Unified Patent Court: Some Thoughts on Territorial Aspects
According to the closing note at the very end of the text of the Draft agreement on a Unified Patent Court (Document 16222/12 [2012-11-14]), indication is given that the Agreement is scheduled to be signed on February 18, 2013 in Brussels. After that date, a rush to the respective national Parliaments of all of the participating Member States is attributed top priority on the agendas of the Governments; c.f. Document 16221/12 [2012-11-14] Updated draft declaration of the contracting Member States concerning the preparations for the coming into operation of the UPC agreement.
Article 59 Para. 1 of the Agreement stipulates:
Entry into force
(1) This Agreement shall enter into force on 1 January 2014 or on the first day of the fourth month after the deposit of the thirteenth instrument of ratification or accession in accordance with Article 58a, including the three Member States in which the highest number of European patents had effect in the year preceding the year in which the signature of the Agreement takes place or on the first day of the fourth month after the date of entry into force of the amendments to Regulation (EC) 44/2001 concerning its relationship with this Agreement, whichever is the latest.
Well, what would happen if the quorum of 13 ratifications including Germany, United Kingdom and France (i.e. the three Member States in which the highest number of European patents) is not reached in some foreseeable future due to some political misfortune? Take, for example, a purely fictional case where the United Kingdom instead of timely ratifying the Agreement holds a referendum resulting in a margin of votes in favour of leaving the EU at all (note also this and that).
In such case the Regulation of the Council and the European Parliament implementing enhanced cooperation in the area of the creation of unitary patent protection (Document 11328/11 [2011-06-23]) provides a matching clause in Aricle 22 Para. 2:
It shall apply from [a specific date will be set and it will coincide with the date of application of Council Regulation .../... on the implementation of enhanced cooperation in the area of the creation of unitary patent protection with regard to the applicable translation arrangements] or the date of the entry into force of the instrument creating a unified patent litigation system and the setting up of such a system, whichever is the later.
Hence, if the Agreement creating the Unified Patent Court is blocked, the Regulation creating the European Patent with unitary effect will effectively be blocked as well.
If the Regulation and the Agreement both have entered into force in accordance with the political timetable, the question will arise as to how can be dealt with nullity and/or litigation cases touching one of the non-participating member States of the EU, i.e. Italy and Spain plus any further defectors not managing to ratify the Agreement e.g. due to domestic political or constitutional (Denmark? Ireland?) troubles.
Article 15 of the Agreement clarifies:
The international jurisdiction of the Court shall be established in accordance with Regulation (EC) 44/2001 or, where applicable, on the basis of the Convention on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters (Lugano Convention).
Article 22 Number 4 of Regulation (EC) 44/2001 stipulates:
The following courts shall have exclusive jurisdiction, regardless of domicile:
4. in proceedings concerned with the registration or validity of patents, trade marks, designs, or other similar rights required to be deposited or registered, the courts of the Member State in which the deposit or registration has been applied for, has taken place or is under the terms of a Community instrument or an international convention deemed to have taken place.
Without prejudice to the jurisdiction of the European Patent Office under the Convention on the Grant of European Patents, signed at Munich on 5 October 1973, the courts of each Member State shall have exclusive jurisdiction, regardless of domicile, in proceedings concerned with the registration or validity of any European patent granted for that State;
Obviously it looks as if Article 22 Number 4 might kick in in cases where a national part of a conventional European bundle patent is challenged in a EU Member State not participating in the UPC Agreement. However, adjustment of the text of Regulation EC 44/2001 appears to be necessary; see also the wording of Article 59 Para. 1 of the UPC Agreement. Currently I do not have any Documents reflecting the state of play concerning necessary Amendments to Regulation 44/2001; however, see in particular Document 17407/11 dated December 02, 2011 titled Draft agreement on the Unified Patent Court – Relationship of the draft agreement on the Unified Patent Court with Regulation (EC) No 44/2001 Brussels I.
A European Patent with unitary effect will have no effect in a Member State not participating in the enhanced co-operation; see Article 3 of the Draft Regulation. Hence, there appears to be no room for litigating a European Patent with unitary effect in Italy, Spain or any other non-participating Member State.
Axel H. Horns
German & European Patent, Trade Mark & Design Attorney
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The European Parliament has adopted last week a regulation to repeal Regulation (EC) No 44/2001 Brussels I.
Apparently, I see nothing related to the UPC as suggest in Document 17407/11 (see new article 71a on annex). I’ve not studied the impact of this on UPC. Also I don’t know the state in Council about this regulation amending Brussels I.
Axel – thank you for this analysis. My interest is what would happen if the UPC came into force, but was not ratified by all Member States participating in enhanced cooperation.
As far as I can tell, the UPC will have jurisdiction for the countries that have ratified the agreement, but the national courts will retain jurisdiction for the non-contracting participating states as governed by 44/2001 Brussels I.
Thus, assuming Denmark did not ratify, and a European patent with unitary effect was infringed by a Danish company in Denmark, then I guess the patentee would have to sue through the courts in Denmark, who would have to apply EU law.
On the other hand, if the infringement extended to Germany, then the patentee could bring proceedings via local division of the UPC in Germany under Article 15a(1)(a).
I am certainly no expert in this area, but my reading of 17407/11 is that the new Art. 71bis would mean that the judgment of the UPC would also have to be enforced in Denmark under those circumstances.
We live in interesting times. Thank you for your help.
Julian – Thank you for your comment. In my view the problem is, in the first place, whether or not a European patent may have unitary effect e.g. concerning Denmark as long as Denmark has not yet ratified the UPC Agreement.
Let me refer to Document 11328/11 dated June 23, 2011. This paper conveys the Draft Regulation implementing enhanced co-operation tn the area of unitary patent protection.
As already discussed earlier in this thread, Article 22 Para. 2 and 3 implement a blocking mechanism: Even if the regulation formally has entered into force on the thwentieth day following that of its publication in the OJ of the EU in accordance with Article 22 Para 1, nothing will happen immediately therefter in particular if the UPC is not operational. An effective start date of the system of the unitary patent system (after which the road block is deemed to be removed) is to be promulgated.
According to Article 22 Para. 3, the participating Member States have to make sure that from the promulgated effective start date of the unitary patent system onwards the unitary European patent is deemed *not* to have taken effect as a national patent.
Hence, in my view Denmark is inapt to become a “participating Member State” in the sense of Article 2 Lit. (a) before the date of ratification of the UPC Agreement. As long as Denmark merely belongs tto both of EU and EPC but has not ratified UPC Agreement, every European patent granted by EPO with effect for Denmark automatically can merely be conventional bundle patent. Or, the entire system cannot start until Denmark officially either has withdrawn as “participating Member State” or, alternatively, eventually has ratified the Agreement.
Only if Denmark has ratified the UPC Agreement, notification in accordance with Article 21 can be made; the flood gates get opened, and European Patents might be registered with unitary effect having this effect also with regard to the territory of Denmark.
Just my two cents; perhaps someone else has a different view. Would be interested to learn.
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The best analysis I’ve found of what happens to Member States who do not ratify UPC is the last paper of Hanns Ullrich (from the Max-Plank Institute):
Ullrich, Hanns, Select from Within the System: The European Patent with Unitary Effect (October 1, 2012). Geiger, Chr. ed., What Patent Law for Europe?, Paris (Litec), Forthcoming; Max Planck Institute for Intellectual Property & Competition Law Research Paper No. 12-11. Available at SSRN: http://ssrn.com/abstract=2159672.
In this paper you can find the fragmented consequences for Member States which do not ratify UPC, which leaves them indeed with the classical EPO bundle of national patents, to be enforced before their national courts. See in particular footnote 84, p. 20.
Axel is right when saying this, but wrong when envisaging that “the entire system cannot start” before all participating Member States have ratified the agreement. This is because of new paragraph 2a of Art. 22 of the unitary patent regulation.
As a gift to these bloggers, last documents as of November 19, can be found on https://www.unitary-patent.eu/content/legislative-files.