David Rose and Axel Walz spoke at the Managing Intellectual Property European Patent Reform Forum in Munich on 9 September 2014 on the likely role of the Court of Justice of the European Union under the new regime. They were joined on the panel by Judge Dr. Matthias Zigmann, Presiding Judge of the Munich I Regional Court.

1. The CJEU and
the Unitary Patent &
Unified Patent Court
DavidRose andAxelWalz
9September 2014

2. 2
1 2 3 4
Introduction
TheRole of the
CJEU
The Spanish
Challenge
Uniform
Protection?
Concluding
Comments

3. 3
Introduction

4. Introduction
4
• Preparations for Unitary Patent and UPC
continuing
• However, a number of significant ‘unknowns’
includes the likely role of the CJEU
• Forthcoming judgment in Spain v European
Parliament & Council C-146/13 & C-147/13
• What role should the CJEU have in patent
matters?

5. Introduction
5
Professor Sir Robin Jacob:
“there is no time for anything other than plain
speaking…I know of no one in favour of
involvement of the CJEU in patent litigation.
On the contrary all users, lawyers and judges
are unanimously against it.”
2 November 2011

6. Introduction
6
Kitchin L.J.:
“…the CJEU has no real patent expertise and its track
record in IPcases does not inspire confidence…
…one need look no further than two of itsmost recent
decisions. Brüstle…an astonishing decision and one
which is already affecting research in this country….
Medeva is notmuch better. It…has left the law so unclear
that references, costs and delays are inevitable.”
Presentation at CIPACongress Dinner,October 2012

7. Introduction
7
Dr. Jochen Pagenberg (former President of EPLAW):
“If onewants a really unattractive, inefficient, unpredictable and probably
extremely expensive patent court system, thenwewill get it; onemust only give
the ECJ a chance to receive asmany referrals in patent lawas possible.
If onewants to see substantive patent lawin Europe to be decided by judges
without any solid knowledge and experience in this field, then onemust involve
the ECJwhenever possible.
And if somebody intended to lay a solid ground for failure of this – at some time
very promising – project, then hewill probably succeed.”
EPLAWPresident’sReport, 2Dec 2011

8. Introduction
8
ProfessorDr.WinfriedTilmann:
“One of the side-tones in the debatewhich appeared tome to be especially
inappropriatewere certainwarnings against the quality of possibleECJ-decisions
and answers of the ECJ to referrals onArticles 6-8. In the opinion of
a greatmajority ofUnion lawscientists and observers the ECJ is the best
functioning institution of theUnion. The ECJ has been very active in the field of
trademark law. Onemay not agreewith all his decisions, but generally
speaking his practice is impressively good…There is no reason to believe that
hewill not answerArticle 6-8 referralswith the same competence.”
WrittenEvidence before theHouse ofCommons
EuropeanScrutinyCommittee, 28 Jan 2012

9. Extent of the CJEU’s role
9
• No right of appeal from UPC Court ofAppeal -
CJEU will not be a third tier of appeal in the UPC
regime
• CJEU will have no jurisdiction over UPC (the
UPCAis not Union Law)
• But – is there scope to engage CJEU via:
• Art. 3(2) orArt. 5(2) and (3) UP Regulation;
and/or
• Arts. 25-27 UPCA?

10. Extent of the CJEU’s role
10
• UPCmay refer questions of Union law to CJEU e.g.
relating to:
• the Biotech Directive (Directive 98/44/EC)
• the SPC Regulation (Regulation 469/2009)
• the Unitary Patent Regulation (Regulation 1257/2012)
• the Translations Regulation (Regulation 1260/2012)
• competition law issues e.g.Art. 101 TFEU
• the Enforcement Directive (Directive 2004/48/EC)

11. The key question
11
• What role will the CJEU have over issues
relating to substantive patent law?
• And…what role will the Spanish challenge
have in answering this question?

12. 12
The Spanish Challenge

13. The Spanish challenge
Adeal breaker?
• If the CJEU upholds challenge = potential to unravel 40+
13
years of progress leading to Unitary Patent regime?
• If the CJEU rejects challenge =
• Will CJEU have jurisdiction over substantive patent
lawmatters?
• What impact would this have on ratification of UPCA
(and therefore on Unitary Patent coming into effect)?

14. The Spanish challenge and its antecedents
• March 2011 – CJEU Opinion on compatibility of
unified patent litigation system
• April 2013 – CJEU decision in challenge by
Spain and Italy in relation to use of enhanced
co-operation procedure
• Late 2014(?) – CJEU decision on Spain’s
challenge to Unitary Patent Regulation
(1257/2012) and Translations Regulation
(1260/12)
14

15. CJEU Opinion 01/09 (March 2011)
15
• Proposed unified patent litigation systemnot compatible
with TEU / TFEU:
• Deprived national courts of power/obligation to refer
questions of EU law to CJEU underArt. 267 TFEU
• If decision of proposed court was in breach of EU law,
it could not be subject to infringement proceedings by
the Commission / give rise to financial liability on
behalf of theMS
• Revised Unified Patent CourtAgreement signed bymost
Member States (19 February 2013)

16. Challenge by Spain & Italy (April 2013)
16
• Challenge to use of enhanced co-operation procedure in relation
to UPRegulation (1257/2012) and Translations Regulation
(1260/12) based on following arguments:
• Council lacked competence to establish enhanced co-operation
• Misuse of powers
• Breach of the condition that a decision authorising enhanced
co-operationmust be a last resort
• Infringements ofArts. 20(1) TEU and 118, 326 and 327 TFEU
• Disregard for the judicial systemof the Union
• CJEU rejected challenge

17. Current challenge by Spain
17
C-146/13 and C-147/13
• Spain seeks:
• Declaration Unitary Patent Regulation is legally non-existent
or, alternatively, annulment of certain articles
• Annulment of Translations Regulation or, alternatively,
annulment of certain articles
• Hearing date: 1 July 2014
• Opinion ofAdvocateGeneral Bot: 21 October 2014
• CJEU decision: expected late 2014

18. Arguments against UP Regulation
18
• Breach of the rule of law
• Non-existence of an act of the EU and, alternatively, lack of a legal
basis because the Regulation does not provide uniformprotection
as required byArt. 118(1) TFEU
• Misuse of power through use of enhanced co-operation
• Infringement ofArt. 291(2) TFEUand, alternatively,misapplication of
Meroni principle in relation to renewal fees
• Misapplication ofMeroni in relation to delegation of certain
administrative tasks to EPO
• Breach of principles of autonomy and uniformity re rules governing
Regulation’s entry into force

19. Arguments against
Translations Regulation
19
• Infringement of non-discrimination principle
• Lack of legal basis forArt. 4
• Failure to have regard to Meroni case law
• Infringement of autonomy of EU law

20. 20
Does the Unitary Patent
Regulation provide “uniform
protection”?

21. Legal basis: Art. 118(1) TFEU
“In the context of the establishment and functioning of
the internalmarket, the European Parliament and the
Council, acting in accordance with the ordinary legislative
procedure, shall establishmeasures for the creation
of European intellectual property rights to provide
uniformprotection of intellectual property rights
through the Union and for the setting up of centralised
Union-wide authorisation, coordination and supervision
arrangements.”
21

22. Art.3(2) of the UP Regulation
22
(1) …
(2) AEuropean patent with unitary effect shall have a unitary
character. It shall provide uniformprotection and shall have
equal effect in all participatingMember States.
Itmay only be limited, transferred or revoked, or lapse,
in respect of all the participatingMember States.
Itmay be licensed in respect of the whole or part of the
territories of the participatingMember States.
(3) …

23. Arts. 6-8 of the draft UP Regulation
• Article 6: Right to prevent the direct use of the
invention
• Article 7: Right to prevent the indirect use of the
invention
• Article 8: Limitation of the effects of the unitary
patent
23

24. The problem with Arts. 6-8
• Including infringement provisions in Regulation
meant CJEU would have jurisdiction over
substantive patent law issues
• No jurisdictional requirement underArt. 118
TFEU?
• Art. 3(2) provides for uniformprotection
• The Central Division and Court ofAppeal can
24
ensure uniformprotection

25. The problem with Arts. 6-8
25
• Would be significant number of referrals to CJEU underArts
6-8 (see e.g. Professor Dr. Rudolf Krasser’s report)
• References would lead to extra delay and extra costs
• CJEU’s reputation for ‘opaque’ decisions – would cause
considerable uncertainty
• CJEU judges’ lack of experience / expertise on substantive
patent law
• Would defeat purpose of specialist patents court (the UPC)
• Potential for separate, parallel body of case law
• Why include infringement provisions but not validity?

26. The defence of Arts. 6-8
26
• Arts. 6-8 are necessary to comply withArt. 118
TFEU
• Infringement is at the core of an IP right and so
infringement provisions should be included in
the UP Regulation
• BUT in any event the acte clair doctrine would
meanminimal references to the CJEU on
substantive patent law issues?

27. The defence of Arts. 6-8
Thomas Jaeger (Max Planck Institute)
“…somewhat contradictory and almost schizophrenic attempt to,
27
on the one hand, ground the unitary effect in EU law by virtue of
the legal basis…ofArt. 118 TFEU while, on the other hand,
trying to dissociate the patent as far as possible fromthe nature
and institutions of the EU legal order.”
“All Back toSquareOne:AnAssessment of the LatestProposals for a
PatentCourt for the InternalMarket andPossibleAlternatives”
(MaxPlanck InstituteResearch PaperNo. 12-01), 15Dec. 2011

28. The compromise solution
28
• June 2012: European Council suggested that
Arts. 6-8 be deleted

29. The compromise solution
• Initial European Parliament response: deletion not compatible
29
withArt. 118 TFEU
• The compromise:
• AnewArt. 5 containing a reference to the UPCAgreement
making the relevant provisions applicable to the unitary
patent
• Rapporteur Bernard Rapkay describedArt. 5 as a ‘sub-sub-
suboptimal’ but acceptable solution
• December 2012: European Parliament proceeded to adopt
UPRegulation (and Translations Regulation)

30. Art. 5 UP Regulation
30
UniformProtection
1) The [Unitary Patent] shall confer on its proprietor the right to prevent
any third party fromcommitting acts againstwhich that patent provides
protection throughout the territories of the participatingMember States
in which it has unitary effect, subject to applicable limitations.
2) The scope of that right and its limitations shall be uniformin all
participatingMember States in which the patent has unitary effect.
3) The acts againstwhich the patent provides protection referred to in
paragraph 1 and the applicable limitations shall be those defined by
the law applied to [Unitary Patents] in the participatingMember State
whose national law is applicable to the [Unitary Patent] as an object of
property in accordancewithArticle 7.

31. Art. 21 UPC Agreement
31
Primacy of and respect for Union law
20. The [UPC] shall apply Union law in its entirety and shall
respect its primacy.
Requests for preliminary rulings
21. As a court common to the ContractingMember States and as
part of their judicial system, the [UPC] shall cooperate with the
[CJEU] to ensure the correct application and uniform
interpretation of the Union law, as any national court, in
accordance withArticle 267 TFEU in particular. Decisions of
the [CJEU] shall be binding on the [UPC].

32. Arts. 25-27 UPC Agreement
• Article 25: Right to prevent the direct use of the
invention
• Article 26: Right to prevent the indirect use of
the invention
• Article 27: Limitation of the effects of a patent
32

33. UK ratification of the
UPCAgreement
33
• UK Government Technical Review and Call for
Evidence (closed 2 Sept 2014)
• Infringement provisions in UPCAand provisions of
UK patents law:
“although there are some differences in the exact
wording…these aremerely differences in drafting
which do not alter the range of acts which are to be
considered to be infringing, i.e., they are not
material differences”. (para 88)

34. UK ratification of the
UPCAgreement
34
• Proposals to amend s.60 PatentsAct 1977 only to the ‘extent
necessary’ including:
• two newexceptions to infringement (in relation to plant breeding
and computer programs)
• revisions to contributory infringement and vehicle exemptions
provisions to reflect larger territory ofUnitary Patent
• provisions relating to groundless threats and theUnitary Patent
• bringUK patents law into linewith theUPC infringement
provisions for all patents valid in the UK (includingUnitary
Patents, EP(UK)s andGB patents) [even thoughUPC
Agreement does not require this]

35. The effect of Arts. 3(2) and 5
35
• Do they satisfyArt. 118 TFEU?
• If they do, doesArt. 5(3) bring substance ofArts.6-8 effectively
back in to the Regulationmeaning CJEU still has referring role?
• UKGovernment:Article 5 “compared to noArticle at all,
increases the risk of references to the [CJEU] onmatters of
substantive law of patent infringement by nomore than a
negligible amount (one so low that it can in practice be ignored).”
LetterfromParliamentaryunderSecretaryofState
atDepartmentofBusiness,InnovationandSkills
29Nov2012

36. 36
Concluding Comments

37. Concluding comments
37
• Spanish Challenge
• Potentially impactful even if challenge
rejected: CJEU may hold that there is a
sufficient legal basis for the UP Regulation
because CJEU does have a role in relation to
interpretation of substantive patent law
issues

38. Concluding comments
38
• Arts. 5(1)-(3) UP Regulation
• Likely gateways to CJEU references
• If it can be shown that rules applied by a
given UP Court are inconsistent – for
example:
• test for infringement
• scope of limitations
• approach to assessing inventive step

39. Concluding comments
• Inconsistency would suggest lack of uniformity
• Kaesling (2013):
39
• “As the unitary patent’s unitary effect cannot be
reached without unitary rules on infringement, the
CJEUmay derive its competence to review from
the unitary character itself.”
• In relation to putting infringement rules in the
UPCA: “It is questionable whether a transfer of
provisions relevant to the Unitary Patent to [the
UPCA] can affect their character as EU law.”

40. Concluding comments
40
• Ultimate tension:
• Does the CJEU decide that it has no role in relation
to interpretation of substantive patent law, thereby
declaring that the conditions laid down inArt. 118(1)
TFEU are notmet?

41. Concluding comments
41
• TRIPs
• Art. 207 TFEU requires CJEU to interpretArt.
28 of TRIPs (Daiichi Sankyo C-414/11)
• Art. 5 UP Regulation andArt. 25-27 UPCA
implement the obligations inArt. 28 TRIPS
• UPC can (and should) refer questions to the
CJEU relating to consistency withArt.28
TRIPs?

42. 42
Questions?
David Rose: david.rose@eu.kwm.com
AxelWalz: axel.walz@eu.kwm.com