– A Look in the Crystal Ball of German History

While the United Kingdom ratified the Unified Patent Court Agreement in April 2018, Germany remains the only member state of the European Union, which is yet to ratify the UPC Agreement in order to set same into force. Germany’s hesitation goes back to June 2017, when Federal President Steinmeier shocked the IP world by complying with a request of the Federal Constitutional Court to hold off signing the UPC Agreement, which before had been passed by the Bundestag and the Bundesrat, due to a constitutional complaint filed by an individual (court ref.: 2 BvR 739/17, see www.weickmann.de/news/news-detail/article/german-constitutional-complaint-against-the-upc-agreement/).

Although the constitutional complaint against the UPC Agreement is still pending before the Federal Constitutional Court, and there are still no news as to when a decision will be issued, recently published decisions G 2301/15, G 2302/15 and G 2301/16 of the Enlarged Board of Appeal of the European Patent Office (EPO) shed new light on some of the aspects to be examined by the Federal Constitutional Court.

This article provides some deeper insight into these decisions and discusses some scenarios which might arise as a consequence of the time and content of the Federal Constitutional Court’s decision.

1 G 2301/15, G 2302/15 and G 2301/16

The Enlarged Board of Appeal’s decisions G 2301/15, G 2302/15 and G 2301/16 were published after a personnel change at the top of the EPO. The former President of the EPO (PresidentEPO) had decided to keep these decisions secret, although the Enlarged Board of Appeal actually had ordered their publication.

In view of the reasons of these decisions, in particular in view of the reasons of G 2301/16, one question has gained considerably more weight: Which powers have been transferred by the PresidentEPO to the President of the Boards of Appeal? In particular, the question whether the PresidentEPO transferred the power to propose disciplinary actions against members, including the Chairman, of the Boards of Appeal and the Enlarged Board of Appeal to the Administrative Council of the European Patent Organization (Art. 10 (2) (h) EPC in connection with Art. 13 (3) EPC) was shifted more than before into the focus of interest.

For fully comprehending the situation, it is furthermore important to know that, back in 2015, the Administrative Council had amended Article 95(3) of the Service Regulations for permanent employees of the EPO (ServRegs) and raised the available period of suspension from 4 to 24 months, to be even further extended in “exceptional cases”. However, neither a limit to this extension was given-, nor any guidance was provided as to what may constitute exceptional circumstances.

For members of the Boards of Appeal and the Enlarged Board of Appeal this amendment of Art. 95 (3) ServRegs generated the threat of being de facto removed from office, i.e. without a corresponding proposal by the Enlarged Board of Appeal as envisaged by Art. 23 (1) EPC, since the suspension could be extended until the end of the five year appointment term (Art. 23 (1) EPC) and could be followed by a denial of reappointment.

In view of this legal background, a letter directly sent by the former PresidentEPO, who was not a party to the G 2301/16 proceedings, to the Chairman of the Enlarged Board of Appeal had a dramatic impact on the G 2301/16 proceedings. In this letter, the PresidentEPO i.a. expressed his view that the Enlarged Board’s decision to hold public oral proceedings, an option implicitly provided by Art. 12a (9) of the Procedural Regulations of the Enlarged Board of Appeal, was unlawful. As making unlawful decisions clearly is disciplinary misconduct, the PresidentEPO’s letter turned the general, abstract threat of a de facto removal from office into an imminent, concrete threat jeopardizing the Board’s judicial independence guaranteed by Art. 23(3) EPC.

The Board immediately informed the Administrative Council of the PresidentEPO’s letter and asked it to distance itself from this letter’s content. When the Administrative Council rejected this request, the Enlarged Board of Appeal decided that it was not able to continue the proceedings as its judicial independence was undermined.

The afore-described case shows that the transfer of powers discussed in point 3.2 of my earlier newsletter is not sufficient to guarantee the judicial independence of the Boards of Appeal and the Enlarged Board of Appeal. Although it is a positive sign that the new PresidentEPO published the above-mentioned decisions, there still is the risk that the PresidentEPO may revoke the transfer of certain powers, in particular the transfer of the power to propose disciplinary actions against board members (Art. 10 (2) (h) EPC), if ever transferred. This risk may only be excluded by a corresponding revision of the European Patent Convention.

2 Possible Scenarios

Depending on when the Federal Constitutional Court will issue its decision and what the decision will be, in principle, three situations are conceivable:

a) The Federal Constitutional Court rejects the constitutional complaint and gives green light to the ratification, and this early enough for the German ratification to take place before Brexit.

In this case, the situation arises that after Brexit, there is an EU court, namely the UPC’s London branch, having its seat in a non-member state.

A possible response to this situation could be that the UPC’s London branch is relocated to an EU member state (Italy and the Netherlands have already offered themselves) and all British judges are dismissed from office.

As an alternative, London remains the seat of a UPC branch and the UK is granted a special position under the UPC Agreement. On the one hand, this would be contrary to the main goal of the Brexiteers, namely the demand that no European court (in the last instance the European Court of Justice) may judge British citizens. On the other hand, this solution would affront non-EU countries such as, Switzerland, whose participation in the UPC Agreement has been denied so far, unless they will also be granted such a special position.

b) The Federal Constitutional Court rejects the constitutional complaint and gives green light to the ratification, but does so too late for the German ratification to take place before Brexit.

In this case, it would have to be clarified before the UPC Agreement enters into force where the UPC’s branch is to be seated instead of London, as previously planned. Further negotiations among the EU members will then be necessary and it cannot be foreseen how long these negotiations will take.

c) The Federal Constitutional Court grants the constitutional complaint.

In this case, different constellations may arise depending on the Federal Constitutional Court’s reasoning. For simplicity, I shall limit myself to the simplest and the most complicated constellation:

i) In the simplest constellation, it is merely necessary to rerun the voting process in the German Bundestag and German Bundesrat.

ii) In the most complicated constellation, the European Patent Convention has to be amended (analogous to the constitutional change following the decision of the Federal Administrative Court in 1959) in order to establish a truly independent European appellate court. For this purpose, however, a Diplomatic Conference needs to be held attended not only by the EU member states, but also by the non-EPC members.

Additionally, it must, of course, again be clarified where the UPC’s branch is to be seated instead of London.

Personally I opt for avoiding each scenario in which the United Kingdom has left the European Union, while the UPC still has a seat in London as it is hardly acceptable to have an EU court in a non-member state, even if it is “only” a branch.