The Unified Patent Court was a nice idea. Enforce your European patent with one single patent infringement lawsuit rather than going nation-by-nation. The UK was an integral UPC member — although always with some trepidation about handing power over to a continental court to decide issues of the UK marketplace. The British Exit (BREXIT) from European Union (EU) raised some concerns regarding the ongoing viability of the UPC. However, UK leaders repeatedly indicated that they would continue participating in the Unified Patent Court. That resolution has now changed — the UK government has now announced that the UK will no longer participate in the court or its creation.
The UK will not be seeking involvement in the unitary patent/UPC system. Participating in a court that applies EU law and bound by the Court of Justice of the European Union (CJEU) is inconsistent with our aims of becoming an independent self-governing nation.”
[Quote of UK Gov’t Spokesperson via Sarah Morgan @ the World Intellectual Property Review]
Just to supplement Mark Summerfield’s comments, it is not quite true that the CJEU has nothing to do with patent law in Europe.
One area where the CJEU has the final say is in respect of the patentability of “biotech” inventions. Provisions governing such patentability are defined in Directive 98/44/EC.
Another area is the “European Bolar” provision defined in Article 10(6) of Directive 2001/83 (as introduced by Directive 2004/27).
Also, should the Unified Patent Court ever come into existence based upon the current legislation, then the CJEU would be responsible for interpreting the provisions of Regulation 1257/2012. Those provisions include Article 5, which dictates the law(s) of infringement that would be applied to any given unitary patent.
Compared with the very important role that the CJEU plays in connection with SPC law in Europe, the (current) involvement of the CJEU in patent law is rather limited. However, that is not to say that it is unimportant. Indeed, interpretation of the Biotech Directive is currently a very hot topic in Europe, given that it is central to the EPO President’s referral to the Enlarged Board of Appeal in G3/19.
Of course, one reason why the role of the CJEU is often forgotten with respect to the patentability of biotech inventions is that the EPO Boards of Appeal are incapable of referring questions to the CJEU. Thus, questions of patentability that arise at the EPO before grant (or during opposition) have no chance of being resolved by the CJEU. This is a “loophole” that could, in theory, lead to the CJEU declaring the European Patent Convention to be incompatible with EU law. If the EPO President gets his way in connection with G3/19, this could very much become a “live” issue. If this were to happen, then I would not like to predict the outcome … other than to say that it would not be pretty.
Quite so. Your pseudonym strikes me as inappropriate. I don’t think you are confused at all.
Otherwise in the 2nd para of the contribution below from Bananaman on judiciability at the CJEU. In that para, I suspect a “now” where a “not” was intended. EU Regs are ultimately construed at the CJEU but the UK, now that it has departed the EU, cares nothing at all for EU Regs, or what they might mean.
My pseudonym relates to my feelings about certain US patent (case) law, which occasionally appears to me to be devoid of all semblance of logic.
I too struggled with Bananaman’s 2nd para. My understanding is that, at the end of the transitional period, slightly “tweaked” versions of EU laws on SPCs will be incorporated into UK law. I also believe that the end of the transitional period will see CJEU rulings decline in importance with respect to the UK. That is, UK courts will become solely responsible for interpreting SPC law in the UK, new CJEU rulings will not being binding in the UK, and at least the UK Supreme Court will be able to effectively overturn older CJEU rulings.
In other words then, my questions are indeed pertinent (and there ARE connections afoot).
I definitely appreciate all responders here – even MaxDrei with whom I typically lock horns with, and Mark Summerfield for his patience and pretty thorough (given that this IS a blog) explanations.
And thank you as well for your timely adds.
It certainly looks that there be more to the eye than what I have seen prior to this exchange.
It is indeed complicated … especially when it comes to the different possibilities in different countries for seeking a national patent both directly and via the EPO.
Also, to be frank, the ways in which EU laws, national laws and international laws (such as the EPC) interact have not yet all been worked out in detail. This means that disruptions such as Brexit, or challenges to the rule of law (such as the reference to the Enlarged Board of Appeal in G3/19), tend to bring to light certain fundamental issues that have previously gone unnoticed.
In this regard, can I suggest that you keep an eye out for upcoming decisions of the Federal Constitutional Court in Germany in four complaints relating to the EPO? The rulings in those cases might clarify whether the current set-up at the EPO (with regard to the Boards of Appeal, and especially the question of the independence of those Boards) meets the requirements of the Basic Law in Germany.
Thanks (again); but the German items may not be within my active surveillance – so please feel free to give a shout out on developments there.
Europe is funny, right? As Alice was heard to say, when in Wonderland: “Sometimes I believe in as many as six impossible things before breakfast”. I commend to readers the writings on Europe of Mark Summerfield in this thread. He helps to explain the puzzle of patent law in Europe.
As Mark notes, one needs to cast off the frame of reference at home, when trying to grasp how it is in Europe. Mark, correct me if I’m wrong, but you are based on the opposite side of the world from Europe, are you not? So I guess you can explain continental Europe as one outsider to another.
The polyglot nature of Europe helps to keep people in Europe cautious about straying outside their home jurisdiction. One thinks one knows what words mean but then one finds out that, away from home, they mean something quite different. When being thoughtful, Germans often begin a long sentence with the word “Also,…”. But in doing that, they mean something quite different from “Also” in English.
Likewise, the German sentence “Die sensible Dame mit dem braven Hund” does not mean what you think it does. Rather, it means “The fragile lady with the obedient and well-behaved dog”.
So be careful not to jump to conclusions, when toggling between the USA and continental Europe, when addrerssing the terminology of patent law. One needs an open mind, a mind willing to understand. Lawyers (also in Europe) are prone to seeing nothing but good in their own domestic law and nothing good at all in any departure from that in a foreign jurisdiction. The thing is, in any given jurisdiction, the rate of improvement of the quality of its corpus of law will depend on how closely its legislative branch and judicature monitors the mistakes made in other jurisdictions.
More idiotic nationalistic tub-thumping (surprise, surprise).
Substantive issues of validity and claim construction (and, hence, infringement) are governed by the European Patent Convention, which is not an EU instrument, and of which the UK remains a member having willingly harmonised its national patent laws to the EPC back in 1977. The CJEU has little to do with it, except that it was selected as a convenient pre-existing court of ultimate appeal for the unitary patent system.
But the CJEU is the Brexiteers’ greatest bogeyman, so Boris has bowed to the pressure of his puppet-masters.
The UK could possibly be coaxed back in if the CJEU could be removed from the picture. But it seems unlikely that the other participants could agree on a workable alternative.
Speaking of NOT EU instruments – what is the highest court of ultimate appeal for those Sovereigns in the European Patent Convention?
Is this all a matter of “yet” (or, with BREXIT, NO ‘yet’ to come? — and if so, that what IS to come? Anything?)…?
Is there now no highest court of ultimate appeal? If there be A court of appeal, does there not MUST BE (by default), some court of ultimate appeal?
anon, perhaps it helps to think of it like this: that the EPC Member States have each “sub-contracted” to the EPO the task of examining patent applications on their behalf, no more than that.
Imagine the EPO Certificate of Issue as a “bundle” of national patent rights, each to be adjudicated up to the Supreme Court of that Member state in which infringement and validity of the issued patent is put in issue.
Does that help?
Reading my most recent reply, I see that a clarification is needed.
Each national Supreme Court in an EPC Member State can invalidate the EP in its own jurisdiction, but nowhere else within EPC-land.
To the contrary, an EPO Board of Appeal, in post-issue opposition proceedings, can revoke the issued patent as a whole, for all 38 Member States, and the defeated patent owner has no recourse to any higher instance, or any Supreme Court anywhere in Europe.
Clear now?
Your 2.1.1.1 is vastly different than your 2.1.1.
And to directly answer my question then, one may take two different paths of appeal: within a Sovereign (and that only carries within that Sovereign), and to the EPO Board of Appeal (from which, NO Sovereign may contradict).
Is that correct?
Into this, where does the CJEU fit in?
Well, that’s not quite correct. It’s best to think of the opposition process as a mechanism for third parties to challenge a decision of the Examining Board to grant a European patent, rather than as any “path of appeal”. (There are of course internal appeals in relation to opposition decisions, via the Technical Boards of Appeal, just as there are for any EPO decision.) This is part of the mechanism that the EPC members all agreed on and signed up for. And nobody is obliged to use it – individual national patent offices still exist.
Once the opposition period has expired (nine months after grant) the only mechanism to challenge the resulting bundle of national patents is in the individual national judicial systems. And this is the only avenue to enforce a European patent.
The existence and membership of the EPC is entirely independent of the existence and membership of the EU. The CJEU has nothing to do with it.
And then, Mark, jusat to add something more for anon to think about, there is the corpus of SPC law in Europe.
anon, European patents (not EU patents, OK) on medicaments can get an extension of their 20 year term, within the EU, upon issue of an EU-SPC, a Supplementary Protection Certificate. SPC law is EU law, so ultimately adjudicated by the CJEU.
link to en.wikipedia.org
Indeed. And I assume that will end in the UK with Brexit, although there will have to be some form of transition period during which existing SPCs are honored.
Do you know whether the UK has any plans to introduce its own national system of pharmaceutical patent term extensions? And will it need to implement its own approvals regime – does it currently rely on an EU drug approval system?
Mark, I don’t think anybody knows, least of all Her Majesty’s Government under the “leadership” of Alistair (Boris) Johnson, the self-styled “King of the World”. The attention span of the average voter, these days, does not last long enough to understand such trivial things as the need for a drug approval regime.
The SPC is a sui generis right and is not technically an extension of the patent term, although it is based on the claims of the patent. It is different from the US PTE, although that also is not an extension of the full patent claims.
SPC law is in the form of an EU Regulation, which is now part of UK, although without the CJEU playing a part. Drug approvals will now be solely via the MHRA as EMA membership has ended.
I’m guessing what you’re not sure about, anon, and don’t understand your question about “two paths” of appeal, but here goes with an answer to supplement that from Mark.
If you want a patent in, say, Germany (or any other EPC Member State), you can choose whether to ask the German (or other) national Patent Office for one, or you can ask the EPO. If you choose the EPO, you run a risk, namely, that somebody will file an opposition (at the EPO) to the patent you just got out of the EPO. If the opposition succeeds, the patent is revoked (by the Board of Appeal at the EPO) and you cannot appeal the decision to any national court. If the opposition fails, you might still come under validity attack, later, in the national courts where you assert your patent
But if you get your patent from the national Patent Office and it get opposed, any appeal proceedings play out in the national courts of that country.
Why do Applicants put all their eggs in one basket, their head on the block, at the EPO? Perhaps because i) for the price of one patent application (in English) they get issued with a certificate that allows them to enforce their patent rights in all 38 Member States of the EPC and ii) they think they will be treated fairly and dispassionately by the multi-national EPO.
I am indeed grateful for both your and Marks’ comments on this thread.
Here is what I have put together (paraphrasing, in order to verify that I under stand both of your inputs):
There ARE two different paths of review on the table.
A first path is first generated by the choice (either of one of two distinct entry points:
1) direct individual nation OR EPC ‘group vehicle’ – followed by election into separate individual nation; or
2) EPC ‘group vehicle’ – followed by election of an EPO patent.
The path “2)” down an EPO patent continues the ‘group vehicle’ effect (noting of course that the selection at that stage is not the start of the ‘group vehicle’ effect.
It is the continued ‘group vehicle’ effect of “2)” above — and only this path — that opens one up to opposition (which I am taking as a form of litigation, of which does have its ‘path of appeal.’ Revocation done this path is final and does apply to the entire ‘group effect.’
In other words, if one chooses an EPO patent, one does not then — in parallel — also aim for a Sovereign patent for a Sovereign covered by the EPO patent. Or does one? Is there a ‘belt and suspenders’ possibility? If there is such a thing, does the ‘group effect’ during the opposition not just affect the EPO patent, but to any national Sovereign that was — or could have been — elected on a path “2)” choice instead of the choice of path “1)” …?
You have the benefit of ‘one shop’ but a concurrent and congruent risk.
It is outside of the window of opposition that A Sovereign-by-Sovereign basis kicks in. Which then returns to mirror the path “1)” path.
The other ‘path of appeal‘ is the one that may be pursued on a Sovereign-by-Sovereign basis – the one that flows from path “1)”. For this path, you have lost the benefit of ‘one shop,’ and likewise, have mitigated that concurrent and congruent risk of opposition.
For this, we simply just skip the EPO Boards of Appeal.
Is this correct so far?
In addition to the ‘one shop effect,’ the choice of path “2)” also avails a holder of a post-term benefit (but not the opposition risk, as the opposition risk is limited in time and would have long run out) for “an extension of their 20 year term, within the EU, upon issue of an EU-SPC, a Supplementary Protection Certificate. SPC law is EU law.” as noted by MaxDrei at post 2.1.1.1.1.1.1.
This is a wrinkle that only applies to a path “2)” choice, and does ‘kick back in’ after the lapsed opposition period – which serves to distinguish path “2)” from path “1).” based on the “EPO patent” status.
Now then, where does the CJEU fit into this?
Mark will you reply. I defer to you.
Anon, you seem to be making your understanding of the EP system(s) harder than it needs to be, possibly because you are trying to map the concepts onto your model of the US system. I would regard this as a category error!
Just to be clear at the outset, and at the risk of repeating myself, the short answer to your question is that the CJEU does not fit into this system anywhere. There is no avenue of appeal that leads to the CJEU, either via the EPO processes, or the national patent offices. The CJEU plays no role in establishing substantive patent law in any EPC member state.
To take yet another step back, a basic premise of EPC membership is that each member state has harmonised its own national patent laws to the provisions of the EPC. The idea here is that any patent that is valid under the EPC should also be valid in every member state. This is, however, not 100% correct, because each country nonetheless retains sovereignty with regard to the interpretation of the national laws that are nominally harmonious with the EPC. If you are really interested in this, you could research the different outcomes of the ‘Epilady’ case (Improver v Remington) in the UK, Germany and the Netherlands, or the difference in the approach to computer-implemented inventions at the EPO and in the UK courts.
Of course, if the CJEU had anything to do with the EPO or the EPC – which it does not – it could resolve these types of ‘edge cases’ with a ruling that would be binding on all the EPC member states. But it has no such role or power. So when the laws of different countries produce different outcomes, that is just something we all have to live with, just as we would if the EPO did not exist and the patents had all been examined and granted by the individual national patent offices.
As for opposition proceedings, I suspect that this may be one of the most difficult aspects of the system for the American mind to grasp. You see, while administrative proceedings, i.e. IPRs and the like, to challenge patents at the PTAB are relatively new developments in the US, and regarded by some as constitutionally suspect, for many of us in the rest of the world they are a long-standing feature of a well-designed patent system! Many jurisdictions provide for pre- or post-grant opposition of other challenges before an administrative tribunal, rather than a court. Such processes are intended to provide a lower (than judicial proceedings) cost mechanism for third parties to challenge patents that may be improperly granted, recognising that examiners may not have access to all of the prior art and specific technical expertise that may be relevant. Outside the US, there is (and never has been) any presumption of validity. We accept that examiners get it wrong sometimes, and believe that a balanced system should include mechanisms to correct such errors. (You may well disagree with this, which is fine, I’m just telling you how it is out here!)
The UK had a pre-grant opposition system under its 1949 Patents Act (which was replaced by the ‘EPC-ized’ 1977 Act), and retains an administrative procedure for post-grant revocation under section 72 of the 1977 Act.
Generally speaking, a party that disagrees with a national administrative decision has an avenue of appeal to the country’s courts – all the way up to the court of ultimate appeal – just as with PTAB decisions in the US. For EPC member states, such matters are determined entirely in accordance with the national laws and judicial procedures. The CJEU has no role here, either.
By comparison (or contrast, depending on your point of view) decisions of the Opposition Division of the EPO are subject to appeal firstly to the Technical Boards of Appeal, and ultimately (in limited circumstances) to the Enlarged Board of Appeal. The Boards are regarded as administrative courts, and the proceedings as judicial (or, at least, quasi-judicial) in nature. Once these avenues of appeal are exhausted, there is no higher authority – not the CJEU, nor any other body.
So, in summary, and to reiterate one last time, the CJEU has nothing to do with it!
Mark, I have seen your reply. Excellent. I would have struggled, to get to the same level of clarity and focus. Bravo!
If anon doesn’t “get it” now, I can’t help him further.
Thank you all — very much appreciated.
The Sovereign can implement Art 135 EPC to allow a right revoked by the EPO to become a national right subject to the Sovereign’s national law. That few (no?) Sovereigns have done so is because they are happy with the present contracting out. A solution to the German Basic Right issue and also to a post-Brexit incompatibility with domestic patent law (e.g. availability of a US-style a grace period or some such) would be to provide for a conversion post-EPO grant or refusal into a national right of appropriate character to be progressed before the Sovereign’s own institutions.
I’m grateful. First for the tip towards Art 135 EPC. second for the inventive activity that went into the choice of pseudonym.
The more interesting thing is whether the UK will also secede from the European Patent Organisation (ie the EPO). Of course (as we all know) i) the EPO is NOT an artefact of the EU and ii) the head-banger Leavers behind PM Boris Johnson like to profess their love of Europe even as they cry the opposite about the EU. The chief object of their mission is to “take back control” from the Court of Justice of the EU, which has no role at all when it comes to the EPO.
But a prominent UK newspaper, beloved of the head-bangers, is today telling its readers about the “EU Patent Office”. Is this an early sign of even more self-harm, namely a UK secession from the EPO?
Can you explain: “ chief object of their mission is to “take back control” from the Court of Justice of the EU, which has no role at all when it comes to the EPO.”
Is not the “White Book” and the whole apparatus of non-binding decision court decisions inclusive of (and at least partially binding because of) the CJEU?
No. Some of the 38 EPO Member States are not EU Member States. Example: Turkey. Turkey is not under the jurisdiction of the CJEU.
By “White Book” I understand you to mean “The Established Case Law of the Boards of Appeal of the EPO”.
The UK Supreme Court defers to the CJEU in matters of EU law, like design patents. And it finds the established EPO case law useful, when adjudicating the law of patents in the UK. But the CJEU has no jurisdiction (yet) on the substantive law of patents granted under the EPC.
Does that help?
Yes, thank you.
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