Throughout Europe, patent practitioners are preparing for
the Unitary Patent and Unified Patent Court, the consensus
being that they will be with us some time in 2016 or 2017.
Increasingly, discussions are turning from the theoretical pros
and cons of the new systems to how they will work in practice,
such as to what extent courts will bifurcate infringement and
validity (on which see my recent blog post).
In recent weeks,
I’ve heard provocative contributions to the debate
from two of the UK’s most experienced IP
practitioners – Daniel Alexander QC of 8 New Square
(pictured, right) and Gordon Harris of Wragge Lawrence Graham
Alexander (one of the UK’s top IP-specialist
barristers who has also been tipped as a future High Court
judge) spoke at a seminar hosted by Herbert Smith
Freehills last week on the "Europeanisation of IP Law",
something he has many concerns about.
In particular, he highlighted how long it has taken for
areas that have been harmonised in the EU (such as trade mark
and copyright law) to settle down, and how there has often been
a lot of confusion on the way. This is partly due to the way
the Court of Justice of the EU works (such as its
non-specialist nature, the divergence in national approaches to
referrals, the lack of dissenting judgments, confidential
submissions and the absence of amicus briefs).
Alexander, who has of course tried many cases before the
Court, compared it to a jury – a panel of
non-specialists trying their best to make sense of highly
Looking ahead to the UPC, he fears that these
characteristics may also be evident on the panels of that
Court, which is likely to have some judges with little patent
experience at least at first instance (as a result of the need
for geographical diversity). As a consequence, he said he has
"real reservations about this project".
I know he’s not the only person to express such
views, but as a senior barrister he brings a particular insight
and eloquence to the question.
Gordon Harris’s concerns, expressed at a
seminar hosted by his firm last week, relate to the role of the
EPO in granting Unitary Patents. Harris is a long-time
supporter of the principles behind the Unitary Patent and UPC,
but recent experience has led to him having fundamental
These stem from the extensive litigation over airline seats
between Virgin Atlantic and Contour (confusingly also known at
various times as Premium and Zodiac). Harris acted for the
latter throughout the litigation, which arose over the UK
designation of a European patent – a designation that
the applicant did not request and which was only granted due to
an administrative error at the EPO. (He explains this saga in
more detail in an article on his firm’s
Despite seven years of litigation, including a decision of
the UK Supreme Court, successive courts agreed
that they could not correct that error as it was an
administrative decision. This means, said Harris, that "the EPO
is above the law".
Under the Unitary Patent Regulation, the EPO is responsible not just for examining and
registering Unitary Patents, but also maintaining the register
and collecting annuity fees. Harris is worried that the
proposed system lacks a "proper constitutional framework". This
is a concern, incidentally, that he shares with
Spain’s government – as expressed in its
challenge to the new system at the CJEU (cases C-146/13 and C147/13).
Neither Alexander nor Harris are reactionaries who fear any
kind of change, and I believe both welcome initiatives that
could improve the patent system in Europe. But their strongly
expressed views on the potential problems of what is proposed
reflect widely held concerns. Reassurance that such concerns
are being addressed would be welcome.