Will UPC’s other participating states agree to Germany’s plans?

Will UPC’s other participating states agree to Germany’s plans?

14 July 2020

The German government’s consultation on its new draft bill enabling Germany to ratify the Unified Patent Court Agreement (UPCA), with the UPCA not amended for the UK’s non-participation, closed on 3 July 2020 and publication of the findings is awaited.  However, in addition to the possibility of further constitutional challenges (by, for example, the FFII: FFII’s response to consultation), it is not yet clear whether all the member states who were planning to participate in the UPC will agree with the German government’s proposals.  Some indication of that (and other views on a unitary patent and UPC system without the UK) may be obtained in the consultation the European Commission is carrying out on an IP Action Plan.  The IP Action Plan is published here as a “roadmap”, open for consultation from 10 July to 14 August 2020.  Regarding patents, the roadmap states that “European patents are subject to expensive national validation procedures and parallel litigation in multiple EU countries” and the Commission is exploring ways to upgrade the system for IP protection, e.g. “enable the Unitary Patent system to offer a “one-stop-shop” for patent protection and enforcement”.

One potential aspect of the German proposal that not all member states are likely to agree with is the re-allocation of the work of the UPC’s central division section due (under art 7 UPCA) to be in London. According to the draft bill’s explanatory notes, assuming the UK has actually withdrawn its ratification, the UPCA could be interpreted such that the central division would comprise, at least temporarily, only Paris (the seat) and Munich (a section), and a political declaration on this and other issues will be sought among the remaining contracting states.  However, ever since the UK’s participation in the UPC was in doubt, Italy has argued that the work of the London section should be allocated to a venue in Italy, such as Milan (see here).  Then, the day after the publication of Germany’s draft bill on 10 June, the Italian group of the AIPPI published a position paper, stating that the German government’s proposal regarding the UPC’s central division would be contrary to the UPCA. The Italian AIPPI claims that art 7 UPCA should be interpreted according to art 89.  Under art 89, the UPCA cannot come into force until it has been ratified by the three member states in which the highest number of European patents had effect in 2012, and the Italian AIPPI argues that, if the UK’s withdrawal from the UPCA is confirmed, the member state hosting the London section must be chosen according to that same principle. It refers to a statement in a March 2020 study by the European Parliament’s Policy Department for Citizens' Rights and Constitutional Affairs that, once the UK has withdrawn from the UPCA, the three member states with the highest number of European patents in force in 2012 would be Germany (414,754), France (336,434) and Italy (190,000). The Italian AIPPI states that Germany’s proposal would be a non-agreed and immediate amendment of art 7, which would be contrary to art 87 (revision of the Agreement) and the 1969 Vienna Convention on the Law of Treaties.  Regarding where in Italy the central division should be located, the Italian AIPPI considers that the ideal location is Milan.

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