Does Art 5 UPP Regulation enable CJEU Jurisdiction over Substantive Patent Law?

Will this sky-reaching architecture host substantive patent law one day?

The short answer is … we don’t know yet!

A slightly longer answer is: It will, in the end, depend on the CJEU’s own interpretation of Article 5 of the Unitary Patent Protection Regulation (UPPR) and its understanding of the nature of the Unitary Patent Court Agreement (UPCR).

And a straightforward  answer may be: Only very rarely, if at all, because of three reasons:

1. The CJEU is not a regular third instance above the two instances of the Unified Patent Court.
2. The centralised structure of the Unified Patent Court – involving a Central Division in the first instance and a sole Court of Appeal as the second instance – will largely ensure uniform interpretation of substantive patent law anyway.
3. As substantive patent law is largely harmonised in Europe already and thus falls under the acte-clair-doctrine, there are only very limited  substantive patent law issues left that are in risk of being interpreted differently in different countries (or by different local/regional UPC divisions) and would thus need to be decided by a preliminary ruling according to Art 267 TFEU.

The more detailed answer. While all this may or may not be true, it still makes sense to (again) look closer into Article 5 UPPR, which has been introduced as Article 5a into the draft Regulation on the EU Council meeting of 28/29 June 2012 in exchange of former Articles 6 to 8 draftUPPR that caused so much headaches to (parts of) the profession and industry (see e.g. here and here), especially in the UK (see here). The removed UPPR articles have been introduced into the UPCA as new Articles 14f to 14i. New Article 5 UPPR and its crucial § 3 reads:

Article 5 (Uniform protection)

1.  The European patent with unitary effect shall confer on its proprietor the right to prevent any third party from committing acts against which that patent provides protection throughout the territories of the participating Member States in which it has unitary effect, subject to applicable limitations.

2.  The scope of that right and its limitations shall be uniform in all participating Member States in which the patent has unitary effect.

3.  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 7.

4.  [...]

But what does that mean?

Art 5.3 UPPR defines (i.) the acts against which the Unitary Patent provides protection and (ii.) the applicable limitations by referring to a specific national law as determined by Art 7 UPPR. Clause (i.) took the place of cancelled Art 6 and 7 draftUPPR (right to prevent direct and indirect use) and clause (ii.) took the place of cancelled Art 8 draftUPPR (limitations) by referring to the pertinent provisions of a particular applicable national law.

This, however, does not mean that the effects of one Unitary Patent are defined by, say, Belgian law and the effects of another Unitary Patent are defined by a different law in Sweden, because  the national law referred to in Art 5.3 UPPR by reference to Art 7 UPPR – the latter provision determining the national law according to which the Unitary Patent is treated as an object of property – is precisely the substantive patent law defined in Articles 14f to 14i UPCA after entering the respective national law upon ratification in that particular member state.

That is, Art 5.3 UPPR in fact refers to Art 14f to 14i UPCA which literally correspond to cancelled Art 6 to 8 draftUPPR. The only substantive difference between these groups of articles is that Art 14h UPCA excludes the use of biological material for certain purposes from patent protection, which Art 8 draftUPPR did not.

This means, in turn, that the substantive law the Unitary Patent is based on and which the Unified Patent Court will have to apply and interpret did not change at all by moving the substance of Art 6 to 8 draftUPPR into Art 14f to 14i UPCA.

What actually was changed by the amendment of the EU Council is that by Art 6 to 8 draftUPPR substantive patent law would have entered the acquis communautaire, i.e. the complete body of EU law, and thus would have been subject to preliminary rulings by the CJEU according to Art 267 TFEU, whereas Art 14f to 14i UPCA will be implemented as genuine national law in each particular member state that ratifies the UPCA. The latter may mean – at least if a formal point of view is adopted – that substantive patent law as defined by Art 14f to 14i UPCA would not be subject to preliminary rulings by the CJEU, because there simply does not exist any secondary EU law in the light of which theses national provisions could possibly be interpreted by the CJEU, as required by Art 267 TFEU.

At least, this would be the case if Art 6 to 8 draftUPPR would not have been replaced by Art 5 UPPR but just moved to the UPCA without replacement.

Now, the crucial question remains, whether or not Art 5 UPPR changes this clear exclusion of the CJEU from the new European patent system. Does Art 5 UPPR form a sufficiently strong link between the UPPR and the UPCA that draws the substance of Art 14f to 14i UPCA back into the regulation, thus again ensuring the CJEU’s competency on European substantive patent law?

Apparently, the Government of the United Kindom is of the opinion that Article 5 UPPR

increases the risk of references to the [CJEU] on matters of substantive law [...] by no more than a negligible amount (one so low that it can in practice be ignored),

as can be learned from a recent report of the famous European Scrutiny Commitee of the UK Parliament. This understanding, however, may be a bit formalistic as it assumes that the UPCA is nothing more that an ordinary international agreement without any reference to EU law, like e.g. the EPC, but nevertheless is a comprehensible and valid point of view.

Others, however, don’t share the ‘calculated optimism’ of the British Government, like e.g. Bernhard Rapkay, the EU parliament’s rapporteur for the UPPR and a strong defender of the competency of the CJEU, who was among the leaders of the uproar in the EU Parliament (see here) against the unilateral removal of Art 6 to 8 from the draftUPPR by the EU Council.

Rapkay and all members of the Legal Affairs Committee as well as the Legal Service are of the opinion that Art 5 would reinstate the CJEU’s competency by linking the UPP Regulation with the UPC Agreement, which is required to establish consistency of the new European patent infrastructure with  the uniform protection requirement of Art 118 TFEU (and opinion 1/09 of the CJEU, see here and here) as the CJEU is the only authority that can assure the required uniformity of patents (see also here and here).

Hence, there exist two opposing interpretations about the legal effect of Art 5 UPPR on the involvement of the CJEU and none of them appears significantly more likely than the other. Isn’t that itself a question about interpretation of secondary EU law according to Art 267 TFEU?

The political (and decisive) answer thus is, that Art 5 UPPR has (intentionally) been drafted by COREPER so that each of the two opposing groups is able to derive the particular result desired. Of course, one may ask at this point whether this legal construction is a stroke of genius or rather a scandal, but at least it calmed down the heated discussion about the CJEU and may help to prevent that the idea of a unitary patent infrastructure will fail again, like so many times before in the five decades of discussion.

There cannot be much doubt that one day the competency of the CJEU will be tested by one of the many UPC divisions with a request for a preliminary ruling pursuant Art 267 TFEU on a substantive issue, e.g. the doctrine of equivalence. Based on the above-sketched options to interpret Art 5 UPPR, the admissibility of the request may then be decided by the CJEU in either way:

• request inadmissible per se, as the question posed relates to an international treaty and thus lies outside the scope of Art 267 TFEU, or
• request admissible, because the question posed is strongly linked by Art 5 UPPR to secondary EU law, as required by Art 267 TFEU.

In the end, the CJEU may/can resolve this stalemate by (also) considering political issues, not least the political will of the CJEU itself to assume responsibility for this area of law.

At this point many stakeholders will remember the Monsanto case of the CJEU (C-428/08) in 2010 (some with fear others with hope), where the highest court of the EU had to interpret the scope of the EU Directive 98/44/EC on the legal protection of biological inventions and precisely documented this political will by ruling on a substantive patent issue for the first time, namely on the patent eligibility of a matter that contains or consists of genetic information.

Conclusion. Art 5 UPPR can be used to argue both CJEU involvement with and exclusion form substantive patent law. But it will be precisely the CJEU who will have to decide one day which of those two interpretations is in line with EU law. Before this background, it may be fair to assume that the CJEU will seize the opportunity to implement itself as the highest instance in European patent law, whenever the chance arises. It thus it is more likely that Bernhard Rapkay and his colleagues will in the end be proven right than the conservative UK Government. But neither Mr Rapkay nor Mr Cameron will still be in Office when this issue will finally be solved.

(Photo 2009 by Alphonso Salguiero via Flickr under a CC license)