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Dear Mr Tillmann,

This post is a reply to the allegations you have made in GRUR Int 2024, 769.

In this article you have criticised Nicolas Binctin (Professor in Poitiers, France) and Craig A. Nard (Professor in Cleveland, USA) for their conclusion that the conditions of entry into force of the UPCA  as set out in its Art. 89(1), were still not met, see GRUR Int. 2024, 191.

1. Introduction

That you are one of the most staunch supporters of the UPCA/UPC system is nothing new. You participated not only in its conception,  but also in drafting its Rules of Procedure.

You were also instrumental in the second ratification of the UPCA by the German Parliament. In the explanatory notes to the German Parliament, there was also question of a declaration under Art 31 VCLT. See further below what happened to this announced declaration.

In an article published on GRUR 2020, 847, you have clearly acceptedthat the UPCA is an international treaty regulated by the VCLT. This means that the whole VCLT applies and not only some clauses which are convenient for your argumentation.

It is thus quite normal that you attempt to explain the situation after withdrawal by the UK with the aid of the VCLT.

I can agree with you that the declaration of the UK ‘made its intention clear not to become a party to [the UPCA]’ within the meaning of Art. 18(a) VCLT. My agreement stops there.

I. Participation of the UK in the UPC after withdrawal

For a long time, you went as far as to claim that the UK could still stay in the UPC even after having left the EU, e.g.  IPKat. Your colleague Ansgar Ohly was of the same opinion, see GRUR Int. 2017, 1. 

It is only when the UK government made abundantly clear that the UK did not want any ties left with the EU, and hence not with the UPC, that you gave up this idea.

It is interesting to note that you now defend tooth and nail the UK’s decision to leave the UPC system. I have rarely come across such a remarkable flexibility.

There is a German expression relating to the flexibility of the neck which wonderfully applies to your changing positions.

II. Chronology of events

It is beyond any doubt that the UK has wanted to leave the UPCA, but the consequences of the respective provisional application of the UPCA cannot, contrary to what you say, have the effect you claim.

The UK has ratified the UPCA on 26.04.2018, i.e. after the Brexit.

The UK has left the EU on 31.01.2020.

On 20.07.2020, the UK Minister for Science, Research and Innovation, announced that the UK had withdrawn from the “Unified Patent Court system” with immediate effect in a written statement to the UK Parliament (HCWS395) as well as to the House of Lords (HLWS383).

The withdrawal was done by a mere “Note Verbale”. Whether the “Note Verbale” and the communication of the UK Government to the Parliament and the House of Lords has any value at international level remains to be seen.

Even in the statement to the House of Lords, the UK government mentioned that the Agreements (UPCA and EU Directives) were not in force. 

The provisional application of the UPCA started on 19.01.2022.

A careful reading of Art 25(2) VCLT shows that the provisional application of a treaty or a part of a treaty with respect to a State shall be terminated if that State notifies the other States between which the treaty is being applied provisionally of its intention not to become a party to the treaty.

The only logical conclusion is that Art 25(2) VCLT cannot apply to the withdrawal of the UK by a simple note, as the UPCA was not provisionally in force at the time of the withdrawal of the UK.

Your whole argumentation on the applicability of Art 25(2) VCLT appears thus without merit.

III. Former statements of yours

In an interview to Kluwer Patent Blog, you already mentioned that the provisional application of the UPCA could start before the end of 2020. In this interview, you mentioned not only Art 25(2) VCLT, but also Art 31(3,a) VCLT, allowing to “interpret” Art 7(2) UPCA.

Reality is that by the end of 2020, there was no provisional application of the UPCA, and even then, the withdrawal of the UK would have preceded the provisional application of the UPCA.

In this respect, it has to be reminded that the provisional application of the UPCA only started on 19.01.2022

In the same interview you made perfectly clear that “Any change of Art 7(2) UPCA and Annex II would be subject to ratification by all CMS“. You added that “This would  postpone the beginning of provisional application and entry into force for a considerable time. Better to live, for the time being,  with the legal situation as created by a UK withdrawal: The remaining parts of the central division (not London) may be established and will be able to perform the London duties in the beginning. The distribution of these duties between the two instances remaining may be decided upon by a so-called ‘subsequent agreement”. This agreement would necessarily be according to Art 31(3,a) VCLT.

I take from those statements of yours, that an amendment of Art 7(2) UPCA would primarily require a new ratification, which you and all the UPC supporters wanted to avoid at any cost. This is why you mentioned Art 31(3,a) VCLT.

Any amendment of Art 7(2) UPCA, outside a new negotiation and new ratification,  presupposes that an agreement pursuant to Art 31(3,a) VCLT has been reached by the remaining contracting states.  

Reality is that no agreement pursuant to Art 31(3,a) VCLT on the interpretation of Art 7 (2) UPCA has ever been signed by the remaining contraction states.

An agreement pursuant Art 31(3,a) VCLT seems only to have been envisaged for the PAP Protocol.

This is probably the reason why you have not brought in Art 31(3,a) VCLT in your last publication and have tried to justify the amendment of Art 7(2) UPCA by other means.

V. Provisional application of the UPCA

In the Report of the Preparatory Committee meeting 27 October 2021, the following was held:

“The Chairman presented a draft Declaration on the authentic interpretation of Art. 3 of the PAP-Protocol*, following the United Kingdom’s withdrawal from the Unitary Patent System. In line with public international law, this Declaration will confirm the entry into force of the PAP-Protocol, once the required 13 Member States become bound by said Protocol, recognizing that Art. 3 of the PAP-Protocol is to be interpreted as mirroring Art. 89 of the UPCA**. The delegations supported the approach proposed by the Chairman, hence giving him the mandate to organize a signing ceremony of the Declaration, foreseen in the margins of a future COREPER meeting.”

* “including Germany, France and the United Kingdom”

** “the three Member States in which the highest number of European patents had effect”

Such a declaration has never been thought for, and has neither been signed nor published.

If this would have been the case, you would have been one the earliest to inform the patent community of an agreement pursuant Art 31(3,a) VCLT.

Without any declaration pursuant to Art 31 VCLT as announced by the Preparatory Committee, the Protocol on the Provisional Ppplication (PPA) entered into force on 19.01.2022, following the deposit of the instrument of ratification by Austria.

It is the General Secretariat of the Council of the European Union which. in its quality of  Depository, cf. Art 84(2) UPCA, has decided that the UPCA would be provisionally applicable as of 19.01.2022.

In the Depositary’s duties, cf. Art 85 UPCA, there is nothing to be found which gives the Depository legal competence to declare the provisional entry into force of the UPCA, especially since an agreement under Art 31(3,a) had been announced. .

I am curious to know on which legal basis, bypassing Art 31(3,a) VCLT, you think that this decision of the Depository was taken.

The ministerial draft bill for the second ratification of the UPCA by Germany assumed that the issue of the UK’s departure was to be resolved through interpretation of the UPCA under the VCLT..

The declaration under Art 31 VCLT announced in the explanatory notes to the German Parliament was not the declaration suggested by the Chair of the Preparatory Committee. It concerned Art 7(2) UPCA, which necessarily had to be amended if the departure of the UK was accepted. .  

VI. Art 25(2) does not apply – The PAP-Protocol is limbo

As the UPCA entered provisionally into force well after the withdrawal of the UK from the UPCA it is plainly incorrect to claim that Art 25(2) VCLT applies, as the UPCA was not provisionally into force when the UK withdrew its participation to the UPCA.

It is thus further plainly incorrect to claim that for” the future handling of the provisions of the UPCA, in particular of the provision of Art. 89(1) upon entry into force, the UK was to be treated in the same way as a state that had not signed the Convention. With a view towards the special structure of Art. 89(1) UPCA, this was, according to your paper, of particular importance.

Not only has the UK signed, but it has also ratified the UPCA before it withdrew its participation to it, well in advance to the provisional application of the UPC.

As Art 25(2) VCLT cannot apply and the PAP expressly requires the signature of Germany, the UK and France, and in the absence of a declaration pursuant to Art 31(3,a) VCLT, it is possible to consider that the PAP has not legally entered into force.

VI.1 Withdrawing a ratification is not unsinging a treaty

You consider that the “first low-ranking statement”  of the UK, later followed by the official exit declaration of 20.07.2020 are sufficient to consider that the UK has effectively left the UPC system.  

In the declaration to the Depository, the “Note Verbale”, the UK did not “unsign” the UPCA, it withdrew its ratification. Withdrawing a ratification is quite different from merely unsinging a treaty. Art. 18(a) VCLT might apply, but the consequences you draw are not correct. Yourself put into question whether the UK has effectively withdrawn its ratification, see below.

Contrary to what you claim, “the legal situation after the UK’s exit declaration for the future handling of the provisions of the UPCA, in particular of the provision of Art. 89(1) upon entry into force, the UK could not be treated in the same way as a state that had not signed the Convention.

You and your friends might regard the UK no longer to be a signatory state”, but this is an opinion without any legal basis, cf. above.

In Section 3.4 of the UN Treaty Handbook, referring to Art 25(2) VCLT it is stated that a  “State may unilaterally terminate such provisional application at any time unless the treaty provides otherwise. In contrast, a State that has consented to be bound by a treaty through ratification, approval, acceptance, accession or definitive signature is governed by the rules on withdrawal or denunciation specified in the treaty as discussed in section 4.5, (see Art 54 and 56 VCLT)”.

My thanks go to “Concerned Observer” in a comment in Kluwer patent blog about the withdrawal of the UK.  

VII. The VCLT and the exit or withdrawal from a treaty without exit clause

VII.1 Art 54 VCLT

Art 54 VCLT provides that the withdrawal of a party may take place either

– (a) in conformity with the provisions of the treaty; or

– (b) at any time by consent of all the parties after consultation with the other contracting States.

VII.2 Art 56 VCLT

Art 56(1) VCLT provides that “A treaty which contains no provision regarding its termination and which does not provide for denunciation or withdrawal is not subject to denunciation or withdrawal unless:

– (a) it is established that the parties intended to admit the possibility of denunciation or withdrawal; or

– (b) a right of denunciation or withdrawal may be implied by the nature of the treaty.

Art 56(2) VCLT provides that  “A party shall give not less than twelve months’ notice of its intention to denounce or withdraw from a treaty under paragraph 1.

VII.3 The UPCA has no exit clause

Even if, for the sake of argument, it could be accepted that Art 25(2) VCLT applies, there is another problem with the UPCA, which has been carefully swept under the carpet by all the proponents of the UPC: the absence of an exit clause in the UPCA.

Contrary to the EPC, cf. Art 174 EPC, the UPCA has no exit or withdrawal clause.

In the absence of an exit clause, Art 54 and 56 VCLT apply, or would you limit the application of the VCLT to the clauses that just suit you?

Art 54 VCLT cannot apply as the UPCA does not contain any exit clause, and as far I can see, there was no consent  of all the parties after consultation with the other contracting States.

You even say that Prime Minister Johnson’s office announcement that the UK no longer wished to participate in the UPCA was initially perceived as an affront to the other participating member states. We are thus very far from any consensus.

The only possible conclusion is that Art 56 VCLT applies.

VII.4 Application of Art 56 VCLT

The absence of any right of denunciation or withdrawal is certainly not implied by the nature of the treaty, cf. Art 56(1,a) VCLT.

For the same token, a right of denunciation or withdrawal cannot  be implied by the nature of the treaty.

When the UPCA was signed in 1973, Brexit has never been envisaged. This explains the absence of any exit clause in the UPCA. It is also possible to consider the absence of an exit clause has the consequence to bind the contracting states in absolute manner. It was clearly never envisaged that any contracting state could leave the UPCA. The Brexit and its consequences brought an end to this fiction.

VII. Premature naming of locations for the central division

As you explain in your paper, Art 7(2) UPCA was one of the most disputed topics during the negotiations leading to the UPCA. All three involved governments wanted to host the Central Division in respectively Paris, Munich and London. Art 7(2) UPCA is the result of a compromise between those three states. In order that this Article could not be misinterpreted later, the only solution was to enshrine the locations of the Central Divisions in the UPCA.

You consider now, that it was premature to expressly distribute the tasks of the central division, in Art. 7(2) UPCA. According to Art 7(2) UPCA Paris obtained the seat of the Central Division, whereas London and Munich would host Local Sections. Annex II distributed the work according to the IPC in the three locations. When there is question of Art 7(2) UPCA, Annex II has always to be considered at the same time. Annex II expressed the wishes of the respective governments. All the chemistry/pharmacy was to be dealt with in London, most of the mechanics was for Munich, and Paris got the rest, with the seat as bonus.  

It was thus not at all premature to expressly distribute the tasks of the central division. Without the distribution as enshrined in Art 7(2) UPCA and the distribution of tasks in Annex II, the UPC would have been dead borne and the UPCA would never have been signed.

IX. The anti-blocking function of Art 89(1)

It is was well known for a long time that Germany, the UK and France, had been the three leading countries in patent matters as well as the three countries in which the most patents were valid for a number of years. In view of this it was indeed not necessary to repeat in Art 89(1), that the Germany, the UK and France had to ratify the UPCA for it to enter into force.

This also explains why the PAP could not entry into force without the agreement of Germany, France and the UK.

I would also like to draw you attention that the London Convention on the translations under Art 65 EPC could also only enter into force when Germany, the UK and France had ratified. This was obviously also the case for the UPCA, whatever you might presently claim.  

The political reality was, and still is, that Germany, the UK and France play an eminent role in the European patent world, even if this is at different levels.

It is now very convenient from your part to come with Art 81(9) UPCA as anti-blocking system for the UK. This position does not resist reality on the basis of the facts as they have been reminded above here.

For a time Italy and The Netherlands have fought in order to obtain the London seat. In the end, in view of the figures, Italy prevailed.

IX.1 Not a mere side remark

As you explain, it is clear that the UK Parliament’s approval of the UPCA has not been withdrawn by a parliamentary resolution and is therefore still available. The UK’s instrument of ratification has not been recalled; it is still with the Council of the EU. Hower in its “Note Verbale”, the UK government made clear that it was withdrawing its ratification.

You are thus still secretly hoping  that the declaration on the part of the UK government under Arts. 18(a), 25(2) of the VCLT that it (the UK) does not intend to become a party to the treaty could one day be withdrawn and be reinstated as contracting state of the UPCA. In doing so, you actually contradict your own position on the withdrawal of the UK from the UPCA.

Since Art 25(2) VCLT is not applicable, Art 31(3,a) has been wilfully by-passed, and since the withdrawal has not been carried out according to Art 56 VCLT, the situation is indeed rather confuse.

Most important, and contrary to what you claim the UK has not merely withdrawn its signature under Art 25(2) VCLT as this Article is simply not applicable.

X. The VCLT and the interpretation of the UPCA

X.1 Amendment to Art 7(2) UPCA and of Annex II UPCA in general

I have further noted that in spite of your plea for the interpretation of the UPCA with the aid of the VCLT, neither the decision of the Presidium of the UPC, nor of its Administrative Committee have ever referred to the VCLT when they decided to amend Art 7(2) UPCA and Annex II.

As far as Art 7(2) UPCA and Annex II UPCA are concerned, its crystal clear wording does not require any interpretation according to Art 31 and 32 VCLT.

I would have thought that it would have been a bare necessity for the organs of the UPC to refer to the VCLT.

I am also curious here to have your explanations on absence of reference to the VCLT when Art 7(2) UPCA was amended first by the presidium and then by the Administrative Committee.

X.1.2 Amendment of Art 7(2) UPCA by the presidium of the UPC  

Even before the entry in force of the UPCA, the presidium of the UPC has decided the provisional allocation of the duties originally allotted to London to the seat in Paris and to Munich. Even there, haggling between France and Germany about the IPC classes dealt with in the two locations occurred.

In its decision the presidium referred to an interpretation by the Preparatory Committee of Art 7(2) UPCA and Annex II thereof, with regard to the allocation of cases to a section of the Central Division in London as having no effect and that the competence for these cases can be dealt with provisionally until a final decision is taken on the creation of another section of the central division.

The Preparatory Committee had no competence to decide on the interpretation of the UPCA. Any interpretation should have been done pursuant to Art 31(3,a) VCLT. The interpretation by the Preparatory Committee can thus  be considered as null and void.

The presidium might exercise its managerial power under Art 15(3) of the Statute of the Unified Patent Court, but this does not allow it, for management reasons, to amend Art 7(2) UPCA of its own volition.  

I have never seen the administrative organ of a court, here the presidium of the UPC, giving an interpretation of its founding text which is clearly contrary to the letter and  the spirit of the clear wording of Art 7(2) UPCA and of Annex II. Can you imagine the Federal German Court (BGH), or any German Court, setting aside a very clear legal rule when it was founded? I do not.  

X.1.3 De facto amendment of Art 9(1) UPCA by the Court of Appeal

When the Court of Appeal has decided for reasons of “efficiency” that certain of its decisions could be taken by a panel of three legally qualified judges, I would like to hear from you the legal basis of this decision.

Like for Art 7(2) UPCA and Annex II, the clear wording of Art 9(1) UPCA, “Any panel of the Court of Appeal shall sit in a multinational composition of five judges. It shall sit in a composition of three legally qualified judges….. and two technically qualified judges, does not need any interpretation according to Art 31 and 32 VCLT.

It is therefore possible to query any decision of the Court of Appeal when it decides only with three leglly qualified judges.

X.1.4 Amendment of Art 7(2) UPCA by the Administrative Committee

The Administrative Committee of the UPC (ACUPC) decided under Art 87(2) UPCA the creation of a Local Section of the CD in Milan, as well as the Amendment of Annex II.  

Art 87(2) UPCA has never been devised in order to care for the consequences of Brexit.

Art 87(2) provides that the ACUPC may amend the UPCA to bring it into line with an international treaty relating to patents or Union law.

The purpose of this provision is to avoid a new negotiation in order to amend the UPCA when all contracting states of the UPCA have signed and ratified an international treaty relating to patents. To my knowledge there is no recent international treaty relating to patents which fulfils the definition.

The same applies when all contracting states have adopted in their national legislation Union law, for instance a European Directive or any other regulation approved by the European Parliament. This could for instance be the case, when the Union has decided how to deal with SPCs, by establishing a European SPC ,or with FRAND problems, as it has been envisaged.

Contrary to the explanations given by the ACUPC, there exists no Union law under which Art 87(2) UPCA would allow an amendment.

The decision of the ACUPC does not fulfil any criteria set in Art 87(2) UPCA.

All Member States have might have agreed at the same meeting of the Preparatory Committee on 10.09.2020, that the creation of a new section should be discussed and dealt with as soon as possible once the UPC Agreement has entered into force. This “agreement” is by no means an agreement pursuant Art 31(3,a) VCLT.

It is certainly not the duty of the Preparatory Committee to amend the UPCA or to give an interpretation outside the requirements of Art 31(3,a) VCLT.  

The ACUPC claims that withdrawal of the UK from the EU and as a consequence from the UPCA, constitutes a change in Union law which allows the recourse to such simplified revision procedure.

This is to say the least quite daring and a rather oversimplified reason brought forward by the ACUPC, especially when at the same time Art 56 VCLT has been wilfully ignored by the same body.

As explained above, it is anything but certain that the UK has left the UPCA which does not contain any exit clause. This latter point has been carefully ignored by the ACUPC.

It is not sure that such a revision would survive a constitutional complaint in one of the UPCA contracting states. I am for instance thinking here of what is known in France under “Question Prioritaire de Constitutionalité” (QPC), or Preliminary Question of Constitutionality.

XI. Art 6(1) ECHR

In view of the amendments of the UPCA and of Annex II, it is legitimate to ask the question whether the Central Division of the UPC is a court according to Art 6(1) ECHR.

The same applies when the Court of Appeal decides, in blatant contradiction with Art 9(1) UPCA, that for reasons of efficiency, some decisions will be taken by a panel only comprising three legally qualified judges. I have never seen that efficiency prevails over the rule of law.

XII. General conclusion

For a start, Art 25(2) VCLT is not applicable to the Brexit! Other clauses of the VCLT, which should have been applied, have been willingly ignored. The PAP-Protocol is limbo as is the whole UPCA with its amended Art 7(2).

Your theory about the anti-blocking effect of Art 89(1) UPCA can only be greeted by a wry smile.

If you consider that the VCLT applies, then it should apply in full and not just with some aspects you consider convenient for your cause.

As explained above, it is not even sure that the U’K has properly left the UPCA.

There are reasonable doubts that the Central Division of the UPC and some decisions of the Court of Appeal are in accordance with Art 6(1) ECHR.

 All your argumentation fails to convince, or it will only convince those who do not need to be convinced.

As you directly and unambiguously explained in your interview to Kluwer Patent blog, any change of Art. 7(2) UPCA and Annex II should have been subject to ratification by all contracting member states. With the delays due to the belated ratification of Germany, this should have been possible.

That all the proponents of the UPC wanted to avoid this, is easily explained by the fear that the negotiations on a new version of Art 7(2) UPCA and Annex II would be rather difficult. This was indeed the case with the actual “amendment” of Art 7(2) UPCA. It was also not sure that it would at all be ratified, as other amendments might have been thought by other contracting states, in other words Pandora’s box would have been opened.

The way chosen to push through the provisional application of the UPCA and the amendment of Art 7(2) UPCA is a heavy burden, not to say a Damocles sword, hanging over the UPC.

To sum it up, and contrary to your allegations, I can only agree with the statements of Professors Nicolas Binctin Craig A. Nard.