Judgment day II: Could national judges harmonise international patent law?
Judges in national courts face the challenge of how to integrate UPC case law with their own. Mechanisms already exist by which they could do so, and there are compelling reasons for these to be used to harmonise international patent law

Our previous Judgement day[1] article asked whether (and how) UPC judges could harmonise international patent law through the influence of their decisions on national courts. Accordingly, it is reasonable to ask whether national judges will adopt UPC judges’ decisions if harmonisation is to occur. This new question is considered below in two parts: first, by reviewing what mechanisms might be used to integrate UPC case law into national law; and second, by asking how judges in national courts might make use of those mechanisms in practice.


How would national courts adopt UPC case law?

If judges of national courts are to adopt UPC case law, they require a judicial mechanism by which they can do so. Such mechanisms are already in place in a number of jurisdictions, for example in the Courts of England & Wales, as debated in a recent AIPPI discussion event with Mr Justice Meade[2].

England & Wales have a common law legal system, which (for our purposes) comprises three Courts[3]. This system operates a doctrine of precedent in which decisions of the Court of Appeal are binding on the Court of Appeal and High Court; while (superseding the Court of Appeal) decisions of the Supreme Court are binding on the Court of Appeal and High Court. Thus, only the Supreme Court can go against its prior decisions and set new precedent. For UPC decisions to be incorporated into case law, cases would need to be litigated to the very last instance of the court system.

However, there are exceptions to the doctrine of precedent that allows the Court of Appeal to also deviate from precedent in further ways. Where international patent law is concerned, a key case is Actavis v Merck[4], in which the Court of Appeal identified a limited exception to the doctrine of precedent, declaring itself[5]:

“[…] free but not bound to depart from the ratio decidendi of its own earlier decision if it is satisfied that the EPO Boards of Appeal have formed a settled view of European Patent law which is inconsistent with that earlier decision. Generally this court will follow such a settled view”.

It is difficult to predict whether the UPC case law would easily fall within the Actavis v Merck exception (which explicitly mentions the EPO Boards of Appeal), or whether such an exception would be created specifically for the UPC. After all, the UK is a contracting state of the EPC, but not of the UPC. Nevertheless, this example shows that the England & Wales Courts already have mechanisms in place by which UPC decisions could be adopted: either through the Supreme Court, or through an exception of the kind devised in Actavis v Merck.

Similar mechanisms exist in jurisdictions that are members of both the EPC and UPCA. For instance, Germany’s practice regarding EPO Board of Appeal decisions was codified in the “Walzenformgebungsmaschine” decision[6]:

“The German courts are required to consider decisions rendered by organs of the European Patent Office and courts in other EPC contracting states and pertaining to a largely similar issue and, where appropriate, address the reasons leading to a diverging result in the earlier decision. Insofar as points of law are concerned, this also applies, for instance, to the question of whether the subject-matter of a property right was obvious in the light of prior art”.

Some jurisdictions do not have an explicit requirement to consider decisions issued by courts such as the EPO. This is the case in the Netherlands, where the court has no obligation to consider foreign decisions, even if the matter concerns the same parties, more or less the same facts, and the same European patent[7]. However, the UPC may refer questions of law to the CJEU per Article 21 UPCA, and decisions taken by the CJEU will become binding on all UPC member states:

As a court common to the Contracting Member States and as part of their judicial system, the [UPC] shall cooperate with the Court of Justice of the European Union to ensure the correct application and uniform interpretation of Union law, as any national court, in accordance with Article 267 TFEU in particular. Decisions of the Court of Justice of the European Union shall be binding on the [UPC]”.

Thus, multiple mechanisms exist by which national courts may assess and incorporate the decisions of the UPC – including examples derived from national case law, and international mechanisms that form part of the UPCA itself.


Will judges in national courts adopt UPC case law?

Having mechanisms by which UPC case law could be adopted in national courts is only half the battle. The question remains how and when judges in national courts might use these mechanisms to adopt UPC case law.

On the one hand, it is easy to see why national courts might be keen to conform to the UPC’s case law, particularly where UPC contracting member states are concerned. The UPC judges are part-time, and so it is entirely possible that those part-time judges may bring their learnings from the UPC back to national cases, leading to national  adoption of UPC practices. This idea was reinforced by Hon. Dr Klaus Grabinski (President of the UPC Court of Appeal) in an interview with IAM[8], in which Grabinski explained that the UPC aims to consider the case law already developed by member states and the EPO. Grabinski further explained that the UPC Court of Appeal will ensure common application of the law by all first-instances judges. The judges have indicated that the multiple trainings they had had were also necessary to achieve that goal and should continue after the court opens its doors.

Although this feedback mechanism concerns part-time EU national judges sitting in the UPC system in the short-to-medium term, it’s conceivable that judges working outside of, but in parallel with, the UPC system (such as UK judges) will be driven to assess and adopt the judicial practices of the UPC. For example, it has been suggested that it is desirable for different national courts to treat cases from the same patent family, and with the same facts, in a comparable manner – even when courts have no explicit obligation to do so. This gives litigants legal certainty, and contributes towards comity – the mutual recognition of judicial acts between national courts. In this way, the UPC would serve as a commodore[9] for its member states, influencing the national laws towards harmonisation.

However, much as is the case for UPC judges, national judges may be unwilling or unable to adopt UPC case law. It may be, for example, that, in the longer term, UPC decisions take a position contrary to the EPO’s case law on patent validity[10]. For instance, the UPC may uphold a patent as valid, only for it to be struck down as invalid in subsequent EPO opposition or appeal proceedings. This outcome would mean that national courts may need choose between EPO and UPC case law (at least in the short-term), and national courts may already have judicial structures that favour the EPO (such as the Actavis v Merck exception in the England & Wales Courts). This situation may be self-resolving because the EPC (which the EPO Boards of Appeal interpret) is a source of law for the UPC[11]. Nevertheless, the situation has potential for confusion at national level, especially given the potentially large time gap between UPC decisions and EPO appeal decisions.

Even if national courts do endeavour to adopt UPC case law, it remains possible that the interpretation of UPC case law will differ by national court. The EPO already should serve as a harmonising influence on national courts, and while it certainly has a beneficial effect, in some instances there is disagreement on the application of EPO law at national level. For example, the EPO assesses obviousness according to a test termed the ‘problem-solution’ approach[12], in which the claimed invention is used to identify a closest prior art document, from which an objective technical problem is derived. The England & Wales Courts use an approach with different steps, termed the Pozzoli test[13], which begins by identifying the person skilled in the art and the common general knowledge, followed by assessment of the prior art in light of the inventive concept of the patent. Although quite different procedurally, the two approaches are considered to reach the same conclusion, such that the England & Wales Courts and the EPO are in-step. Even so, different national courts have come to different conclusions on claim interpretation and the assessment of inventive step[14].

Of course, adoption of UPC case law by national courts relies on the UPC developing its own settled case law, for which there are manifold opportunities and challenges as set out previously1.

Ships steered right, or ships in the night?

While the provision of a “commodore” in the form of the UPC is set to steer the contracting member states into a uniform convoy of ships, it remains possible that the member states will adopt UPC case law at different rates and in different ways. In one scenario, the member states may agree on their interpretation of UPC case law only infrequently, but otherwise remain distant from one another – the proverbial “ships in the night”.

However, reasons for optimism remain, much as for the UPC itself. National judges already collaborate extensively on matters of law and procedure, and there is a strong will to ensure predictability for litigants across the courts of Europe. The UPC therefore should only strengthen this will and provide a further vehicle for harmonisation of European patent law.


[1]Judgment day: could UPC judges harmonise international patent law?”, 29th September 2022, https://www.carpmaels.com/judgment-day-could-upc-judges-harmonise-international-patent-law/.

[2]The future of UPC decisions in UK patent litigation”, AIPPI UK, 13th March 2023.

[3] The three courts are the first-instance High Court; the second-instance Court of Appeal; and the final-instance Supreme Court.

[4] Actavis UK Ltd v Merck & Co Inc [2008] EWCA Civ 444, https://www.bailii.org/ew/cases/EWCA/Civ/2008/444.html.

[5] Actavis v Merck, ¶107.

[6] Decision of the German Federal Court of Justice dated 15th April 2010 (Xa ZB 10/09), “Walzenformgebungsmaschine” (Roll-forming machine), as reported in EPO OJ 11 2010.

[7]Patent Litigation in the Netherlands: Overview”, Verschuur and Boelens, Practical Law Country Q&A 7-621-9211, 1st June 2022.

[8]No such thing as ‘wait and see’ approach, warns UPC’s top judge as sunrise period begins”, Houldsworth interviewing Grabinski, 1st March 2023.

[9] Richard Arnold, Harmonization of European Patent Law, Journal of Intellectual Property Law & Practice, Volume 14, Issue 9, September 2019, Pages 657–658.

[10] Note that the EPO case law is expected to be followed by the UPC at least in the first few years according to UPC appointed judges.

[11] Article 24(1)(c) UPCA.

[12] EPO Guidelines for Examination, G-VII, 5.

[13] Pozzoli Spa v BDMO SA & Anor [2007] EWCA Civ 588 (22 June 2007), https://www.bailii.org/ew/cases/EWCA/Civ/2007/588.html.

[14] E.g. Pozzoli v BDMO, ¶73-74, referring to a different claim interpretation made in the Landsgericht.