As already reported (here and there), up to now the EU has not published the compromise proposal which was subject-matter of the discussion in JURI last Monday. The only source available to the general public appeared to be a leak originally published on the website of Pinpact.com. They simply have put a PNG graphics file on their server showing a single page comprising the wording of Article 5a (new) as well as Recitals 9 and 10 in the style on a non-paper, i.e. without any Official headings etc..
Just today, the law firm of Bardehle Pagenberg has published another version of that document comprising 3 pages in total. On page 2 thereof we find an explanation which is, in my understanding, not from Bardehle Pagenberg but from the original Cyprus non-paper. The following paragraphs might therefore shed some light on the logic behind this proposal:
- The proposed new Article 5a of the UPP Regulation is based on the assumption that it would seem sufficient that the UPP Regulation itself provides for the right of the patent proprietor to prevent third parties from committing acts against which the patent provides protection. These acts cover both the direct and the indirect use of the patented invention by a third party (as initially spelled out in more detail in the former Articles 6 and 7 of the UPP Regulation). The right of the patent proprietor to prevent third parties from such acts is subject to applicable limitations (as initially spelled out in former Article 8 of the UPP Regulation). The details of this right and its limitations are now determined pursuant to new Article 5a(3) of the UPP Regulation – by reference to the national law of the Member State applicable under Article 10 of the UPP Regulation of which Articles 14f to 14i of the UPC Agreement (as now amended to apply also to European patents with unitary effect, see in more detail point 3 below) are an integral part.
- The UPP Regulation furthermore stipulates in new Article 5a(2) that the right to prevent third parties from infringing the patent and the limitations to this right shall be uniform in all participating Member States in order to satisfy the requirement of the Regulation’s legal basis, i.e. Article 118(1) TFEU which provides for the establishment of uniform protection. This means that participating Member States are prevented from adopting in their national law provisions which would undermine the uniformity of protection.
- Pursuant to new Article 5a(3) UPP Regulation, uniformity of protection will be achieved by the reference to the law of the participating Member State whose law is applicable to the European patent with unitary effect as an object of property pursuant to Article 10 UPP Regulation. Implicitly this refers to Articles 14f to 14i of the UPC Agreement, which correspond to the former Articles 6 to 8 of the UPP Regulation and which define the scope of the right of the proprietor, its limitations and prior user rights. Articles 14f to 14i of the UPC Agreement which previously applied only to ”classical” European bundle patents have now been amended so that they now apply also to European patents with unitary effect. These Articles defining the scope of the right, its limitations and prior use rights will form an integral part of the national law of each participating Member State in which the UPC Agreement will come into force and for which the European patent with unitary effect will become operational.
With other words, one pre-condition of the game to find an acceptable compromise was a requirement to start axiomatically from Mr Cameron’s demand that Articles 6 to 8 shall be removed from the Regulation drafted for creating the European patent with unitary effect.
The creativity of the negotiator masterminds manifested itself by stipulating that instead of defining substantial patent law within the Regulation (where undoubtedly the system of patent law would require those provisions to sit) those provisions shall, in a first step, be transferred to national law of the participating Member States; see Para. 3 of the new Article 5a:.
“The acts against which the patent provides protection referred to in paragraph 1 and the applicable limitations shall be those defined by the law applied to European patents with unitary effect in the participating Member State whose national law is applicable to the European patent with unitary effect as an object of property in accordance with Article 10.”
This is the point where the critics of IPKat blog kicked in:
“The final element mentioned in each of these hypothetical situations — the applicable national law — provides the new twist in each case and the potential for divergent jurisprudence in the UPC seems enormous. So why is it that hardly anyone seems to be aware of this potential new complication? Why has no-one appreciated the risk of fragmentation which prima facie seems monstrous? At this point Merpel can almost hear the plaintive mewing of a thousand patent attorneys: ‘come back, CJEU, all is forgiven!’”
But wait! – Now, in a second step, the ingenious idea of the negotiators is to invoke some tricks out of the bag of thimble-riggers and jack-puddings: According to Para. (2) of the new Article 5a,
“The scope of this right and its limitations shall be uniform in all participating Member States in which the patent has unitary effect.”
At this point, some speculation has started as to which instrument should be utilised to accomplish this. And, according to Explanation 3, in a third and final step the decisive trick of the escape artist works as follows:
“[...] Implicitly this refers to Articles 14f to 14i of the UPC Agreement, which correspond to the former Articles 6 to 8 of the UPP Regulation and which define the scope of the right of the proprietor, its limitations and prior user rights. Articles 14f to 14i of the UPC Agreement which previously applied only to ”classical” European bundle patents have now been amended so that they now apply also to European patents with unitary effect. These Articles defining the scope of the right, its limitations and prior use rights will form an integral part of the national law of each participating Member State in which the UPC Agreement will come into force and for which the European patent with unitary effect will become operational.“
Hence, the Agreement itself is meant to be the legal instrument for the harmonisation of national substantial patent law as far as it relevant within the context of the European patent with unitary effect.
Should we be impressed by this legal construction of the implementation of a political compromise around three corners?
Axel H. Horns
German & European Patent, Trade Mark & Design Attorney
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Not even a single second! Here’s why there it indisputably impossible to find that the Unitary Patent regulation, amended according to Cyprus compromise, would be compliant with Art 118.1 TFEU.
The proposed solution to replace articles 6 to 8 of the regulation is based on a definition of the protection conferred by a unitary patent that would lie in national laws.
First, this protection can only be considered uniform because of harmonisation of these disposition by the UPC. Whereas Art. 118 gives power to EU to define such a uniform protection in accordance with the ordinary legislative EU procedure, it will actually be define in an international agreement.
That is, the expected uniform protection is created without any input from the Parliament but only by Members States, not acting inside Council with EU voting rules, but in their own name by agreement. While the “ordinary legislative EU procedure” require by Art. 118.1 TFEU implies a co-decision procedure between the European Parliament and the Council of the EU (in which each Member States has a weighted vote, and where majority is defined in EU Treaties).
Moreover any subsequent revision (Art. 58d UPC) of measures defining the uniform protection will be decided,members of UPC Representative Committee, that is likely heads of national patent office, with one vote by representative (Art. 9a UPC), and with a right of veto (Art. 58d (3)).
In clear, the uniform protection is not provided in accordance with the ordinary legislative procedure.
This is why this compromise is not better than June suggestion by Heads of States that Arts. 6-8 should be deleted. The European Parliament has strongly opposed such a deletion as being not compliant with Art. 118 TFEU. The Cyprus compromise is likely to be rejected in the same way. Members of the European Parliament are beginning to see this concern. They have been asked to posttpone the plenary vote…