EU – EP Paper: CJEU case law does not expressly exclude the possibility to allow a non -EU Member State to form part of the UPCA

Posted: November 8th, 2019

EU Patent and Brexit, In-Depth Analysis, Requested by the JURI committee, November 2019

A paper requested by the European Parliament’s Committee on Legal Affairs and commissioned, overseen and published by the Policy Department for Citizens’ Rights and Constitutional Affairs, concludes amongst other things that CJEU case law does not expressly exclude the possibility to allow a non -EU Member State to form part of the UPCA.

“This In-depth Analysis resumes the possible scenarios concerning several Intellectual Property provisions of EU and international law in the event of a withdrawal of the United Kingdom with or without a proper withdrawal agreement. It tries to clarify the question how Brexit may affect the entry into force of the new European Patent with Unitary effect (EPUE), especially, if the Unified Patent Court Agreement (UPCA) can enter into force, even in case the UK has withdrawn from the EU. What would be the necessary steps to be taken by the EU in order to ensure the functioning of the future European Unitary patent and in case the UPC Agreement would have to be revised because of Brexit.”

“Maintaining the UK within the UPCA would need innovative legal solutions, as the UPC is an international court applying EU law -and the reason for Brexit was all about not applying EU law any more. All EU actors are of the opinion that the CJEU would have the final say about interpretation of existing EU Law, that the primacy of EU law has to be respected and that the CJEU is the ultimate guardian of EU intellectual property law. On the other hand, the jurisprudence of the CJEU is not expressly excluding the possibility to allow a non -EU Member State forming part of the UPCA.”

A copy of the paper can be read here.

One Response

  1. Attentive Observer says:

    Under an “in-depth” analysis I understand something different from what has been delivered. There are several problems with this “paper”.

    The “paper” seems totally mistaken when it states that “Power of appeal decisions is taken away from EPO and it’s Boards of Appeal which loses its quasi monopoly, as it will be a Court and finally the Court of Appeal which will review the decisions of the EPO (objections to granted patents. or refusing an application). I have up to now never seen anything so beside the point.

    The EPO boards of Appeal will conserve their monopoly for deciding refusals of applications and the maintenance or not of patents after an opposition.

    The “paper” appears further to confuse the origin of the European patents with their validation. According to the “paper”, NL comes before IT. This means that the London Section should be transferred to NL rather than IT. Something quite strange to say the least.

    One wonders, according to the “paper”, why in 2009, “it had become clear that a whatsoever European Patents Court would have to be based on an agreement outside EU regulations, and rather require the ratification by the Member States and take place in full compliance with their respective constitutional requirements”. What was meant here was EPLA, and since EPLA wanted to embrace non-EU members, the only possibility was to “require the ratification by the Member States”.

    EPLA was thus the continuation of the EPC, including non EU Member States, but in its famous Opinion 1/09, the CJEU considered that it does not fit in the EU legal system.

    Whether the UPCA fits in the EU legal system has never been decided as the draft UPCA was never submitted to the CJEU for opinion. One wonders why? We just have the assurance of its promoters that it does, but this seems a bit short of convincing other people.

    When properly reading the “paper”, I fail to read in Point 3.4 that the “CJEU Opinion 1/09 doesn’t exclude non-EU member states from UPC”. I rather read “Although the CJEU did not expressly say that the UPCA may only be lawfully entered into between EU Member States ….and its consideration 14 now provides explicitly: “…this Agreement should be open to accession by any Member State of the European Union…. By making that clear, the contracting states might have removed any legal doubts concerning the compatibility of the Agreement with the TEU and TFEU (see also Art. 2 lit b) of the Agreement=EPLA).” This seem the contrary to what is said in the summary.

    That according to Annex 1 of the “paper”, there are around 520 000 EPO patents from EU origin ranked by number currently in force is an interesting figure. Another also interesting figure would have been the number of EPO patents from non-EU origin ranked by number currently in force.

    When one sees that, according to official figures of the EPO, patents granted by the EPO to EU members are barely a third of all the patents granted by the EPO, one wonders how the UP and the UPCA is benefiting to European Industry in general and European SMEs in particular.

    A more objective reading of the “paper” would have been welcomed. After all the “paper” has made clear that there are many legal hurdles to the post Brexit participation of UK in the UPC. The summary is silent on this.

    Techrights: FINGERS OFF!!!

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