, this is not a direct application of Article 267 etc.

Unfortunately the CJEU would no longer have jurisdiction automatically, as its jurisdiction is limited to EU Member States (G&P paragraphs 80, 84, 85). This is why G&P say that a separate agreement is needed, with the EU as a party. The CJEU's jurisdiction also now needs hard-coding.

Proof of the pudding said...

Tim - many thanks for the detailed explanation.

One minor point: is it not a little odd that there are references in Articles 21 and 22 UPCA that only seem to make sense if the UPC does form part of the national legal order of the EU MSs?

For example:
"as part of their judicial system" (Art. 21);
"as any national court"; and
"in accordance with Union law concerning non-contractual liability of Member States for damage caused by their national courts breaching Union law".

It appears to me that the drafters of the UPCA tried hard to create a "Benelux-type" court that the CJEU's Opinion 1/09 indicated was OK. But now it seems necessary to argue that the drafters were unsuccessful in their efforts, and that the UPC complies with EU law by way of a novel mechanism.

I can at least concede that the UPC is very obviously different from the Benelux Court. This is not least because the UPC is an alternative to the national courts, rather than a court that is "plugged in" to the national legal systems by way of appeal / remittance links.

However, I have my doubts over whether the proposed novel mechanism for complying with Article 267 TFEU would work. That is, given that the CJEU can only accept references from "any court or tribunal of a Member State", is there not a risk that the CJEU - despite the safeguards that you mention - would find that the UPC is not a court "of a Member State", and thereby refuse to accept preliminary references from that court?

Of course, I do not rule out the possibility that the CJEU will find a reason why the current UPC set-up is compliant with EU law. However, as the CJEU has not yet given the system the "thumbs up", we cannot be certain that they will do. In this respect, do you not worry that the arguments in G&P's opinion could perhaps undermine a crucial point for EU law compliance (namely the ability for the UPC, as a court "of a Member State" to make references to the CJEU)?

More importantly, do you not worry about the risks of "going live" with a system that is not guaranteed to be compliant with EU law and where there are no guarantees that the UK can remain in that system post-Brexit? I understand the temptation to press on given that we are now so close to realising a long-held wish amongst certain sections of the IP community in Europe. Nevertheless, given the lack of guarantees on important points (especially when there are lingering, and well-reasoned doubts on those points that cannot yet be dismissed), I cannot help thinking that pressing on regardless generates huge - and frankly unacceptable - uncertainty for rights holders (and interested 3rd parties).

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