UPC – reply to Max Planck impact study of Brexit on the Unitary Patent Protection and its Court

Posted: October 8th, 2018

Reply to the studies on “The Impact of Brexit on Unitary Patent Protection and its Court” by Hans Ullrich and Matthias Lamping

An anonymous writer, writing under the pseudonym Atticus Finchhas delivered a detailed reply to the study of Messrs. Matthias Lamping and Hans Ullrich, research fellows of the Max Planck Institute, “The Impact of Brexit on Unitary Protection and Its Court” written on 30 August 2018 and posted on 10 September 2018 which concludes that, after the Brexit, an extension of unitary protection to the UK and the UK’s continued participation in the UPC’s judicial system would create serious legal problems.

The reply starts out by stating:

“Despite its length and wealth of arguments the studies overlook some important precedents in EU law and policy which results in parts of the studies being based on wrong assumptions. The arguments against an extension of the Unitary Patent to the United Kingdom for instance ignore that the extension of EU instruments to third countries is something quite frequent and that the problems the authors see with such an extension can easily be solved as other examples of extensions of EU instruments to third countries show. ”

The full Atticus Finch reply can be read here.

The Lamping-Ullrich paper can be read here.

4 Responses

  1. Alan Johnson says:

    Congratualtions Atticus Finch: an excellent rebuttal to a paper which sees only problems (many either political in nature, or purely theoretical) but none of the practical solutions.

    One additional point (relevant to paras 18-21 of your reply) is that the Max Planck authors do not address the effect of Art 71(a) of the amended recast Brusels Regulation (1215/2012 as amended by 542/2014) which deems the UPC a common court of a Member State. In my view this reinforces the legitimacy of the UPC as a court from which the CJEU is permitted to accept refrences under Art 267 TFEU, whether or not the UK is a part of the EU. I would be most interested to learn of your views on whether this provision is (as I believe) of some significance and may obviate any need (contrary to what is suggested by Gordon-Pascoe) to reach an EU/UK agreement to give the CJEU this power.

  2. Attentive Observer says:

    It would have been a surprise if nothing would have been said against the MPI paper. That EPLAW highly praises the present document written against the MPI paper is no surprise knowing the position taken on the UP/UPC by EPLAW.

    Now we have a reply, manifestly written by a great proponent of the UP/UPC system. If the MPI paper fails to convince, then this paper is on a par with it.

    It simply repeats arguments having been put forward in various papers, like Ohly-Streinz, Gordon-Pascoe, Leistner-Simon, and Tilmann.

    The Ohly and Streinz Paper is to me anything but convincing as it merely plays with nice legal concepts, which would have to be checked as to their effectiveness. If the MPI paper is theoretical, then the Ohly-Streinz paper is as well theoretical.

    Ohly and Streinz might “have already raised the possibility of an extension agreement between the EU and the UK”, but it seems strange that in order to keep a country in the UPC, now the member states of the EU will let the EU, as an organisation, conclude an extension agreement just to this effect. They left the EU as an organisation out when they concluded the UPCA, but now the EU is good enough to help? If this is not theoretical, what is it then?

    The best paper up to date is the famous Gordon-Pascoe report, which does however clearly state that many of the problems are of highly political nature, and those might not be easily overcome.

    As far as Mr Tilmann is concerned, one just has to compare what he said after Opinion C 1/09 was released, and what he said after Brexit. It is difficult to be more flexible in one’s opinions.

    Just playing around with Art 87(2) UPCA is not enough to keep post Brexit UK in the system. And it has not been conceived for this purpose.

    That the EU has signed various agreements with third countries is not disputed. That non-EU contracting states might address the CJEU for preliminary rulings is not disputed either. If one takes the example of Art 16(2) of the Agreement establishing a European Common Aviation Area (ECAA), as well its Annex IV, it is however a prerequisite, when the agreement is to be interpreted, that the Country accepts the jurisdiction of the CJEU. I do not think this is the present position of the UK government, hence this argument is moot.

    As far as the amendment of Brussels 1 is concerned, (1215/2012 as amended by 542/2014), one should not forget that this amendment was adopted before Brexit. To see in this amendment a reinforcement of the “legitimacy of the UPC as a court from which the CJEU is permitted to accept references under Art 267 TFEU, whether or not the UK is a part of the EU”, is a conclusion I would dare bringing forward, as the situation has drastically changed since then. In the meantime, UK has decided to leave the EU. But any straw to grasp might be good enough.

    I have nothing against harmonising patent protection in Europe, on the contrary. Politically it might make some sense, but who will profit from it in the form it should take with the proposed system? Barely a third of European applications, and hence European patents stem from EU member states. Who will thus profit of this? Certainly not the so much praised European SMEs, universities or non-profit organisations.

    That a UP is cheaper is only correct if one compares the renewal fees decided for the UP with the total of the renewal fees of the 26 UP/UPCA member states. But in all honesty, who needs a patent in 26 countries?

    As far as the UPCA is concerned, I have, among a lot of others, a fundamental problem: according to Art 10(1) of the Statute, “A judge may be deprived of his or her office or of other benefits only if the Presidium decides that that judge no longer fulfils the requisite conditions or meets the obligations arising from his or her office”. That he is heard is a bare minimum, cf. Art 10(1) UPCA, second sentence, but this is not enough.

    What is missing are the means of redress offered to a judge which is dismissed! I could not find any answer to this question in the Statute. That the “Administrative Committee shall establish the Staff Regulations of officials and other servants of the Court” (Art 16(2) of the Statute) is one thing, but the independence of the judge needs more serious guarantees.

    Rather than discussing the post Brexit stay of UK, this seems to me a fundamental problem which puts the whole system at the risk of being unconstitutional. Has this point been discussed during ratification? A court in which a judge can be dismissed, albeit by his peers, but were he has no means of redress does not deserve being called a judicial court, as its members are not truly independent.

    The same applies to the Registrar [Art 22(4) UPCA].

    Techrights: FINGERS OFF!!!

  3. Concerned observer says:

    In my view, Atticus Finch’s paper is nothing more than a re-hash of arguments that have been aired before. Despite having been given a new gloss, those arguments still have gaping holes.

    For example, nowhere in Atticus Finch’s contribution is it possible to find a convincing response to the following conclusion from Lamping and Ullrich:
    “The UPC’s entitlement to make references for a preliminary ruling to the CJEU concerning the interpretation of EU law (which it may be called on to apply by virtue of Arts. 20 and 24 UPCA) hinges on its status as a “court common to the Member States” and its consequential integration into the judicial systems of the Member States, since the CJEU’s jurisdiction under Art. 267 TFEU only extends to “courts or tribunals of a Member State”.”

    Put simply, including a definition in an international agreement is not sufficient to make a court “common to the Member States”. This is because Art. 267 TFEU requires the court to be “situated … within the judicial system of the EU” (para 82 of opinion 1/09), either by being an EU court or a court forming an integral part of the legal order of a Member State.

    For the court to comply with EU law, there must also be mechanisms in place to ensure that the supremacy and autonomy of EU law is upheld by that court. That means that ALL countries participating in that court must be subject to the relevant mechanisms, INCLUDING the principle of sincere cooperation. For example, para 76 of opinion 1/09 states:
    “an international agreement may affect its own powers PROVIDED THAT the indispensable conditions for safeguarding the essential character of those powers are satisfied and, consequently, there is no adverse effect on the autonomy of the European Union legal order”.

    This message is hammered home in paras 85 to 87 of opinion 1/09:
    “85. It follows from all of the foregoing that the tasks attributed to the national courts and to the Court of Justice respectively are INDESPENSIBLE to the preservation of the very nature of the law established by the Treaties.

    86. In that regard, the Court has stated that the principle that a Member State is obliged to make good damage caused to individuals as a result of breaches of European Union law for which it is responsible applies to any case in which a Member State infringes European Union law, whichever is the authority of the Member State whose act or omission was responsible for the breach, and that principle also applies, under specific conditions, to judicial bodies (see, to that effect, Case C 224/01 Köbler [2003] ECR I 10239, paragraphs 31 and 33 to 36; Case C 173/03 Traghetti del Mediterraneo [2006] ECR I 5177, paragraphs 30 and 31, and judgment of 12 November 2009 in Case C 154/08 Commission v Spain, paragraph 125).

    87. It must be added that, where European Union law is infringed by a national court, the provisions of Articles 258 TFEU to 260 TFEU provide for the opportunity of bringing a case before the Court to obtain a declaration that the Member State concerned has failed to fulfil its obligations (see Case C 129/00 Commission v Italy [2003] ECR I 14637, paragraphs 29, 30 and 32).”

    In my view, it is therefore nothing more than wishful thinking on the part of Atticus Finch to conclude that it will be sufficient for the EU Member States “to ensure that any financial consequences resulting (for instance from a fine imposed by the CJEU resulting from such proceedings) are shared by the UK”. This is because the fact would remain that the UK would be participating in (and also hosting) a court that having EXCLUSIVE competence for providing rulings on EU law … but would have no BINDING mechanisms capable of keeping it in line in the event that it fails to ensure that the court complies with EU law. It would, in essence, become a “loose cannon”.

    I am also amused by Atticus’ statement that “The UK will remain free to have different rules for its national patents”. Whilst this aligns with the UK government’s current view of the matter, it would represent a clear breach of Article 64(1) EPC.

    Does the above examples of gaping holes mean that Atticus’ contribution amounts to nothing more than the “smoke and mirrors” that I predicted would be in plentiful supply? I leave it to readers to decide.

  4. Peter de Lange says:

    I find it difficult to comment on this anonymous paper, as it may be written by a colleague.
    Firstly, it is interesting to learn that the participating Member States can not agree with the UK on the continued participation of the UK without being empowered to do so by the EU (para. 21 of the paper). I wonder if this applies also to the Member States amending the UPCA by decision of the Administrative Council (the simplified procedure mentioned in para 25 of the paper)?
    Secondly, a key point of the paper is that a Diplomatic Conference does not require unanimity (paras 24-25). That might be true, but I understand that any text agreed at a Diplomatic Conference requires ratification (irrespective of the kind of majority at the Diplomatic Conference). See, e.g. the EPC2000. As the author cites in footnote 66, “the amending agreement does not bind any State … which does not become party to the amending agreement”. E.g. for the Paris Convention, the Dominican Republic is only bound to the The Hague version of 1925 despite newer versions being adopted (e.g. the Stockholm version), because DR did not ratify the later versions. That does not seem a viable route for the UPC. However, I would be anxious to learn about texts agreed at Diplomatic Conferences immediately becoming law in States without ratification.

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