Situation leading to the replacement of London by Milan in the UPCA
The UPC’s Administrative Committee has decided on 23.06.2023 to remove London and add Milan as a Central Division section in the UPCA. This amendment was carried out in application of Art 87(2) UPCA.
Previously, in a decision of the presidium of the UPC, dated 08.05.2023, the latter decided provisionally a different distribution of the cases between the Central Division between Paris and Munich.
Patents at stake
EP 3 490 258 B2 (APL_15039/2025)
EP 2 903 267 B1 (APL_15067/2025)
EP 3 200 463 B1 (APL_15072/2025)
In all those actions Roku is defendant before the CFI-LD Munich, has raised a Preliminary objection under R 19(1) RoP before the CFI-LD Munich and claimant in appeal.
Only one of the cases will be discussed here.
In a Preliminary objection raised before the UPC-LD Munich, Roku contested the legal basis of the amended UPCA following the decision of the UPC’s Administrative Committee replacing London by Milan under Art 87(2) UPCA.
Roku’s requests before the UPC-CFI LD Munich
Next to a dismissal of the claim for a Preliminary Injuction, Roku requested to suspend the present proceedings pursuant to Art 21 UPCA and Art 38(2) of Annex I UPCA and to refer the following question to the ECJ for interpretation of Union law:
“Is it compatible with Art 267 TFEU that the UPC, established by individual Member States by means of an international agreement, is entrusted with the application of Union law in the field of patent law in place of the courts of the Member States and is subject to the supervision of the ECJ through preliminary ruling proceedings pursuant to Art 21 UPCA?”
Roku argued that the provisions of the EPCA are incompatible with EU law because the UPC was established by an international agreement between individual Member States without the involvement of the EU in the position of national (patent) courts, without being integrated into the court system of the respective Member States. This incompatibility with EU law was established by the ECJ in its Opinion C 1/09 of 08.03,2011 for the agreement planned at that time to create a unified patent court system. The changes made to this previous version in the current EPCA did not eliminate this incompatibility.
According to Art 19 TEU and Art 267 TFEU, the EU court system provides for only two types of legitimate courts, namely the Union’s own courts on the one hand and the courts of the Member States on the other. The creation of courts that deviate from this system and the transfer of judicial powers to them is contrary to Art 19 TFEU.
A decision not to refer would be tantamount to the UPC declaring itself illegitimate by its own decision. A referral to the ECJ pursuant to Art. 267(2) TFEU and R. 266.1 RoP would be more appropriate. In view of the considerable time that has elapsed since the UPCG came into force and the large number of decisions already issued, there is a considerable urgency to clarify these issues, which in the present case amounts to a reduction of discretion to zero.
The apparent violation of the provisions of the UPCA was not remedied by the “Decision of the Administrative Committee pursuant to Art 87(2) UPCA to amend the Agreement” of 26.06.2023.
For Roku there is no legal basis for the deletion of London and its replacement by Milan. Art. 87(2) UPCA cannot be invoked.
This Article only concerns amendments that adapt the UPCA to changes in Union law or international treaties that occurred during the period of validity of the UPCA. As an executive body, the Administrative Committee is also not permitted to make fundamental changes, such as changes to the court structure. This is reserved for all democratically legitimized decisions of the contracting member states.
Even if Art. 87(2) UPCA could in principle have been used as a legal basis, London could have been deleted, but Milan could not have been included.
Since it cannot be ruled out that, for example, the composition of the various panels would have been different if the UPC had been properly established, this deficiency affects all proceedings pending before the UPC.
The decision on the Preliminary Objection by the CFI UPC-LD Munich
In ORD_69038/2024, 18.03.2025, the CFI-LD Munich held the following:
The alleged incompatibility of the legal bases of the UPC, in particular the provisions of the UPCA, with the requirements of European primary law in the form of the TEU and the TFEU, and the allegedly resulting invalidity of the UPCA, is not a ground for a preliminary objection within the meaning of R 19(1) RoP.
A preliminary objection under R 19(1) RoP cannot be successfully based on an alleged violation of Art 47(2) EU CFR or Art 6(1) ECHR.
The question of whether it is compatible with Article 267 TFEU that the UPC is entrusted with the application of Union law in the field of patent law instead of the courts of the Member States is subject to the supervision of the ECJ through preliminary ruling proceedings in accordance with Art 21 UPCA is not directly relevant to the question of the competence of the UPC, nor is it of indirect relevance.
An incidental examination of the alleged unlawfulness of the UPCA under Union law is not to be carried out. Roku’ alternative request for a referral to the ECJ pursuant to Art 267 TFEU is therefore not relevant to the decision on the objection under R 19(1) RoP.
The alleged violation of the right to a lawful judge pursuant to Art. 47(2) EU CFR in conjunction with Art.7(2) UPCA and Art. 6(1) ECHR in conjunction with Art. 7(2) EPGÜ, as asserted by the Roku, is likewise unsuccessful.
The list of grounds for objections pursuant to R 19.1 RoP does not include the violation alleged by the defendants. Consequently, a preliminary objection cannot be based on a possible violation of Art 47(2) of the EU CFR or Article 6(1) ECHR.
Nor is it apparent that the alleged infringement is, even indirectly, relevant to the jurisdiction rules under review in Art 31, 32, and 83 UPCA.
The argument that it cannot be ruled out that the composition of the various panels would have been different if the UPC had been properly established is not relevant. This is also the case even if the assumption regarding the composition were in fact correct. Art 47(2) of the EU CFR states that everyone has the right to have their case heard by an independent and impartial court established by law in a fair hearing, publicly and within a reasonable time.
The wording of Art. 6(1) ECHR is similar. It follows from the fundamental or human right in particular that the/a court must be established by law before it can begin to administer justice, and that the basis of its organizational structure and its jurisdiction in terms of subject matter and location must be regulated in advance by law.
The CFI-LD Munich has local jurisdiction pursuant to Art. 33(1,a) UPCA. The Preliminary Objection is therefore not admissible insofar as it is based on R 19.1 RoP.
Comments
London=Milan
I can only agree with Roku that Art 87(2) UPCA has been manifestly misused by the Administrative Committee of the UPC.
A first reason is that the UPCA is a treaty without any exit clause. In such a situation, the Vienna Convention on the Law of Treaties (VCLT) should have been applied. No trace of the VCLT in any of the decisions taken by the presidium of the UPC or the Administrative Committee. It is easy to understand why.
A second reason is that the UK withdrawal has simply been announced by a “Note Verbale”, and not after deliberation of the UK legislator. The Parliament and the House of Lords have merely been informed. It is not even clear whether the declaration of withdrawal applies “ex nunc” or “ex tunc”.
In a blog entry of Jan. 4th, 2023, I have already raised the question whether after Brexit, the UPCA was compatible with EU law.
The questions raised by Roku are highly controversial, politically explosive, and yet entirely justified.
The situation at the UPC, with respect to Art 21 UPCA, is comparable to the situation before the boards of appeal of the EPO under Art 112 EPC.
If a board does not want to refer questions proposed by a party, it will find lots of reasons to refuse a referral. The situation is the same at the UPC when it comes to a referral to the CJEU under Art 21 UPCA. In this situation, the EPO boards of appeal and the UPC are at the same time both judge and party. This does not seem correct.
In the present case, a referral to the CJEU would have been appropriate. This could however have been dangerous for the whole system.
On the other hand, the UPC was quick to adopt the BSH Electrolux decision of the CJEU, C 339/22 of 25.02.2025. See the corresponding entry in the present blog.
R 19(1)
R 19(1) is rather general and the interpretation of it by the CFI-LD Munich is highly biased to say the least.
Any possible reason for considering the questions raised by Roku to be irrelevant has been brought forward by the CFI-LD Munich. The reasons for the non-relevance have the appearance of a tautology. They are at the same time apodictic. This is by no means surprising as too much was at stake.
Involvement of the CJEU with respect to the UPCA
The CJEU was consulted to see whether the envisaged European Patent Litigation Agreement (EPLA) under the auspices of the EPO was in conformity with the Union Law. The answer of the CJEU was negative.
When the UPCA was set up, the draft UPCA was never brought before the CJEU to check its conformity with Union law. It was deemed sufficient that the Preamble and some Articles of the UPCA refer to Union law, e.g. Art 20-24, 41(2), 87(2) UPCA.
In view of the Brexit and its consequences it would have been necessary to have the opinion of the ECJ on the UPCA and especially after the daring move that led to London being replaced by Milan.
This is by no means surprising. In view of the delays imposed by the situation in Germany, Art 7(2) UPCA and Annex II could have renegotiated, but the fear was too high that a new ratification of the so amended UPCA might not be successful. In the meantime some fundamental flaws in the UPCA became apparent.
Copyright
The formulation “If London=Milan then red=green” is not my creation. I got it from a highly legally qualified person.
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