“The UPC is long overdue”

JUVE Patent: An unnamed private person has lodged a constitutional complaint against the bill regarding the ratification of the UPC Agreement. Meanwhile Bundespräsident Frank-Walter Steinmeier has stopped the signing until the court has decided on the merits of the case. What is your understanding of the status of the suit?
Alexander Ramsay: It is difficult to get a clear understanding of what the status is and what it is about, since there is not much information publicly available. There are some rumours that the complaint concerns the voting procedure in the German Parliament (Bundestag) and that the plaintiff claims that a majority of two thirds of the MPs would have been required. However, I am told by colleagues in Germany that a majority of two thirds is not required and that the bills on the ratification of other conventions creating supranational courts, for example the Rome Statute creating the International Criminal Court, were adopted by the German Parliament by a simple majority.

Another theory considers the UPC Agreement to be unconstitutional due to flaws with the EPO system, mainly a perceived lack of independence of the EPO Boards of Appeal. What is your opinion on this?
I have read the interview with Professor Siegfried Broß in JUVE. Personally, I am quite optimistic that those complaints will be rejected by the Constitutional Court. As I understand, the Court has already had to deal with such complaints in the past and has considered them to be unfounded, as other national courts have done as well. In addition, the EPO has proceeded in the meantime with a structural reform of the Boards of Appeal, which have further increased their independence. I cannot see how any problems with the EPO system could affect the constitutionality of the ratification of the UPC Agreement. The UPC is a new supranational court and has no institutional, organizational or other legal link with the EPO and its appeal system.

But the UPC decides on patents granted by the EPO?
That is true, but it will only improve possibilities for patent holders to enforce their patents and for third parties it will improve the possibility to challenge patents granted by the EPO. Instead of having to bring multiple lawsuits before different national courts, parties can get one single judgement from the UPC covering up to 25 countries. Even if one assumes that there are problems with the EPO system, such problems would have to be solved within the context of the European Patent Convention. Such problems could not be solved by the UPC Agreement. Not ratifying the UPC Agreement could never improve but only worsen the situation.

What is the effect of the suit at the Constitutional Court on the preparatory process?
Unfortunately, it has begun to have an adverse effect and may entail significant uncertainty for the preparatory process. Before the UPC can start operations there is a need to pass through a period of six to eight months of provisional application of the institutional, administrative and financial provisions of the Agreement. We hoped to start that period in July, followed immediately by inaugural meetings of the governing bodies and interviews of the candidate judges in September. However, for this period to start it is necessary for 13 of the participating states, including Germany, France and the UK, to consent to be bound by the supplementary Protocol on Provisional Application. We had reason to believe that by July this condition would be fulfilled. There is now a question mark concerning the timing for Germany to give its consent. Germany intended to formally ratify the Protocol before July. But the ratification of the Protocol is part of the ratification bill being challenged before the Constitutional Court. Since we have no idea when the Constitutional Court will decide on the request for preliminary measures, we cannot maintain our planning in July, the interviews in September and all the other steps.

What does it mean for the recruitment of judges and the users of the new system?
For the preparatory work this is unfortunate, especially for the candidate judges for whom we cannot provide a certain timeline for the recruitment. There are more than 200 candidate judges to be interviewed and the interview procedure requires very thorough planning. The users are spending much time and money to analyse their patent portfolio and their applications in order to define how to use the new system. They are becoming increasingly frustrated with the uncertainty concerning the entry into operation of the UPP and the UPC.

“Users have been waiting for
this reform for much too long”

Does it mean that the start of the UPC will be delayed again?
It is likely that the start will be delayed due to the suit in the German Constitutional Court. Even if the German ratification of the UPC Agreement is possible in the fall – as I am told one can reasonably assume that the Constitutional Court will have decided by then about the request for preliminary measures – the delay of the German ratification of the Protocol on Provisional Application means that the provisional application period cannot start as planned. The later the provisional application period starts, the later the judges can be recruited and the later the Court will enter into operation. The creation of a Unitary Patent and of a Unified Patent Court is long overdue. Users have been waiting for this reform for much too long.

But former Constitutional Court judge Siegfried Broß is of the opinion that there is no need for the Constitutional Court to make a decision regarding the UPC right away, but rather it should wait until the Brexit negotiations have been concluded. Then we would not see a judgement within 2017.
I most definitely do not share this opinion, nor does the user community as far as I am informed. What is at stake now is the entry into operation of the Unified Patent Court, which should take place as soon as possible. What will be at stake in the Brexit negotiations, as far as the European patent system is concerned, is the long term participation of the UK. These are obviously two different things!

What is the status of the ratification in the United Kingdom?
The UK government has been proceeding with the ratification since the end of June. There is one outstanding step in the UK implementation process – the implementation of the Protocol on Privileges and Immunities into UK national law. This requires two orders to be approved in the UK and Scottish Parliaments. The Government restarted the process. This should allow for a UK ratification of the UPC Agreement in November at the latest. The UK’s last outstanding step with regard to the Protocol on Provisional Application, the formal notification to the depository, is expected to happen in parallel to the tabling of the orders. Thereafter the UK would be ready to start the provisional application period.

The court can start operating on a provisional basis for the six months prior to its official launch. Therefore it will be necessary for 13 Member States to have signed the Protocol on Provisional Application (PPA). What is the status of this matter?
Apart from the UK and Germany it is important to point out that we still lack three Signatory States to approve the protocol to be able to start the Provisional Application Period. Some participating states have ratified the UPC Agreement but are prevented from taking part in the Provisional Application Period due to constitutional reasons, for instance Austria and Portugal. But meanwhile, progress is being made in several other Contracting Member States. In Estonia the necessary laws have been passed and the last steps towards formal ratification are now being taken. Not to mention the latest development in the UK. However, even considering Estonia and the UK, three additional approvals of the PPA, including Germany, are necessary in order for the preparations to be completed for this final phase.

Which States might make up the 13 necessary for the Provisional Application?
One obvious candidate is Slovenia. They have signed the protocol and have parliamentary approval to ratify the UPC Agreement. Furthermore, I hope that Hungary will too be able to join us shortly. Both of these States are hosting important parts of the organisation; the Patent Mediation and Arbitration Centre is in Slovenia and the Training Centre is in Hungary. There are also some other Member States, for instance Greece, Bulgaria and Romania and the two other Baltic Member States (Estonia is close to ratification), which I am quite optimistic should be able to complete national procedures soon. So I am quite positive we will be able to make the necessary 13 for the Protocol to be able to enter into effect. Nevertheless, we have to keep in mind that those final decisions are still dependent on national procedures, so nothing is 100% sure.

Due to these circumstances, the Preparatory Committee has recently delayed the start of the UPC, which was planned for December 2017. Do you have a new timetable?
Under the current circumstances it is difficult to maintain a definitive starting date for the period of provisional application. However, I am hopeful the situation regarding the constitutional complaint in Germany will be resolved rather quickly and therefore I am hopeful that the period of provisional application can start during the autumn 2017 which would mean that the sunrise period for the opt out procedure would start early 2018 followed by the entry into force of the UPCA and the UPC becoming operational. We will communicate a more detailed timetable as soon as the picture is clearer.

“The UPC is a very small
fish in the Brexit pond”

What role, if any, will the UPC play during the Brexit negotiations and the process of Brexit over the next couple of years?
I think the UPC is a very small fish compared to what will happen in the Brexit negotiations. However, I think the last couple of months have shown a great determination amongst European countries and stakeholders all over Europe to find solutions to keep the UK in the system – not only for ratification but also for long term participation. I think that’s been quite evident from all the communications that have been made.

Are there any plans in place for the worst case scenario? For example, if the UK cannot participate in the European patent court after Brexit?
There is no particular protocol or any rules for that scenario, even though it is of course perfectly possible from an international law perspective for Member States to leave an agreement as such. If such a scenario should materialize we will need to sort out the practical measures that need to be taken care of, e.g. what will happen to a division of the court if the Member State hosting it would leave (Editor’s note: London will host a Local Division as well as the pharmaceuticals and chemistry section of the Central Division). I don’t expect this to be a politically controversial issue, but more of a technical question. No Member State will see any loss of rights to their patent holders under any circumstances. We can set up a set of rules for that once the system is up and running. Such a safety net approach could be foreseen also for the Unitary Patent, e.g. rules that would enable a transfer of a unitary patent to national rights.

If the UK did not ratify the agreement, wouldn‘t Europe need a plan B so that it could go ahead with the UPC without the UK?
I do not necessarily agree with this risk assessment. I see the UK as a dedicated partner in this project and am hoping and expecting the UK to proceed in all aspects. As for contingency planning, it has always been a fact that the project is based on a political agreement between participating States and that its entry into force is (still) dependent on national ratification procedures. This means that we always have had to do contingency planning based on possible shifts in the surrounding reality.

The interview was conducted by Konstanze Richter, Aled Griffiths and Mathieu Klos.