A new Christmas tale by the German constitutional court?

In Spring 2017 the German constitutional court was asked to assess the constitutionality of the German legislation allowing the country’s ratification of the UPCA. The court backlog has so far meant that the decision is still pending.

However, on 20th November, Peter Huber, the judge rapporteur in charge of the challenge before the German constitutional court declared that the Court will hand its decision in early 2020.

In his interview with Managing IP, Huber stated that it was his “intention to issue a decision on the complaint made against the legislation enabling Germany to ratify the UPC Agreement early next year”.

The final time frame however still depends on the time it takes for him (the judge rapporteur) and other judges at the Constitutional Court to deliberate on and amend the judgement.

Although this declaration is not an official communication from the German constitutional court itself, whose spokesman did not actually confirm the content of the interview, it still gives hope as to the coming into action of the UPC.

Last week, Alexander Ramsay -Head of the UPC Preparatory Committee- reacted to this declaration and said that the UPC could be operational by early 2021. This assumes that Germany ratifies the UPCA very soon after its constitutional court’s decision. The UPC will then need 8 months from Germany’s ratification to be ready.

Indeed once this ratification takes place the provisional phase can start, and in turn the three governing bodies (the administrative, budgetary and advisory committees) of the court can be set up. The end of the provisional government period will then be decided by the member states.

However, Alexander Ramsay was keen to emphasise that the UPC is putting the extra time, given by the German constitutional challenge, to good use.

The IT system for example is now ready and has benefited from the ratification delay with IT teams checking that the “IT system can actually work together. The Registry Rules are also tested to check that they are functional. Similarly the recruitment of judges is under way with around 1000 candidates to choose from for around 50 qualified judges positions and 50 legally qualified judges positions.

All is needed now is for the German constitutional court to issue its decision…

What does “good ratification progress” mean?

Brexit and the German constitutional challenge

The Preparatory Committee latest update:

The Preparatory Committee published a short update on the UPC’s latest developments and the good ratification progress.

The update highlights the consequences of the German constitutional court review of Germany’s legislation allowing the ratification of the UPC Agreement. This action has in fact led to the postponement of Germany’s ratification until further notice by the German constitutional court. In turn, this new uncertainty has seriously jeopardised the timetable for the start of operations of the UPC and made it difficult to predict a new timeline.

The Preparatory Committee on the other hand underlines the good progress made by participating Member States with the ratification of the UPC Agreement. In fact, 14 countries have so far deposited their instruments of ratification. Hence, according to the Preparatory Committee, it is likely that 20 countries will have ratified the UPC Agreement by the time the UPC starts operating.

Why is “good ratification progress” good news for patent users?

The number of countries that will have ratified the UPC Agreement will be higher than the original estimations . This is good news for patent owners.

The EU Directive 1257/2012 and the UPC Agreement in fact both state that the territorial scope of the unitary patent and the UPC’s decisions will correspond to the territory of the Member States participating to the unitary patent package and having ratified the UPC Agreement. Article 3 of EU Directive 1257/2012  more specifically states that “(a) European patent with unitary effect (…) shall provide uniform protection and shall have equal effect in all the participating Member States. It may only be limited, transferred or revoked, or lapse, in respect of all the participating Member States.”  Similarly, article 54 of the UPC Agreement, provides that the territorial scope of the UPC’s decisions covers “the territory of those Contracting Member States for which the European patent has effect“.

This means that the more Member States ratify the UPC Agreement the larger the territorial scope of the Unitary Patent and the UPC is. Hence, from 2018, an inventor applying for a unitary patent or the owner of a non-opted out European patent will benefit from a protection extending to 20 countries . Likewise, a patent owner initiating an infringement action may be able to obtain a declaration of infringement in those 20 countries. The alleged infringer of that patent on the other hand may obtain its revocation in all those participating Member States.

Beyond the minimum required number of countries that must ratify the UPC Agreement for it to enter into force, the number of ratifications of the UPC Agreement will also importantly determine the territorial jurisdiction of the court and the territorial scope of the Unitary Patent.

So, which are the 14 countries that have ratified so far the UPC Agreement ?

Austria (2013), France (2014), Sweden (2014), Belgium (2014), Denmark (2014), Malta (2014), Luxembourg (2015), Portugal (2015), Finland (2016), Bulgaria (2016), Netherlands (2016), Italy (2017), Estonia (2017), Lithuania (2017).

The territorial scope of the UPC and the unitary Patent therefore looks like that:

Ratification progress map

(Green: Countries that have ratified / Pink: Countries that have not ratified yet / Brown: Countries not participating to the UPC)

Despite their ratification of the UPC Agreement, some of these countries however have not signed the protocols necessary for the entry into force of the UPC:

What about the 11 countries that still have not ratified the UPC Agreement?

The following countries have not ratified yet the UPC Agreement, however, most have made progress towards their participation to the UPC.

The UK: In October 2015 the UK signed the Protocol to the Agreement on a Unified Patent Court on provisional application. Since (on 26th October 2017) the Scottish Parliament debated and approved the draft International Organisations (Immunities and Privileges) (Scotland) Amendment (N°2) Order 2017 which will give effect to the Protocol on Privileges and Immunities of the Unified Patent Court. This Order amends the Scottish International Organisations (Immunities and Privileges) (Scotland) Order 2009 .

This is however only the first out of the two orders required for the UK to sign the Protocol on Privileges and Immunities. In fact both the UK and the Scottish Parliaments must review and amend their respective legislation. The UK Unitary patent Court (Immunities and Privileges) Order 2017 was laid before the UK Parliament on 26th June 2017 and is now awaiting debate before the UK Parliament.

The UK Parliament is on recess until 9th October 2017 and will thus only consider this statutory instrument from this date. As to ratification of the UPC Agreement the UK government undertook to ratify it before it leaves the European Union and reaffirmed its commitment to the UPC (see here). The UK Government has not however disclosed any date for ratification .

Germany: In March 2017 Germany passed a law to ratify the UPC AgreementIn April 2017 a challenge was brought before the German constitutional court arguing that the legislation passed by the German Parliament was unconstitutional. (See our posts on this issue here) This complaint has put a stop to Germany’s ratification process. The German constitutional court has not yet made public when it will consider the complaint. However, the court has extended (last week) its deadline for third parties comments on the issue to 31st December 2017. Germany has nonetheless signed the Protocol to the Agreement on a Unified Patent Court on provisional application in October 2015 and the Protocol on Privileges and Immunities of the Unified Patent Court in June 2016.

Ireland: In Ireland, although the Irish Prime Minister has announced seven referenda in September 2017, none will be on the ratification of the UPC Agreement. Ireland ratification of the UPC Agreement demands however that the Constitution be modified which can only be made through a referendum. The decision of the Irish Prime Minister to delay the organisation of this referendum  therefore postpone Ireland’s ratification to an unknown date. Ireland has also neither signed the Protocol on Privileges and Immunities of the Unified Patent Court nor the Protocol to the Agreement on a Unified Patent Court on provisional application.

Greece: In June 2016, Greece altogether with 11 other Member States signed the Protocol on Privileges and Immunities. Since, the Ministry of Justice consulted in March 2017 the public on the draft legislation to ratify the UPC Agreement (see the consultation here).  The same month Greece signed the Protocol to the Agreement on a Unified Patent Court on provisional application.

Hungary: It was reported that in July 2017, the Hungarian Minister of Justice, acting on behalf of the government, filed a motion with the Constitutional Court of Hungary (No. X / 01514/2017) requesting the Court’s opinion on the compatibility of the UPC Agreement  with the Hungarian Constitution “and on the appropriate mechanism that must be used for its ratification“.  The Hungarian government in fact wishes the Constitutional Court to determine whether the ratification of the UPC Agreement can be operated under the mechanism of transfer of sovereignty that must be used in relation with the EU and international agreements that Hungary sign as an EU member state. The nature of the UPC Agreement is in fact debated since the Brexit. Indeed if the UPC Agreement is an EU agreement, the UK’s participation to the UPC will be subject to amendments made to the UPC Agreement. If on the other hand the UPC Agreement is an international agreement the participation of the UK will be subject to, notably, its acceptance of the authority of the CJEU. Although for reasons related to the Hungarian constitutional order, the Hungarian constitutional court may thus determine this issue before the CJEU or Brexit negotiators reach a their own conclusion.

Slovenia: In October 2015 Slovenia signed the  Protocol to the Agreement on a Unified Patent Court on provisional application, followed in July 2017 by the Protocol on Privileges and Immunities in July 2017. It also passed a law ratifying the UPC Agreement in October 2016. Slovenia however has still not deposited its ratification instrument to the Council of the European Union. This renders it ineffective. Finally, Slovenia will be hosting the Patent Arbitration and Mediation centre in Ljubljana. In that respect Slovenia has registered a declaration by the Council of the European Union stating that “(t)he Republic of Slovenia considers that the Patent Mediation and Arbitration Centre as established by the Agreement on a Unified Patent Court, done at Brussels on 19 February 2013, is part of the Unified Patent Court, and that consequently the provisions of the Protocol on Privileges and Immunities of the Unified Patent Court, done at Brussels on 29 June 2016, apply mutatis mutandis to the Centre.

Latvia: Latvia has passed a law ratifying the UPC Agreement in April 2017. This law however will only come into force on 1st January 2018. Latvia is planning to take part in the Nordic-Baltic regional division of the UPC with Sweden, Lithuania and Estonia but must first pass a law allowing its participation to this regional division.

The Czech Republic, Cyprus, Slovakia and Romania have not initiated any development towards their participation to the UPC. 

Update on the Opt-out Process and the Case Management System: a Letter from the UPC Chairman

UK ratifies the UPC Agreement

The UPC Chairman answers the questions of the British IP Federation about the opt-out proceedings.

On June 13th, the British IP Federation, which represents the view of UK industry in IP policy and practice, wrote an open letter to the Chairman of the Preparatory Committee of the Unified Patent Court (UPC) Mr Alexander Ramsay asking him to clarify the opt-out process during the sunrise period (3 months before the entry into force of the UPC Agreement).

Six days ago, the IP Federation published on its website the reply from the chairman. In his response, Mr Ramsay addressed the following points:

  1. The Chairman clarified the meaning of rule 12 of the Draft Rules on the European Patent Litigation Certificate. This rule does not prevent a European Patent Attorney (EPA) with an existing alternative qualification to register during the sunrise period as a UPC Representative.
  1. The IP Federation had concerns that the massive influx of registrations as UPC representatives at the start of the sunrise period could create delay. But, the chairman stated that arrangements had been made to manage the expected large number of applications.
  1. All users, including staff members, will have to register on the Case Management System (CMS) if they want to make applications to opt out. There will be a two-stage authentication procedure to register, first as a user, then as a UPC representative on the CMS. The details of this procedure will be published in the near future on the UPC Website.
  1. The formalities staff will be able to prepare the opt-out applications for EPAs or representatives to file. However, the formalities staff will have to use their own user ID if they want to register the opt-out on behalf of the EPA or representative. Any user that lodges the application will be responsible for its content and must provide her user identity. Besides, a mandate will be required for any user that is not a qualifying EPA or a UPC representative.
  1. The proprietor of a patent will not need a mandate to opt it out. If the proprietor is a company, any member of the staff who is not a UPC representative will need to file a mandate. This is why the Preparatory Committee is considering the creation of a general mandate to authorize multiple opt-out applications by a particular user over a period.
  1. Application Programming Interfaces (APIs) are provided by the UPC IT team in the developer section of the UPC website to enable companies to integrate the CMS to their IT systems. Also, a user-friendly guidance through the APIs and a list of third-party companies specialized in services for integration with the CMS will be published on the UPC website as soon as possible.

The Chairman did not specify any date for the start of the sunrise period.

Changes coming to the Case Management System.

On a side note, on July 5th the UPC IT team released an update to the CMS. The goal is to fine-tune different processes on the site like the opt-out application process or the procedure of patent selection. A new API was also made public on the UPC website.

A few days later, the UPC IT Working Group Coordinator Dario Pizzolante announced in a statement that a new version of the CMS specifically designed for the opt-out procedure during the sunrise period will be released in August. He also added that in the future the changes made to the CMS will not be released continuously but instead in larger updates. The IT team is currently working on the adaptation of the CMS to the rules of procedure and on the authentication mechanism. Besides, the team has been receiving feedbacks from multiple workshops since the creation of the temporary website.

Update on the UPC timetable: a message from UPC Preparatory Committee Chairman

Brexit and the German constitutional challenge

On 7th June 2017 the Preparatory Committee announced through a statement a delay in the start of the Period of provisional application and in the entry into force of the UPC Agreement. No new timetable was announced, but the committee expressed its will to publish one in the foreseeable future.

Yesterday the chairman of the Preparatory Committee Alexander Ramsay released a message on the UPC website.

The Preparatory Committee is still waiting on two different national procedures:

  • The ratification of the UPC Agreement, which requires the deposit of 13 instruments of ratification, including Germany, France and the United Kingdom.
  • The approval of the Protocol on Provisional Application (PPA) by 13 Member States that have already signed the UPC Agreement and whose Governments have received Parliamentary approval to ratify the UPC Agreement.

On one hand, the chairman noted that the ratification process has progressed in both Estonia and the United Kingdom. Estonia indeed passed the necessary legislation to ratify the UPC Agreement and the UPC Order on Privileges and Immunities was placed before the British Parliament on 26th June.

But on the other hand, three  Member States, including Germany and the UK, still need to approve the PPA to start the provisional application period.

The chairman insisted on the recent delay of the German ratification bill by the Federal Constitutional Court due to a recently complaint. In fact, the German Constitutional Court received a complaint in April 2017 challenging the constitutionality of the legislation enabling the ratification of the UPC Agreement. The grounds and the source of the complaint remain unknown to the public. However, the Court considered this complaint justified enough to request the Federal President not to sign the bill and examine the complaint before ratification.

Considering the above, the chairman concluded it is currently difficult to maintain a definitive starting date for the period of provisional application. According to him, the provisional application period should start during the autumn 2017 followed by the sunrise period for the opt-out procedure in early 2018. Around three months later, the UPC Agreement should enter into force and the UPC should become operational.

This announcement is consistent with the timetable that was expected by most experts. The UPCBlog team will follow any update on a more detailed timetable.


Last meeting of the Preparatory Committee before the provisional application phase:

Brexit and the German constitutional challenge

Last meeting of the Preparatory Committee:

The UPC Preparatory Committee met for the last time last week in the Hague. It was an opportunity for the Preparatory Committee to agree minor amendments to the Rules of Procedure, which it will soon publish.

The Provisional Application Phase:

This meeting signals the start of the next stage of the UPC, the provisional application period. This period will start after 13 states, that have already signed and ratified the UPCA, approve the protocol on provisional application. (See here for more on the Protocol on Provisional Application). The Preparatory Committee declared that “the Committee (is) confident this would happen in order to enable the provisional application to start at the end of May 2017“.

The Protocol is necessary for the Court to make preparations before it becomes operational in December 2017. The provisional application phase will notably see the nomination of judges, whose process of recruitment has now started. It will also allow for the testing of the IT system and “ensure resources are in place and trained in readiness for the Court opening”.

17th meeting of the Preparatory Committee in Stockholm

Brexit and the German constitutional challenge

The Preparatory Committee held its 17th meeting in Stockholm on 30th June, where it visited the premises of the Regional Division of the UPC located within the District Court of Stockholm. 

The communiqué published by the Preparatory Committee mentions that the “Committee endorsed a number of papers, namely a set of rules on financial management during the period of provisional application, how to structure the corporate functions, and regulations relating to judges and staff. Some minor technical work is to be completed on these items during the summer but the Committee is not expected to have to come back to them in meeting”.

It also appears that the Committee agreed on a set of consequential amendments to the Rules of Procedure  to include provisions on  court fees and the Code of Conduct which had been previously agreed by the Committee.

Finally, the Committee endorsed the UPC’s draft budget, but made clear that the budget will be a “live document subject to changes before finally adopted by the Administrative Committee”.

The Committee will meet next in early October 2016.

16th meeting of the Preparatory Committee: a specific focus on Human Resources and Financial issues

Brexit and the German constitutional challenge

The Preparatory Committee has published today the report on its last meeting, which took place in the vicinity of the future UPC local division of Hamburg.

Although the report published does not give any detail on the decisions adopted by the Committee, it appears that the Preparatory Committee focused specifically on human resources and financial issues.

The Preparatory Committee is notably working on issues of pensions, payroll, and health care with the International Service for Remunerations and Pensions. It also announced that the training framework of the UPC was agreed, therefore allowing the Budapest training centre of the UPC to proceed with the planning for training for the first year of operation.

The Preparatory Committee also dealt with issues relating to the contributions of Member States during the provisional application period and the first year of operation. The Co-coordinator of the Financial Working Group, Jean-Francois Magana reported  that the work is well advanced and that Member States will have a good basis to prepare their first contributions to the budget of the Court. To cater for this specific period the Committee also agreed on a set of adaptations to the Rules of the Administrative, Advisory and Budget Committees and discussed corresponding adaptations for the financial management of the court during this period of time.

Finally, the Preparatory Committee reports that the work on the IT system is progressing well although “it is clear that the IT environment of the Court is an area that will need constant development and attention”.

The 17th meeting of the Committee will be held in Stockholm (future location of the Nordic-Baltic regional division) on 30 June 2016.


Scale of ceilings for recoverable costs:

The Preparatory Committee agreed last week on the ceilings applicable to recoverable costs together with Court Fees (see our post here on this topic). In this post we look at the specification of the costs deemed recoverable and the determination of the ceilings for the recoverable costs.

So which cost can be recovered?

  • Only reasonable and proportionate legal costs and other expenses incurred by the successful party may be recovered from the unsuccessful party.
  • The ceilings of recoverable costs shall apply to representation costs.


And how much can be recovered? 

These ceilings are a compromise to accommodate the different approaches already existing in the Member States:

  • The ceiling shall be applied to each instance of the Court proceedings regardless of the number of parties, claims or patents concerned
  • In case of partial success the ceiling applicable in the case shall correspond to the proportion of success of the party seeking cost recovery.
  • Unnecessary costs caused to the Court or the other party shall be borne by the party incurring them, which means that even the successful party has to reimburse costs caused that are deemed unnecessary by the Court.

The ceilings are only to be regarded as a safety net, i.e. an absolute cap on recoverable representation costs applicable in every case. The Court has therefore a large margin of appreciation when applying the safeguarding principles before making a cost decision, and the table of ceilings is designed to cater to most situations:

  • In limited situations, such as the particular complexity of the case or multiple languages used in the proceeding, the Court may upon request by one party, having regard to the financial capability of all the parties in the light of the principle of fair access to justice, raise the ceiling by up to 50%. The increase will be limited to up to 25% where the value is more that EUR 1 million and up to and including EUR 50 million. The top ceiling however retains an absolute maximum of EUR 5 million.
  • There is no limit to the level the ceilings may be reduced.
  •  Upon request of one of the parties, the Court may lower the ceiling with regard to that party if, in the event that the requesting party is unsuccessful, the applicable level of recoverable costs of representation to be awarded to the successful party would threaten the economic existence of the requesting party, especially if the latter is a micro-enterprise, SME, non-profit organisation, university, public research organisation or natural person. All types of organisation may make this request, but those from micro-enterprises, SMEs, non-profit organisations, universities, public research organisations or natural persons are given particular emphasis in the wording.


The Table of ceilings for recoverable costs:

Value of the proceedingCeiling for recoverable costs
Up to and including 250.000 €Up to 38.000 €
Up to and including 500.000 €Up to 56.000 €
Up to and including 1.000.000 €Up to 112.000 €
Up to and including 2.000.000 €Up to 200.000 €
Up to and including 4.000.000 €Up to 400.000 €
Up to and including 8.000.000 €Up to 600.000 €
Up to and including 16.000.000 €Up to 800.000 €
Up to and including 30.000.000 € €Up to 1.200.000 €
Up to and including 50.000.000 €Up to 1.500.000 €
More than 50.000.000 €Up to 2.000.000 €

No Opt-Out Fee!!

As part of the recent amendment by the Preparatory Committee of Rule 370 of Procedure which deals with Court Fees and Recoverable Costs voted on 25th February 2016, it appears from the draft* published on the UPC website that there will be no fee for the opt-out! 

In fact, the Committee explains that processing the opt-out fee would generate an administrative cost for the Court. The Preparatory Committee being cautious of not burdening the applicant with a heavy fee for the opt-out, it therefore decided to remove the fee so as to remove the cost for the Court. The Committee also explains that having a no fee policy for the opt-out “also eliminates the problem of how to process payments particularly during provisional application.”

The decision not to charge for opt-outs seems also to have been motivated by the clear consensus on this issue which appeared in the different public consultations on the necessity to remove or lower the opt-out fee ” to reflect the commitment made by the Preparatory Committee that the fees for both the opt-out and its withdrawal are set to reclaim administrative costs only and that the Court would not profit from either of these.”


*The Rules on Court Fees and Recoverable costs were agreed by the Preparatory Committee but are subject to legal scrubbing. The definitive version should not however vary substantially from the version below. See page 17 for the paragraph on Opt-Out Fees.

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News Rules, new Judges and new Court Fees…The 14th meeting of the Preparatory Committee:

The Preparatory Committee met on 24th and 25th of February 2016 and published today the report of their 14th meeting. Here is what the Committee agreed upon:


The Committee agreed on the Rules governing the Registry of the UPC and the Rules of Procedure of the Advisory Committee.

The Committee however decided to come back to the Arbitration Rules and the Rules of Operation of the Arbitration and Mediation Centre at its next meeting in April.

The Protocol on Privileges and Immunities was agreed by the Committee. This is an important achievement especially since it is necessary for a number of Member States to conclude their national ratification processes.



The Committee agreed, by vote, on the judges’ salaries.

The Committee is close to be able to launch the recruitment process for the UPC judges, thanks notably to the Human Resource and Training Working Group who presented a timeline and draft application. The Committee therefore decided to launch the recruitment process in Spring 2016 for the UPC to take shape before the start of the provisional application phase.



The Committee  agreed on the Rules  for the Court Fees and Recoverable Costs, which it published together with the Guidelines (for the UPC judges) for the determination of the Court fees and Recoverable costs.

See our post on Monday for more details.