Judge Grabinski: ‘Involvement UK is very positive for Unified Patent Court and Unitary Patent’

There is a lot of enthusiasm among German patent judges, in particular but not only the younger ones, for the Unitary Patent system and the Unified Patent Court, according to Dr. Klaus Grabinski, Judge of the Federal Court of Justice of Karlsruhe in Germany and speaker of the Unitary Patent Package Conference. In an interview with Kluwer IP Law he welcomed the news that the UK will ratify the UPC Agreement. He hopes the German ratification, which is indispensable for the start of the UP system, will not be delayed by the upcoming elections in his country.

Were you pleasantly surprised to hear the UK will stay in the UP system and ratify the UPC Agreement?

‘After the Brexit referendum in UK on 23 June 2016 there was a lot of uncertainty about the consequences for the UPC und UP project. From a legal point of view, it soon became clear that the UK is not only entitled to ratify the UPC Agreement as long as it is a Member State of the European Union but will also be able to remain a Contracting State of the UPC Agreement after Brexit will have come into effect if respective arrangements are set out in the Withdrawal Agreement under Article 50 Lisbon Treaty.

Dr. Klaus Grabinski
Dr. Klaus Grabinski

However, it was not clear at all whether the UK government would be prepared to go down this path. Therefore, also a so called “plan B” was discussed, which essentially meant an option to have the UPC and the UP project without UK in case UK would not show any interest to join in due term. After the confirmation of the UK government of 28 November 2016 that it will proceed with its preparations to ratify the UPC Agreement the situation has been clarified to a large extent. This recent development is very welcome.’

Do you feel the UP system could have survived without the UK?

‘My preference has always been to have the UK on board of the UPC and UP project. The UK government contributed to the setting up of the UPC system, in particular with regard to the IT system and the electronic case management system. UK judges and lawyers played an important role in the drafting of the UPC Agreement, the Rules of Procedure and other rules that will govern the UPC system. And, of course, it will make the UPC more attractive to stakeholders if its decisions will also cover the UK market.’

Is there much enthusiasm among your German colleagues for the new court?

‘The answer to your questions depends on what you consider to be “my German colleagues”. When you give it a narrow interpretation meaning only German patent judges my feeling is that there is a lot of enthusiasm, in particular but not only among younger patent judges. When your understanding of the term is a broader one meaning it covers also German IP lawyers and patent attorneys you will find enthusiasm but also scepticism depending on whom you ask. In particular, some lawyers or patent attorneys that have mainly SMEs as clients consider the UPC ceilings of recoverable costs to be too high.’

Does the fact the UK judges may now be UPC judges strengthen the position of the court?

‘UK patent judges are well known for their competence in dealing with IP cases in general and patent cases in particular.  Judges from the Continent can learn a lot from their experience but this is no one way street. It will go both ways in order to ensure a consistent and reliable application of material and procedural law. Having UK judges on UPC panels will certainly strengthen the position of the UPC.’

What issues do you see in the EU Regulations setting up the UP system and in the UPCA that will have to be taken care of so the UK as a future non EU member can stay in?

‘This is a rather complex matter and will have to be explored more in detail when negotiations under Article 50 Lisbon Agreement will have been triggered by a respective notification of the UK. One issue will certainly be an amendment of the UPC Agreement which currently provides that the UPC is a court common to the Contracting Member States. However, such an amendment would not necessarily need a revision of the UPC Agreement but could be implemented by the Administrative Committee in order to bring the Agreement into line with a future Withdrawal Agreement as part of Union law.

Another problem that will have to be addressed is the issue of jurisdiction and enforcement since the Brussels I Regulation will not be applicable on UK when it won’t be an EU Member State any more. And also Unitary Protection will have to be extended to the UK under Art. 142 European Patent Convention since Regulation (EU) No 1257/2012 will no longer have effect with regard to the UK territory.’

Is it a problem that the location of one of the branches of the Central Division is in London, once the UK will no longer be an EU member?

‘No, this will be one of the easiest issues to be dealt with. The London section of the Central Division may remain in London when UK will remain a Contracting State of the UPC Agreement. There is no legal requirement that it has to be located on EU territory.’

According to the Opinion of Brick Court Chambers, the UK – if it wants to stay in the UP system will have ‘to submit to EU law in its entirety as regards proceedings before the UPC. It would also need to sign up to an appropriate jurisdiction and enforcement regime (such as the Lugano Convention).’  Prof Dr Ansgar Ohly of the Ludwig-Maximilians-Universität of Munich disagrees and thinks such an agreement is not necessary (please see this post on the Kluwer Patent Blog).

What is your view?

‘The primacy of EU law, the obligation to request preliminary ruling from the CJEU and the liability for damage caused by infringement of EU law are all obligations under the UPC Agreement. On this background it is not clear to me why there should be a need for a further agreement involving the EU to confirm all of this. However, as I already mentioned the issue of jurisdiction and enforcement have to be addressed since the Brussels I Regulation will no longer be applicable on UK once it has left the EU.’

german-flagApart from UK ratification, the ratification by Germany is also indispensable for the start of the UP system. What can you tell about the ratification procedure in your country?

‘The ratification of UPC Agreement by Germany requires a law that has to be approved by the Bundestag and the Bundesrat and is signed by the German President. A respective draft law of the Federal government has been published on 27 May 2016. The Bundesrat decided that it will not raise objections. The draft law is now pending before the Bundestag where parliamentary readings could take place early next year. Time, however, might run short since there will be parliamentary elections in the autumn of 2017 in Germany which could cause delay, but we will see.’

When do you expect the UP system to launch?

‘This will not only depend on the preparatory work that has already been finished to a large extent but also on the further development on the political level which makes it difficult to answer that question. With this reservation I would expect the system to fly sometime between autumn of 2017 and summer of 2018.’

Dr. Klaus Grabinski is one of the speakers at the Unitary Patent Package Conference, 9 and 10 February 2017 in Amsterdam.

Written by Kluwer UPC News blogger
Source: Judge Grabinski: ‘Involvement UK is very positive for Unified Patent Court and Unitary Patent’

Unitary Patent Package

Check out the program of this conference. The Unitary Patent Package Conference, 9 and 10 February 2017 in Amsterdam.

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Start of provisional application phase Unified Patent Court is top priority for Preparatory Committee

The Preparatory Committee of the Unified Patent Court is delighted with the UK’s decision to ratify the UPC Agreement and will publish a revised roadmap for the start of the Unitary Patent system as soon as possible. Chairman Alexander Ramsay is a happy man, he told Kluwer IP Law.

Monday’s announcement of Minister of State for Intellectual Property, Baroness Neville Rolfe, that the UK will ratify the UPC Agreement despite the Brexit vote, has been qualified as surprising and even sensational. Quite a few people thought that, even if there were no legal objections, politically it would not be feasible for the UK to ratify the UPC Agreement. The UP system implies the acceptance of the supremacy of EU law, whereas the Brexit vote was a vote for less EU, not more. European Commissioner Elzbieta Bienkowska, the EPO and the Preparatory Committee, among others, have welcomed the decision.

Ramsay‘I was of course very happy.

This is the best possible option for the project. A UK participation makes the UPC/UPP stronger and more attractive’, Alexander Ramsay, chairman of the UPC Preparatory Committee said in reaction to questions by Kluwer IP Law. He declined to get into detail about what happened behind the scenes, where a lot of silent diplomacy has been going on since the Brexit vote of 23 June 2016.

‘This has been a decision of the UK Government. I and others have of course been in close contact with the UK colleagues and hope that we have been perceived as constructive and supportive partners’, Ramsay said. He believes that ‘one of the basis of the decision is that the UK government see the UPC/UPP as beneficial for British businesses.’

Ramsay doesn’t know yet when the UK will be ready to ratify, he said.

A lot of work will be done in the coming months: ‘The UK will now continue with preparations for ratification and is at the same time engaging fully in the work of the Preparatory Committee to facilitating the last preparations needed to bring the UPC into operation as soon as possible.

From the Committee’s side we will now be aiming at enabling the provisional application phase to start as soon as possible. This depends not only on the UK ratification of the UPCA but also on other Member States’ approvals of the Protocol on Provisional Application*. I expect the Committee to communicate a time-plan for this as soon as possible.’

The protocol will allow some parts of the UPC Agreement to be applied early.

This includes final decisions on the practical set up of the Court, for example, the recruitment of judges and testing of IT systems. The provisional application phase will also be used to allow for early registration of opt-out demands. Ramsay: ‘The process of the selection of the UPC judges is ongoing and the pre-screening of the candidates is almost completed. The final selection cannot be completed before we enter into the provisional application phase. It is first when we enter into provisional application that there will be an international organisation – the UPC – with the legal capacity to formally employ judges.’

Ramsay regards the possible need of changes to the Unitary Patent system and the UPCA due to the UK leaving the European Union at some point, premature to discuss: ‘This needs to be looked into further. If there is a need for any amendments of the UPCA this can, after the entry into force of the UPCA, be taken care of by the simplified procedure that is foreseen in the Agreement (article 87) – by a decision of the Administrative Committee of the UPC.’

Not only the UK, but also Germany will have to ratify the UPCA before the Unitary Patent system can start functioning.

Alexander Ramsay doesn’t expect any delays there. ‘As far as I know the German ratification process is progressing and I am confident that we will see also a timely German ratification of the Agreement. So I expect the UP system to start functioning during 2017.’

*The Protocol enters into force (article 3(1)) ‘the day after 13 Signatory States of the Agreement on a Unified Patent Court including Germany, France and the United Kingdom, have either ratified, or informed the depositary that they have received parliamentary approval to ratify, the Agreement on a Unified Patent Court and have

  1. signed in accordance with Article 2(2)a. or signed, and ratified, accepted or approved this Protocol in accordance with Article 2(2)b.; or
  2. declared by means of a unilateral declaration or in any other manner that they consider themselves bound by the provisional application of the articles of the Unified Patent Court Agreement mentioned under Article 1 of this Protocol.’

So far nine states: Germany, France, the UK, Denmark, Hungary, Luxembourg, Romania, Sweden and Slovenia have signed (art 3 (1)a) the Provisional Protocol (link). However, in four of them: Germany, the UK, Hungary and Romania, there is no parliamentary approval yet for the UPCA.

Two states, the Netherlands and Finland, have declared they consider themselves bound by the Protocol (art 3 (1)b). Belgium and Malta have announced they will use this route as well and will declare themselves bound by the Protocol as soon as the UPC Preparatory Committee knows a date of when it can start.

Bulgaria, Austria and Portugal have completed the ratification of the UPCA, but they haven’t signed or declared themselves bound by the Provisional Protocol.

Written by Kluwer UPC News blogger
Source: Start of provisionel applicationphase Unfiedpatent Court is top priorityfor Preparatory Committee

Unitary Patent Package

Check out the program of this conference. The Unitary Patent Package Conference, 9 and 10 February 2017 in Amsterdam.

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