The sun is finally rising on the unified patent jurisdiction

 According to Rabelais, on the main door of Thélème was inscribed:

Don't come in, hypocrites, bigots

Old matagotz, bloated pot ...

Likewise, on the door of the Unified Patent Jurisdiction (JUB), we can register that the pessimists, hypocrites and enemies of progress have ended up losing their bet: the JUB will indeed come into force soon.

And yet, the opponents of this immense project, awaited for more than forty years by users of the patent system, have not disarmed. A first attack before the German Constitutional Court resulted in the annulment in February 2020 of the German ratification law due to an insufficient majority during the vote in parliament (see C. Meiller and V. Chapuis, Patent: dirty times for the unified patent court, Dalloz actualité, 8 Apr. 2020). The German government, supported by the majority of industrialists and patent users, was quick to resubmit the same ratification law in parliament. This was voted on November 26, 2020 by a large majority (100 votes more than the required 2/3 majority).

Opponents, especially the open source community, believe that the unitary patent, made possible by the implementation of unified jurisdiction, would lead to a change in software patent protection and even destruction of jobs. They therefore supported the filing of two new appeals before the German Constitutional Court. These appeals, with a request for a preliminary injunction, filed in December 2020, were based on an alleged violation of the rule of law, on the insufficient independence of the judges appointed for six years (and not for life) and on the existence of a cap on the amount of representation expenses recoverable by the winning party.

On June 23, 2021, the Constitutional Court rejected the two requests for a preliminary injunction and said that the ratification law could be promulgated without waiting for the decision on the merits. It considered in particular that the alleged infringement of the rule of law was insufficiently justified, that the procedure for appointing judges did not infringe democratic principles and finally that article 20 of the agreement relating to the UCL, which mentions the primacy of European Union law, was intended only to eliminate doubts about the application of Union or national law.

Following this decision, the President of the Federal Republic of Germany officially signed the ratification law on August 7, 2021 and it was promulgated on August 12. Since France, along with seventeen other EU states have already ratified the UCL agreement, it can enter into force.

However, there are still some essential adjustments to be made, such as the appointment of judges, the establishment of the registry, the fine-tuning of the computer system or the finalization of the rules of procedure by the administrative committee. All of this will take some time before the jurisdiction is fully operational. The Provisional Application Protocol (PAP) organizes this transitional period. In addition, the consequences of Brexit must be taken into account.

What is the Interim Application Protocol (PAP) used for?

The PAP, signed on October 1, 2015, provides for certain provisions of the UCL agreement to enter into force provisionally.

This is the case with Article 7, which defines the organization of the 1st instance of the jurisdiction with its local and regional divisions and its central division in Paris (with the Munich and London sections). The same applies to articles 10 to 19 which concern the registry, the various administrative, budgetary and advisory committees as well as judges and their training. This is also the case with article 35 on the mediation center and article 41 which provides that the rules of procedure are definitively adopted by the administrative committee after consulting the European Commission. Finally, various provisions provided for by the statutes of the court are also concerned, in particular those relating to the elections of the presidents of the 1st instance and of the court of appeal.

The protocol automatically enters into force as soon as thirteen States have signed it or have indicated that they accept the provisional application of these provisions. On September 27, a further step was taken with the deposit by Germany of the instruments of ratification of the protocol. Only two states are missing. We can expect ratification by Austria and Slovenia in the near future.

As soon as the protocol enters into force, preparations for the implementation of the unified jurisdiction can begin. These include the appointment of judges, the establishment of the registry, the fine-tuning of the computer system or the finalization of the rules of procedure. To this we can also add the finalization of the scale of taxes and costsrecoverable. All of this will take some time, the likely duration being estimated at around eight months.

What about Brexit?

The administrative committee may also make any changes to the text of the agreement made necessary by the departure from the United Kingdom. Article 89, which regulates the conditions of entry into force, does not require any change, the United Kingdom being automatically replaced by Italy as the third state with the highest number of patents after Germany and France .

Article 7-2 and Annex II of the agreement, which expressly mention a section of the central division in London, will need to be amended, however. These are practical arrangements with no legal significance, so we can think that the adjustments made necessary as a result of Brexit could be made by the administrative committee without the Member States having to carry out new ratifications. an amended agreement. Article 87-1 specifically provides for the possibility for the administrative committee to decide on a revision to improve the functioning of the court. Member States may, however, refuse it (art. 87-3), which then entails the convening of a review conference. It should be noted in this regard that the German ratification law requires that such a revision be accepted by a specific law (art 1 (2)).

What modifications?

A section of the central division cannot exist outside the territory of the participating States. The London branch cannot be established since the UK left the European Union. Its suppression leaves only the section of Munich next to the siege of Paris. The powers originally planned for the London section could, at least on a provisional basis, be divided between Paris, where the headquarters of the central division are located, and Munich. If, subsequently, another section of the central division were to be created in another European city, this would probably require ratification by the Member States (see W. Tilmann, Zur Nichtigerklärung des EPGÜ-Ratifizierungsgesetzes, GRUR 5/2020. 441).

Conclusion

The entry into force of the protocol of provisional application only depends on its acceptance by two countries. As soon as it becomes effective, a significant part of the UCL agreement will automatically come into force.

For a period of approximately eight months, every effort will be made to ensure that the remaining provisions of the agreement can also apply. As soon as the preparatory committee has announced that all the organs of the jurisdiction are ready (appointed judges, registry and operational sub-registries, local divisions and central division ready to receive the first files), Germany, as the last state to not having done so, will deposit its instruments of ratification with the Council of the European Union. On the first day of the fourth month following this filing, the UCL agreement will come into full force and the first infringement actions or nullity claims may be brought before the court.

At the same time, Regulation (EU) 1257/2012 on the European patent with unitary effect (the unitary patent) will immediately become applicable in all states that have ratified the UPC agreement. Sixteen of the twenty-seven Member States of the European Union have already done so. The main absentees are countries such as Spain, Poland and Hungary. In addition, countries outside the European Union, such as the United Kingdom or Switzerland, can neither benefit from the new jurisdiction nor from the unitary patent.

For the skeptics, it will still be possible to take advantage of the transitional arrangements. They allow, for a period of seven years (possibly extendable), to choose a national court instead of the JUB or to register, for a European patent application or a European patent, a declaration of exemption according to which only the courts national authorities are competent for this patent application or patent, until it expires. The registration of these declarations with the court registry may begin as soon as a sunrise period begins, probably after the computer system is operational and the registry established under the provisional protocol.

The future will tell us what policies companies will adopt. This will obviously depend on the quality, cost and speed of the proceedings before this new court.

Comments

by DXThomas on Oct 13, 2021 - 9:22 PM.

I take the liberty of suggesting that the sun that is supposed to rise over the UBC is more of the hazy kind.

I don’t think Rabelais’s quote applies to those who dare to criticize the JUB, but it seems to me that the hypocrites are much more on the side of those who are all-out supporters of the JUB. I am thinking here among others of Mr Casalonga, author of the article inthe review Dalloz, Me Véron and the ineffable Mr. Tilmann.

I would first like to note that the PAP still expressly still provides for the necessary ratification for the United Kingdom.

Before it can come into force, Article 7 (2) and Annex II of the agreement, which expressly mention a section of the central division in London, will indeed have to be amended.

Do you really think that the member countries of the agreement that have ratified and want to see the London section on their territory, and primarily Italy and the Netherlands, will let it go? Ireland has not ratified, but has also spoken in this direction.

What is the legal basis which makes it possible, at least on a provisional basis, to divide between Paris, the seat of the central division, and Munich, the powers originally planned for the London section?

Articles 31 and 32 of the Vienna Convention on the Law of Treaties are of little use, as the provisions of Article 7 (2) of the agreement could not be clearer.

If the notion of legal judge still has to have a meaning, it does not seem possible to me to transfer the files of classes A and C planned for London to Munich and Paris, even on a provisional basis. I do not like to invoke Art 6 (1) of the ECHR, but it does not seem to me that the UBC in its "provisional" aspect meets the criteria of this article.

Mr. Tilmann's analysis that the provisional award could subsequently be rectified using the mechanism provided for in Article 87 (2) of the agreement does not stand up to serious scrutiny. Art 87 (2) allows the agreement on the UCL to be aligned with provisions already adopted by the Contracting States, but certainly not the planned trick (provisional and final attribution).

If another section of the central division were to be created in another European city, this would more than likely require ratification by the Contracting States not afterwards, but beforehand.

If we compare the article published by Mr Tilmann in GRUR Int. 2020, 847 and the explanatory note given to members of the German Parliament before the second ratification, it is clear who held the pen of the officials of the Federal Ministry of Justice. Members of the German parliament made a decision without knowing the details, say any particulars, as they were hidden from view so that they would ratify without question. The information given to them was biased.

There is another problem which cannot be ignored. Article 10 of the Statute of the Court provides that one of its members may be removed from office by decision of the Presidium, i.e. by his peers. This might be acceptable, but it turns out that no remedy is provided for the dismissed judge.

Removing a judge from office without giving him the possibility of appeal does not seem to me to be worthy of a Court which claims to uphold EU law.

So I allow myself to be pessimistic about the immediate future of the UCL. Until the problem of Art 7 (2) and the deposition of a judge without appeal are resolved, I find it hard to see how the UBC can work.

What should we think of a Court in which the base tax for an infringement action amounts to € 11,000 while the base tax for an action for nullity, counterclaim or not, amounts to € 20,000? almost double. It is clear that the JUB is at the service of the incumbents and is therefore not neutral.

When the number of validations in the member countries of the agreement (even those which have not yet ratified) is between 3 and 5, what can the JUB be used for, especially since the number of transnational disputes on the all the member countries of the EPC can be counted on the fingers of one hand?

European patent holders who do not reside in a contracting state of the JUB represent 70% of the total patents granted by the EPO (official statistics of the EPO). To open the JUB is to open to these holders a unique door to attack the holders domiciled in the Contracting States of the JUB.

The UJB was to be beneficial for SMEs. Let me smile. SMEs have served as a fig leaf for big industry and international law firms active in IP litigation. They are the beneficiaries of the JUB. Why have the Czech Republic and Poland decided not to ratify the UCL agreement? Because the JUB is against the interests of their industry.

Stop making us mistake bladders for lanterns.

Yes to European integration, but not that proposed by the JUB, especially since it does not cover the whole of the EU. It only adds a layer of case law to the existing one.

Make full use of the transitional measures and therefore plan to choose a national court instead of the JUB or to register, for a European patent application ora European patent, a declaration of exemption according to which only the national courts are competent for this patent application or this patent, until its expiry, seems to me the most reasonable decision for the holders of European patents whether they are resident or not residing in a JUB Contracting State.

I am not, by far, an enemy of progress, nor a member of the open source community, but a convinced European. However, I consider that until the above issues are resolved it seems pointless to address the JUB.