The EU Patent Package: Chances and Pitfalls of the EU s Enhanced Cooperation Procedure

Transcription

1 The EU Patent Package: Chances and Pitfalls of the EU s Enhanced Cooperation Procedure PD Dr. Thomas Jaeger, LL.M ESF Exploratory Workshop The Future of Patent Governance in Europ Hamburg University, 1 September OVERVIEW I. Where Do We Stand? a. Up to 2009 b. EEUPC 2009 c. Decision 2011/167/EU d. Opinion 1/09 e Patent Package II. Focus Enhanced Cooperation III. Conclusion: Current Challenges 1

2 3 PART 1I WHERE DO WE STAND? 4 BRIEF HISTORY: UP TO 2009 Early patent plans already in 1950s, several draft proposals between 1975 and 2012 No disagreement over need for single patent Design was always similar to CTM Reg. but other areas of dispute Language regime (translations, procedures) Fees / costs Court structure: 6 models + 2 variations 1975 to 2009, virtually everything tried 2003: EPLA panick at the Commission Rivalry EU / EPC = key to understanding the EU patent system 2

3 5 TIMELINE OVERVIEW EEUPC compromise negative Opinion 1/09 shift to enhanced cooperation Patent Package enh. coop. action dismissed actions C 146/13 and C 147/13 AG op. on C 147/13 etc. expected 6 BRIEF HISTORY: 2009 EEUPC COMPROMISE EEPC specialized patent court basis mixed agreement EU / EPO States / EU Member States (for the first time ever) combined jurisdiction for EU + EPO patents replacing national courts infringement and revocation for EU patents in addition: compulsory licenses two instances, first instance decentralized only limited integration into EU legal order (preliminary rulings) only limited links with EPO (no ECPC competence for review of EPO decisions) Underlying substantive patent full EU right sui generis / Reg. complete 3

4 7 BRIEF HISTORY: DECISION 2011/167/EU Dec. 2009, IP/09/1880 (on the EEUPC compromise) Patents: EU achieves political breakthrough on an enhanced patent system However, the creation of the EU patent will depend on a solution to be found for the translation arrangements which will be subject of a separate Regulation. June 2010, IP/10/870 (on the translation regime) Commission proposes translation arrangements for future EU Patent The proposal builds on the successful three language system at the European Patent Office (EPO) and, if adopted, would drastically reduce existing translation costs. 8 BRIEF HISTORY: DECISION 2011/167/EU Dec. 2010, IP/10/1714 (on enhanced cooperation) Commission opens the way for some Member States to move forward on a unitary patent Commission proposals for a single EU patent have been under discussion for over a decade. But there has been stalemate in the Council over language rules. The Commission tried to unblock this with its June 2010 proposal on the EU Patent s language requirements (see IP/10/870). But as the EU's Council of Ministers has not been able to agree unanimously on the EU patents' language requirements, the Commission has now tabled a proposal opening the way for "enhanced cooperation" to be authorised in this area, in accordance with the EU Treaties. Council Decision No. 2011/167/EU of 10 March 2011 authorising enhanced cooperation in the area of the creation of unitary patent protection 4

5 9 2011: NEGATIVE OPINION 1/09 ON 2009 EEUPC MODEL Opinion 1/09: EEUPC model contrary to EU law 1. Jeopardizes autonomy of EU law Direct application of EU secondary law by EEUPC Other int l courts typically apply only their own int l agreement 2. Jeopardizes principle of completeness of system of remedies Interference with cooperation model established by Art 267 TFEU Lack of Francovich type liability for EU law infringements of the court 3. AG / academia: Additional concerns e.g. language regime : REVISED UNITARY PATENT PACKAGE Reg. 1257/2012 (substantive patent) Reg. 1260/2012 (translation arrangements) UPC Agreement, OJ [2013] C 175/1 (court system) 5

6 11 REGULATION 1257/2012 Features: Unique, unprecedented in EU law and all patent proposals Unitary patent = EPC patent granted with the same set of claims for the participating MS Stub patent : Next to no patent rules in EU law Unlike 2009 patent and all before Not even minimum, i.e. requirements of protection, scope, property rules instead extensive reliance on third law ( Hieronymus Bosch patent ) Grant of the patent: EPC (int l law) Scope of protection: UPC Agreement (int l law) Property aspects: nat l law (German law) So: High degree of sameness (unitary character of right and scope), but no autonomy (sui generis character) of the Unitary patent 12 PATENT COURT AGREEMENT UPC = overhauled EEUPC model to fit Opinion 1/09 plus some extra compromize so like the EEUPC, UPC is for both EPC and EU patents two instance int l law based Decentralized includes bifurcation compromize etc. Main differences to EEUPC Only EU MS participate, EU itself and 3rd EPC states do not Limited jurisprudence over EPO acts relating to the unitary patent Re worked links to EU law (scope of preliminary reference, liability for breaches) Several new compromizes at the occasion of re opening the EEUPC model e.g. predominantly national composition of bench in large divisions e.g. three central divisions (London, Paris, Munich) 6

7 13 Design due to multiple dynamics PATENT PACKAGE: WHY THAT AWKWARD DESIGN? 1. Establish EU law compliance according to ECJ Opinion 1/09 Prime effect UPC as court common to the MS Consequences e.g. int l law basis of the court, exclusion of non EU EPC states 2. Acknowledge the fact of enhanced cooperation Prime effect Name change unitary instead of EU 3. Reopen the 2009 compromise for further political concessions Prime effect Truncated, misfit design of the UP Reg.; additional odd court features Conseq. UP Reg.: Quest to keep ECJ out (no rules on requirements, scope, property) Conseq. UPC: 3 central divisions, nat l composition of bench, bifurcation option 14 PART 1II FOCUS ENHANCED COOPERATION 7

8 15 ENHANCED COOPERATION: THE ORIGINAL SIN Enhanced cooperation was the original sin triggering the demise of the patent plans 1. First signal for choice of feasibility over coherence (= form over substance) substantive coherence (one patent law for Europe through a single court) territorial coherence (internal market and EPO states) 2. Prepared the mindset for a quick&dirty answer to Opinion 1/09 Political will required a quick solution to press ahead One easy (but misconceived) idea: Since 2 EU states are already out, just kick the EPO states out too 3. Prepared the mindset for reopening the 2009 package to lobbying and compromise but enhanced cooperation is not a justification for the awkward design truncated Regulation? keep the ECJ out truncated court system? make it a MS court (Opinion 1/09) anachronistic patent law? uninspired EU approach 16 C-247/11 ON THE COMPETENCE ISSUE Art. 20 TEU: enhanced cooperation only within the framework of the Union's non exclusive competences Art. 2 TFEU: definitions 1. exclusive competence only the Union may legislate and adopt legally binding acts 2. competence shared the Union and the Member States may legislate and adopt legally binding acts in that area. The Member States shall exercise their competence to the extent that the Union has not exercised its competence. Art. 118 TFEU: Shared or exclusive? In the context of the establishment and functioning of the internal market, the European Parliament and the Council, acting in accordance with the ordinary legislative procedure, shall establish measures for the creation of European intellectual property rights to provide uniform protection of intellectual property rights throughout the Union and for the setting up of centralised Union wide authorisation, coordination and supervision arrangements. 8

9 17 C-247/11 ETC. PLEAS 1. Council lacked competence to establish the enhanced cooperation 2. Misuse of powers 3. Breach of the condition that the decision authorising enhanced cooperation must be adopted as a last resort 4. Infringements of Articles 20(1) TEU, 118 TEU, 326 TFEU and 327 TFEU 5. Disregard for the judicial system of the Union 18 C-247/11 ON THE COMPETENCE ISSUE Problem: MS can logically never legislate on measures for the creation of European intellectual property rights to provide uniform protection necessarily an exclusive competence? ECJ (paras. 20 et seq.): Purely formalistic approach Art. 118 is part of the internal market chapter Art. 4 (2) says internal market is a shared competence Critique Competence catalogue is only declaratory (Art. 2 (6) TFEU) ECJ limits interpretative methods to one: Systematic interpretation What about telos and history of the norm? trademark, design and plant variety regimes were models for Art

10 19 C-247/11 ON LAST RESORT AND UNION INTEREST Art. 20 TEU 1. Enhanced cooperation shall aim to further the objectives of the Union, protect its interests and reinforce its integration process 2. The decision authorising enhanced cooperation shall be adopted by the Council as a last resort, when it has established that the objectives of such cooperation cannot be attained within a reasonable period by the Union as a whole, and provided that at least nine Member States participate in it. Problem: What kind of disagreement justifies to choose enhanced cooperation over continuing negotiations? circumvention of Council procedures and quora? 20 C-247/11 ON LAST RESORT AND UNION INTEREST ECJ (paras. 33 et seq.) A measure is vitiated by misuse of powers only if it appears, on the basis of objective, relevant and consistent evidence to have been taken solely, or at the very least chiefly, for ends other than those for which the power in question was conferred or with the aim of evading a procedure specifically prescribed by the Treaty The Union s interests and the process of integration would not be protected if all fruitless negotiations could lead to one or more instances of enhanced cooperation, to the detriment of the search for a compromise enabling the adoption of legislation for the Union as a whole. In consequence, the expression as a last resort highlights the fact that only those situations in which it is impossible to adopt such legislation in the foreseeable future may give rise to the adoption of a decision authorising enhanced cooperation. 10

11 21 C-247/11 ON LAST RESORT AND UNION INTEREST Critique Plaintiff encounters high threshold for the misuse of powers test Reduced ECJ review Test amounts to a mere requirement to state sufficient reasons (see also para. 54) Opens the door wide for enhanced cooperation Highlights the political nature of the term last resort Allows use of enhanced cooperation as bargaining momentum in Council negotiations see also para. 53: The Council is best placed to determine whether the Member States have demonstrated any willingness to compromise and are in a position to put forward proposals capable of leading to the adoption of legislation for the Union as a whole in the foreseeable future. 22 C-247/11 ON THE OTHER ISSUES Other issues = Effects of the cooperation openness to all MS for later participation (= non preclusion) no negative effects on functioning of the internal market (fragmentation, discrimination) no negative effects on cohesion in the EU Problem: When are these effects of the cooperation checked? At the time of authorization or when the cooperation is under way? 11

12 23 ECJ: Check the effects later C-247/11 ON THE OTHER ISSUES Example para. 92 (effects of the court system) The Council was not obliged to provide, in the contested decision, further information with regard to the possible content of the system adopted by the participants in the enhanced cooperation in question. The sole purpose of that decision was to authorise the requesting Member States to establish that cooperation. It was thereafter for those States, having recourse to the institutions of the Union following the procedures laid down in Articles 20 TEU and 326 TFEU to 334 TFEU, to set up the unitary patent and to lay down the rules attaching to it, including, if necessary, specific rules in the judicial sphere Example paras. 76 et seq. (effects on cohesion) language arrangements the compatibility of those arrangements with Union law may not be examined in these actions were only at a preparatory stage when the contested decision was adopted and do not form a component part of the latter 24 C-247/11 ON THE OTHER ISSUES Critique Generally sensible approach Legality should be checked on the go Non participating states must accept some prejudice to their interests e.g. measures under the cooperation, which they do not like (see also para. 82) But: Is that the same for all effects? Certain cooperation features entail a structural preclusion of openness The language regime may be such a non remediable structural element If language concerns are the issue of dispute, how can a cooperation that is launched to keep that language out, be deemed non preclusive? Non participating state will have to bow to terms of the cooperation by waiving its interests (which are, therefore, precluded) cf. also status of linguistic diversity on EU law (Arts. 22 CFR, 3 (2) TEU, 342 TFEU) A de minimis test for prejudice of interests is needed 12

13 25 C-247/1: OVERALL ASSESSMENT Important judgment from the point of view of enhanced cooperation Sets the framework for future cooperations (e.g. financial transactions tax) Political element visible (weak competence argument) Opens door wide for those future cooperations political approach to the issue of last resort requirement to only cursorily describe the actual content of the cooperation in decision criteria for enhanced cooperation in Arts. 20 TEU, TFEU are more relevant for review of cooperation measures than a for the cooperation as such Dangerously lax approach to the non preclusion test test lacks shape and therefore bite Lax test may foster centripetal integrationist approach Not so important judgment from the point of view of patent law Key issues will be clarified in C 146/13 etc. 26 PART 1III CONCLUSION: CURRENT PATENT CHALLENGES 13

14 27 UNRESOLVED UPP CHALLENGES 1. Overcoming enhanced cooperation Non participating MS have to be brought back on board 2. Establishing a highly effective single judiciary 2. Uncertain legality in terms of a correct implementation of Opinion 1/09, no new opinion sought 3. Dyfunctionalities in the system due to 2. incomplete consolidation of jurisprudence (see before, pt. 2) 3. compromize in the setup of the UPC 3. Implementing effective and balanced procedural rules Procedural rules actually quite good Some improvements possible e.g. more precision on the conditions for bifurcation or injunctive relief but compromize in the setup of the UPC entails lasting dysfunctionalities in procedure 28 UNRESOLVED UPP CHALLENGES 4. Providing a comprehensive and complete patent right sui generis i. Uncertain legality of the Patent Reg. vis à vis EU law vis à vis the EPC (EU accession required?) ii. Dysfunctionality of the Unitary patent: Fragmentation of patent law is actually aggravated Hybrid law mix in the Reg. Exclusion of non EU EPC states Unconsolidated application competnces (6 7 layers of patent law in Europe) 1. EPC patents reviewed by UPC (with no ECJ control) 2. Unitary Patents reviewed by the UPC under ECJ control 3. EPC patents reviewed by BoA with no UPC control 4. EPC patents of non participating sates reviewed by BoA and nat l courts without UPC review, but 1. ECJ review (non participating EU MS, e.g. ES) 2. no ECJ review (third state members of the EPC, e.g. CH) 5. purely nat l patents with limited review of the ECJ and no review of the UPC 6. compulsory licenses for Unitary, EPC or purely nat l patents (nat l courts) 14

15 29 WHAT S IN THE PACKAGE: A DAMAGED GIFT Package holds gifts of unification of patent law in Europe simplification of enforcement and property use cost savings in enforcement, portfolio management and property use But the gift was damaged upon delivery in 2012 The damage is so severe, that the gift is useless, unless repaired. Repair is however possible. Prospects are pending actions for review of the system with the ECJ (Cases C 146/13 and C 147/13) review clause Art. 87 UPC Agreement (after 7 years of operation or 2000 infringement cases) 30 THANK YOU! 15