Encyclopedia of Private International Law
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Encyclopedia of Private International Law

Edited by Jürgen Basedow, Giesela Rühl, Franco Ferrari and Pedro de Miguel Asensio

The role and character of Private International Law has changed tremendously over the past decades. With the steady increase of global and regional inter-connectedness the practical significance of the discipline has grown. Equally, so has the number of legislative activities on the national, international and, most importantly, the European level. With a world-class editor team, 500 content items and authorship from almost 200 of the world’s foremost scholars, the Encyclopedia of Private International Law is the definitive reference work in the field. 57 different countries are represented by authors who shed light on the current state of Private International Law around the globe, providing unique insights into the discipline and how it is affected by globalization and increased regional integration. The Encyclopedia consists of three inter-linked pillars, enhanced by sophisticated search and cross-linking functionality. The first pillar consists of A-Z coverage of the scope and substance of Private International Law in the form of 247 entries. The second pillar comprises detailed overviews of the Private International Law regimes of 80 countries. The third pillar presents valuable, and often unique, English language translations of the national codifications and Private International Law provisions of those countries. This invaluable combination represents a powerful research tool and an indispensable reference resource.
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Chapter U.6: Unitary intellectual property rights and private international law

Christian Heinze

I. Concept

1. EU unitary intellectual property rights

The late 20th century saw the rise of regional organizations of economic and political integration, most prominently the European Union, driven, not exclusively but strongly, by the desire to integrate national markets into a larger economic area. In this process of integration towards a single market, certain national rights, in particular intellectual property rights, were perceived as a ‘barrier of territoriality’, which could neither be overcome under the guarantee of the free movement of goods and services of the EU Treaties (see art 36 TFEU (The Treaty on the Functioning of the European Union (consolidated version), [2012] OJ C 326/47)) nor ‘be removed by approximation of laws’ (Recital (4) Community Trade Mark Regulation (Council Regulation (EC) No 207/2009 of 26 February on the Community trade mark, [2009] OJ L 78/1); Jürgen Basedow ‘The Law of Open Societies: Private Ordering and Public Regulation of International Relations’ (2012) 360 Rec. des Cours 11, 225 para 283: ‘territorial confinement of intellectual property rights as such is considered as flowing from the territorial limitation of sovereignty’). Even under fully harmonized national intellectual property laws, it is possible that a certain invention or sign is protected only in some Member States of the integrated market (eg due to registration only in certain states). The EU sought to solve this problem by creation of rights with a unitary character ‘to which uniform protection is given and which produce their effect throughout the entire area of the Community’ (Recital (3) Community Trade Mark Regulation). These rights can be obtained ‘by means of one procedural system’ and ‘shall have equal effect throughout the Community’, ie they ‘shall not be registered, transferred or surrendered or be the subject of a decision revoking the rights of the proprietor or declaring it invalid, p. 1797nor shall its use be prohibited, save in respect of the whole Community’ (art 1(2), Recital (3) Community Trade Mark Regulation; see also art 2 Community Plant Regulation (Council Regulation (EC) No 2100/94 of 27 July 1994 on Community plant variety rights [1994] OJ L 227/1); art 1(3), Recitals (4) and (5) Community Design Regulation (Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs, [2002] OJ L 3/1) and art 3(2), Recital (7) Unitary Patent Regulation (Regulation (EU) No 1257/2012 of the European Parliament and of the Council of 17 December 2012 implementing enhanced cooperation in the area of the creation of unitary patent protection, [2012] OJ L 361/1)). The first of these unitary rights were the Community Trade Mark (created under Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark, [1994] OJ L 11/1, now Community Trade Mark Regulation) and the Community Plant Variety Right (created under Community Plant Regulation). More recent unitary rights are the Community Design (created under Community Design Regulation), and most recently the Unitary Patent (created under the Unitary Patent Regulation, see also Regulation 1260/2012 (Council Regulation (EU) No 1260/2012 of 17 December 2012 implementing enhanced cooperation in the area of the creation of unitary patent protection with regard to the applicable translation arrangements, [2012] OJ L 361/89)). Depending on the understanding of geographical indications, one may also include in this list designations of origin and geographical indications registered on the EU level (see Recital (24) and art 13 Regulation 1151/2012 (Regulation (EU) No 1151/2012 of the European Parliament and of the Council of 21 November 2012 on quality schemes for agricultural products and foodstuffs, [2012] OJ L 343/1)). Early predecessors to the EU unitary rights regimes were the Convention Benelux en matière de marques de produits du 19 mars 1962 and the Convention Benelux en matière de dessins ou modèles du 25 octobre 1966, which have been superseded by the Convention Benelux en matière de propriété intellectuelle (Marques et dessins ou modèles) or Benelux-Verdrag inzake de intellectuele eigendom (merken en tekeningen of modellen) of 2006 (available at <www.wipo.int>). These Conventions create a single and indivisible trade mark for the entire territory of →Belgium, the →Netherlands and →Luxembourg (see art 2.25(3) and (4), art 2.31(2)(b), art 2.9(1), art 3.21(4) and art 3.25(2)(b) Convention Benelux en matière de propriété intellectuelle (Marques et dessins ou modèles)).

2. Characteristics of unitary rights

On the basis of the existing unitary rights regimes in the EU, it is possible to identify essentially two common traits which seem to be characteristic of a unitary right (for a definition see also Colin Birss, ‘Unitary Rights and Judicial Respect in the EU: “Bringing Cool Back”’ (2013) 3 Queen Mary Journal of Intellectual Property Law 195, 196: ‘one piece of property has supranational effect across part or all of the territory of Europe’). First, for registered rights it is essential that the right be obtained through a single granting procedure administered by a single agency (see arts 25 et seq Community Trade Mark Regulation; arts 35 et seq Community Design Regulation: Office for Harmonisation in the Internal Market; arts 49 et seq Community Plant Regulation: Community Plant Variety Office; art 9 and Recitals (5), (7) Unitary Patent Regulation: European Patent Office (EPO); for gaps in the administrative procedure law see the reference to ‘principles of procedural law generally recognised in the Member States’ in art 83 Community Trade Mark Regulation; art 68 Community Design Regulation; art 81(1) Community Plant Regulation). However, as the example of the simple European patent granted by the European Patent Office shows, this alone will not be sufficient to justify talk of a unitary right.

As a second element, it is necessary that the right has ‘equal effect’ throughout the entire territory of the supranational organization in question. Equal effect, in turn, has two facets. One element of equal effect concerns the existence of the right and its use as a piece of property, so that a unitary right can only be registered, transferred, surrendered, revoked, declared invalid or its use be prohibited for the entire territory of the supranational organization (art 1(2) Community Trade Mark Regulation; ECJ Case C-235/09 DHL Express France v Chronopost [2009] ECR I-2801, paras 39–41; art 1(3) Community Design Regulation; art 2 Community Plant Regulation; art 3(2) Unitary Patent Regulation). It is thus not possible to split the right by transferring merely the right for a specific sub-division (eg one country) of the supranational organization. The unitary character extends also to proprietary aspects of such rights. A unitary intellectual property right is subject in its entirety and for the whole EU area p. 1798to the same law, be it the proprietary provisions of the Regulations or a national law as determined by a conflict rule (art 16(1) Community Trade Mark Regulation: ‘[u]‌nless Articles 17 to 24 provide otherwise, a Community trade mark as an object of property shall be dealt with in its entirety and for the whole area of the Community, as a national trade mark . . .’; see also art 27(1) Community Design Regulation and art 22(1) Community Plant Regulation; art 7(1) Unitary Patent Regulation). As a consequence of the unitary character of the right, decisions regarding validity and infringement must in principle have effect in the entire area of the supranational organization in question (for certain exceptions as concerns the uniform scope of protection see next paragraph), and contradictory judgments in actions should be avoided which involve the same acts and the same parties and which are brought on the basis of a Community trade mark and parallel national trade marks (Recitals (15) and (16) Community Trade Mark Regulation). However, equal effect as concerns the existence of the right does not extend to licences which – as for national rights – may still be granted for only part of the territory of protection (art 22(1) Community Trade Mark Regulation; art 32(1) Community Design Regulation; art 27(1) Community Plant Regulation; art 3(2) Unitary Patent Regulation).

The second facet of unitary effect concerns its scope of protection. In general, the unitary right must grant uniform protection, ie the scope of protection, the prohibited acts and the limitations and exceptions must, in principle, be the same in the entire territory where the unitary right is in force (arts 9–13, 14(1) Community Trade Mark Regulation: ‘effects of Community trade marks shall be governed solely by the provisions of this Regulation’; arts 19–23 Community Design Regulation; arts 13–18 Community Plant Regulation). For political reasons, namely due to concerns about an involvement of the →Court of Justice of the European Union (CJEU) in the interpretation of substantive patent law, a different regime was adopted for the European patent with unitary effect. The extent of protection of such a right, in particular the interpretation of patent claims, will, as it is a patent granted under the European Patent Convention (Convention on the Grant of European Patents (European Patent Convention) of 5 October 1973 as revised by the Act revising Article 63 EPC of 17 December 1991 and the Act revising the EPC of 29 November 2000) be determined by art 69 European Patent Convention. For the acts against which the patent provides protection and its limitations, art 5(2) Unitary Patent Regulation states that these ‘shall be uniform in all participating Member States in which the patent has unitary effect’. However, the provisions on scope and limitations of the European patent with unitary effect, except for exhaustion (art 6 Unitary Patent Regulation), are not included in the Unitary Patent Regulation itself. Rather, according to art 5(3) Unitary Patent Regulation,

[t]‌he acts against which the patent provides protection . . . and the applicable limitations shall be those defined by the law applied to European patents with unitary effect in the participating Member State whose national law is applicable to the European patent with unitary effect as an object of property in accordance with Article 7.

Thus, art 5(3) and art 7 Unitary Patent Regulation refer to the national law of the participating Member States, which is harmonized by an international convention, the UPC Agreement (Agreement of 19 February 2013 on a Unified Patent Court, [2013] OJ C 175/1), in particular its arts 25–9 on the rights conferred by a patent and its limitations. All in all, it may thus be summarized that the unitary effect in case of the EU patent is achieved by reference not to EU law, but to national law as harmonized by two international conventions (European Patent Convention, UPC Agreement) and interpreted by a court common to all participating Member States (the Unified Patent Court established under the UPC Agreement).

3. Limits of unitary effect

The principle of uniform protection, however, is subject to certain limits. An important institutional limitation stems from the fact that, except for the new European patent with unitary effect, for which a new Unified Patent Court has been created, all EU unitary rights have to be litigated and enforced in national courts. Even if the CJEU may guide on the uniform interpretation of the respective EU texts under art 267 TFEU, the risk of divergent interpretation and application is necessarily higher than in an integrated court system of a single state. Moreover, on the p. 1799level of substantive law, uniform protection covers only actions based on the intellectual property right itself, whereas parallel actions based on national law of civil liability and unfair competition (→Competition, unfair) are still governed by national law and thus outside the uniform effect (see art 14(2) Community Trade Mark Regulation; art 96(1) Community Design Regulation). Also, particularly in trade mark law, uniform protection of the unitary right ‘may not extend beyond what that right allows its proprietor to do in order to protect his trade mark, that is, to prohibit only uses which are liable to affect the functions of the trade mark’ (ECJ Case C-235/09 DHL Express France v Chronopost [2009] ECR I-2801, para 47). As a consequence, if a court hearing an infringement action finds that the acts of infringement are limited to a single Member State, for example because a likelihood of confusion arises for linguistic reasons only in one Member State or because the plaintiff has restricted the territorial scope of its action, then the court ‘must limit the territorial scope of the prohibition which it issues’ (ECJ Case C-235/09 DHL Express France v Chronopost [2009] ECR I-2801, para 48). Finally, unitary effect of a Community right does not imply that the requirements for protection and preservation of the right are fulfilled in all parts of the entire Community. For example, it is sufficient to establish a trade mark with a ‘reputation in the Community’ in the sense of art 9(1)(c) Community Trade Mark Regulation (protection of well-known trade marks) if the trade mark ‘has a reputation in a substantial part of the territory of the Community’ which has been held to be fulfilled if a trade mark has reputation throughout the territory of one Member State (→Austria) (ECJ C-301/07 Pago International GmbH v Tirolmilch registrierte Genossenschaft mbH [2009] ECR I-9429, paras 27–9; see also first question in Case C-125/14 Iron & Smith Kft v Unilever NV, ECLI:EU:C:2015:195 on the question whether the reputation has to be enjoyed in the state in which the protection of the mark is relied upon). Similarly, if a trade mark is descriptive and lacks distinctive character in one linguistic area, the trade mark may acquire distinctive character through use if in that linguistic area ‘the relevant class of persons, or at least a significant proportion thereof, identifies the product or service in question as originating from a particular undertaking because of the trade mark’ (ECJ C-108/05 Bovemij Verzekeringen NV v Benelux-Merkenbureau [2006] ECR I-7605, para 27; see also ECJ C-98/11 P Chocoladefabriken Lindt & Sprüngli AG v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), ECLI:EU:C:2012:307, para 62). On the other hand, the Court has held ‘that the territorial borders of the Member States should be disregarded in the assessment of whether a trade mark has been put to’ genuine use in the Community ‘within the meaning of’ art 15(1) Community Trade Mark Regulation (ECJ C-149/11 Leno Merken BV v Hagelkruis Beheer BV, ECLI:EU:C:2012:816, para 57). This means that genuine use in only one Member State is not necessarily sufficient for genuine use of the Community Trade Mark, but rather the Community mark must be ‘used in accordance with its essential function and for the purpose of maintaining or creating market share within the Community for the goods or services covered by it’, which is for the national court to assess, ‘taking account of all the relevant facts and circumstances, including the characteristics of the market concerned, the nature of the goods or services protected by the trade mark and the territorial extent and the scale of the use as well as its frequency and regularity’ (ECJ C-149/11 Leno Merken BV v Hagelkruis Beheer BV, ECLI:EU:C:2012:816, para 58).

Lastly, uniform protection does not imply full uniformity of →remedies and procedure in infringement proceedings. Rather, the unitary rights regulations refer for most aspects of remedies (arts 101(2), 102(2) Community Trade Mark Regulation; arts 89(1)(d), 88(2) Community Design Regulation; art 97(1), (2) Community Plant Regulation) and procedure (art 101(3) Community Trade Mark Regulation; art 88(3) Community Design Regulation; art 103 Community Plant Regulation) to the law of the Member States including their rules of private international law. A different stance is taken for the unitary patent where remedies and procedure of the Unified Patent Court are largely governed by the provisions of the UPC Agreement (see arts 59–72 UPC Agreement). As a final point, it may be mentioned that all aspects which go beyond the intellectual property right as such are outside the scope of unification, in particular →contractual obligations between parties of licensing or transfer contracts.

4. p. 1800Unitary rights outside the EU

Outside Europe, regional integration has progressed at a slower pace. Nevertheless, for some regional organizations it is debatable whether they have created rights which go beyond mere harmonization of national laws and may already be considered as unitary rights. The African Organization for Intellectual Property (OAPI), for example, is sometimes said to have established a ‘unitary system for the protection of intellectual property rights effective in all 17 OAPI member states’ which is based on the Treaty of Bangui (Treaty of Bangui of 2 March 1977 Establishing the African Intellectual Property Organization (OAPI), available at <www.wipo.int>), in particular on the annexes to this Treaty (Marius Schneider and Vanessa Ferguson, ‘Cross-border Enforcement of Intellectual Property Rights: Africa’ in Paul Torremans (ed), Research Handbook on Cross-border Enforcement of Intellectual Property (Edward Elgar 2014) 329, 347). In particular, the OAPI serves as a national industrial property service for all participating states (art 2(2) Treaty of Bangui), intellectual property rights such as patents, utility models etc ‘shall produce the [uniform] effects provided for in this Agreement and its Annexes’ (art 8(4) Treaty of Bangui) and ‘[f]‌inal legal decisions relating to the validity of titles and rendered in one Member State under the provisions of Annexes I to X of this Agreement shall be binding on all other member States’ (art 18 Treaty of Bangui).

The finding of a truly unitary right, however, stands in a certain tension with art 3(1) of the Treaty of Bangui, which suggests that the Treaty adheres to the traditional concept of harmonized but independent national rights (‘Rights relating to the fields of intellectual property, as provided for in the Annexes to this Agreement, shall be independent national rights subject to the legislation of each of the member States in which they have effect’, see also [1982] IIC 685, 686: ‘A patent grant by the Organization creates a bundle of national rights’; Philippe Baechtold, Tomoko Miyamoto and Thomas Henninger, ‘International Patent Law: Principles, Major Instruments and Institutional Aspects’ in Daniel Gervais (ed), International Intellectual Property: A Handbook of Contemporary Research (Edward Elgar 2015) 37, 62: ‘infringement of intellectual property rights is a matter dealt with by the courts of each member state’). Therefore, this instrument would not seem to create a unitary right comparable to the rights created by EU regulations, but rather a mere bundle of harmonized uniform but parallel national rights (see also Preamble (1) Treaty of Bangui: ‘[c]‌onsidering the advantages of establishing a uniform system for the protection of literary and artistic property’).

Another example sometimes mentioned as a non-EU unitary right is a patent granted under the Eurasian Patent Convention of 9 September 1994 (available at <www.wipo.int>). In the light of art 13(2) Eurasian Patent Convention (‘Each Contracting State shall, in the case of infringement of a Eurasian patent, provide for the same civil or other liability as in the case of a national patent’), however, it seems that the Eurasian patent falls short of the characteristics of a truly unitary right (see also art 13(1) Eurasian Patent Convention: ‘[a]‌ny dispute arising from the validity, in a given Contracting State, or the infringement, in a given Contracting State, of a Eurasian patent shall be resolved by the national courts or other competent authorities of that State on the basis of this Convention and the Patent Regulations. The decision shall have effect only in the territory of the Contracting State’).

5. Neighbouring concepts: harmonization of intellectual property law, federal intellectual property law, unitary rights outside intellectual property

While, subject to certain exceptions, unitary intellectual property rights create a single right for the entire supranational community, the mere harmonization of intellectual property rights by international conventions or EU directives still leaves the bundle of national rights of the right holder intact (Graeme Dinwoodie ‘art 2:605’ in European Max Planck Group on Conflict of Laws in Intellectual Property (ed), Conflict of Laws in Intellectual Property: The CLIP Principles and Commentary (OUP 2013) para 2:605.C13). Even if the consequence of harmonization may be a far-reaching parallelism of the national intellectual property laws, the rights still derive from several different national laws and not from a single unitary right. Unitary rights are therefore more akin to intellectual property rights created by federal legislation in a state which comprises several territorial units, each of which at least partly has its own rules of law in respect of intellectual property or neighbouring areas (eg p. 1801general tort or contract law, procedure, unfair competition etc).

Finally, the concept of a unitary right is not only conceivable in the field of intellectual property. For instance, a federal or supranational legislature may also identify a need for a statute of organization for →companies on the federal or supranational level. In comparing unitary intellectual property rights and other forms of ‘unitary’ supranational entities such as companies, one may identify certain common conceptual questions such as the competence of the federal or supranational legislator to create a ‘unitary right’, the need for such a supranational entity, the definition of its scope of application including whether a cross-border element is required, the interplay of supranational and national law, the relationship to private international law, the filling of gaps in the unitary rights instrument or the general →regulatory competition in the vertical relationship (for these questions, from the perspective of EU optional instruments, see Jürgen Basedow ‘The Law of Open Societies: Private Ordering and Public Regulation of International Relations’ (2012) 360 Rec. des Cours 11, 220 para 227; Holger Fleischer, ‘Optionales europäisches Privatrecht (“28. Modell”)’ (2012) 76 RabelsZ 235, 242–51). As the private international law aspects depend on the drafting of the instrument in question, the following entry will focus only on unitary intellectual property rights.

II. Unitary rights and private international law

Even if all EU unitary intellectual property rights claim to be of unitary character, none of the instruments provides a comprehensive set of rules for all questions of substantive and procedural law which may arise in dealing with such a right. Therefore, the instruments cannot dispense with provisions on →choice of law and on jurisdiction (for the latter, see →Unitary intellectual property rights and jurisdiction).

1. Community trade mark, Community design, Community plant right

For the choice-of-law rules of the Community Trade Mark Regulation, the Community Design Regulation and the Community Plant Regulation, the law applicable for filling gaps in the respective Community unitary rights regulations (see a) below) must be distinguished from the applicability of the unitary rights regulation itself (see b) below).

a) The law applicable for filling gaps in the Community unitary rights regulations

The choice-of-law rules of the EU unitary rights regulations – which take precedence over the general provisions of the →Rome II Regulation (Regulation (EC) No 864/2007 of the European Parliament and of the Council of 11 July 2007 on the law applicable to non-contractual obligations (Rome II), [2007] OJ L 199/40) (art 27 Rome II Regulation; German Federal Court of Justice (BGH), 22 April 2010 [2010] GRURInt. 1072, paras 51–61, Verlängerte Limousinen; 28 September 2011 [2012] GRUR 512, paras 55–8, Kinderwagen) – presuppose that the respective Community regulation is applicable and answer only questions of applicable law which concern issues which are not covered by the regulation. In such a situation of a gap within the applicable regulation, the conflict rules of the Community Trade Mark Regulation and the Community Design Regulation refer (i) for rules of procedure (and enforcement) to the →lex fori of the respective (Community Trade Mark/Design) court (arts 101(3), 102(1), 2nd sentence Community Trade Mark Regulation; arts 88(3), 89(2) Community Design Regulation), (ii) for sanctions for infringement which are not harmonized by the regulations (for harmonized sanctions see art 102(1) Community Trade Mark Regulation; art 89(1)(a)–(c) Community Design Regulation) ‘to the law of the Member State in which the acts of infringement or threatened infringement were committed, including the private international law’ (art 102(2) Community Trade Mark Regulation; art 89(1)(d) Community Design Regulation) and (iii) for all other matters not covered by the regulation (eg defences such as →prescription, ECJ C-479/12 H Gautzsch Großhandel GmbH & Co KG v Münchener Boulevard Möbel Joseph Duna GmbH, ECLI:EU:C:2014:75, para 49) to the national law of the Community Trade Mark (Design) court, including its private international law (art 101(2) Community Trade Mark Regulation; art 88(2) and Recital (22) Community Design Regulation). Surprisingly, the Court of Justice (ECJ Case C-479/12 H Gautzsch Großhandel GmbH & Co KG v Münchener Boulevard Möbel Joseph Duna GmbH, ECLI:EU:C:2014:75, para 54) seems to regard a claim for damages not as a sanction in the sense of art 89(1)(d) Community p. 1802Design Regulation, but rather as part of ‘all other matters’ in art 88(2) Community Design Regulation. Ultimately this seems to make no difference as the conflict rules of the Member States for all non-contractual obligations are now harmonized by art 8(2) Rome II Regulation, thus making it less relevant whether the unitary rights regulation refers to the conflict rules of the Member State in which the acts of infringement were committed (as art 102(2) Community Trade Mark Regulation; art 89(1)(d) Community Design Regulation) or to the conflict rules of the Member State in which the Community Trade Mark (Design) court is situated (as art 101(3) Community Trade Mark Regulation; art 88(2) Community Design Regulation). Less differentiated are the conflict rules of the Community Plant Variety Regulation, which refer to the lex fori for procedure (art 103 Community Plant Regulation) and, for certain remedies to the ‘national law, including their private international law’ of the competent courts (art 97(2), (3) Community Plant Regulation), a solution which should be applied for all gaps in the Community Plant Regulation.

All references to the applicable national law are subject to the overriding principles of equivalence and effectiveness, as the application of national rules may not render the enforcement of a Community right ineffective (ECJ Case C-479/12 H Gautzsch Großhandel GmbH & Co KG v Münchener Boulevard Möbel Joseph Duna GmbH, ECLI:EU:C:2014:75, para 49). Following adoption of the Rome II Regulation, the reference to the Member States’ private international law (in particular for sanctions in art 102(2) Community Trade Mark Regulation and art 88(3) Community Design Regulation, but also for other matters in the sense of art 101(3) Community Trade Mark Regulation, art 88(2) Community Design Regulation such as prescription, see art 15(h) Rome II Regulation) has been replaced by the uniform rule of art 8(2) Rome II Regulation, stating that ‘[i]‌n the case of a non-contractual obligation arising from an infringement of a unitary Community intellectual property right, the law applicable shall, for any question that is not governed by the relevant Community instrument, be the law of the country in which the act of infringement was committed’.

The reference to the law of the country in which the act of infringement was committed raises essentially two questions. First, it has to be decided whether ‘act of infringement’ in art 102(2) Community Trade Mark Regulation is to be understood in a natural or legal sense. A ‘natural’ understanding of the ‘act’ would point to the place where the alleged infringer has in fact acted (Jürgen Basedow, ‘Foundations of Private International Law in Intellectual Property’ in Jürgen Basedow, Toshiyuki Kono and Axel Metzger (eds), Intellectual Property in the Global Arena (Mohr Siebeck 2010) 3, 26; Josef Drexl, ‘Internationales Immaterialgüterrecht’ in Franz Jürgen Säcker, Roland Rixecker and Hartmut Oetker (eds), Münchener Kommentar zum Bürgerlichen Gesetzbuch, vol 11 (6th edn, CH Beck 2015) para 140), which may also be in a third state outside the EU. A ‘legal’ understanding, on the other hand, would understand ‘act of infringement’ in art 8(2) Rome II in the same sense as the infringing acts are defined in the substantive provisions of art 9 Community Trade Mark Regulation, art 19 Community Design Regulation and art 13 Community Plant Regulation, ie in the same sense in which the acts which may be prohibited by the owner of a trade mark (or design, or plant variety right) are defined. If for example a sign registered as a Community Trade Mark is used by a company resident in →Switzerland for Internet advertisement in →Germany directed to German customers, the natural understanding would localize the ‘act of infringement’ in Switzerland (from where the advertisement was in fact initiated), while the legal understanding would find an ‘act of infringement’ in the sense of art 102(2) Community Trade Mark Regulation only inside the EU territory, ie in the country to which the advertisement was targeted, that is Germany in the example (for this understanding, albeit in substantive trade mark law, ECJ Case C-324/09 L’Oréal v eBay [2011] ECR I-6011, paras 63–7). In order to avoid finding an ‘act of infringement’ in a non-EU Member State (and thus application of a third state’s sanctions to infringement of a Community trade mark, at least if art 8(2) Rome II Regulation is applied literally, for a teleological limitation of art 8(2) Rome II Regulation Josef Drexl ‘Internationales Immaterialgüterrecht’ in Franz Jürgen Säcker, Roland Rixecker and Hartmut Oetker (eds), Münchener Kommentar zum Bürgerlichen Gesetzbuch, vol 11 (6th edn, CH Beck 2015) para 140; see also the alternative proposal of the Hamburg Group for Private International Law, ‘Comments on the European Commission’s Draft Proposal for a Council p. 1803Regulation on the Law Applicable to Non-Contractual Obligations’ (2003) 67 RabelsZ 1, 21, referring to the ‘law of the Member State where the infringement affects the right’ instead of the place of the ‘act of infringement’) and also for reasons of systematic coherence, namely using the same criteria to localize the act of infringement in substantive trade mark law and in art 8(2) Rome II Regulation, it seems preferable to adopt the ‘legal’ understanding of ‘act of infringement’ in art 8(2) Rome II Regulation. On the other hand, the recent ECJ decision on the interpretation of ‘act of infringement’ in the parallel jurisdictional provision of art 97(5) Community Trade Mark Regulation (ECJ Case C-360/12 Coty Germany GmbH v First Note Perfumes NV, ECLI:EU:2014:1318, para 34) refers to ‘active conduct on the part of the person causing that infringement’, which tends more towards a natural understanding of the term. However, it should be borne in mind that if the term ‘act of infringement’ in art 8(2) Rome II Regulation is to be interpreted in the same way as ‘place of the event giving rise to the damage’ in art 7(2) Brussels I Regulation (recast) (Regulation (EU) No 1215/2012 of the European Parliament and of the Council of 12 December 2012 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters (recast), [2012] OJ L 351/1; →Brussels I (Convention and Regulation)), this will in most cases lead to the place of establishment of the alleged infringer where the decision about the activity leading to the infringement is made (see ECJ Case C-523/10 Wintersteiger v Products 4U, ECLI:EU:C:2012:220, paras 36–7). In other words, it will be the law of the alleged infringer’s place of establishment which will govern those sanctions not covered by the Community rights regulations.

Finally, if the ‘act of infringement’ is not to be concentrated at the infringer’s residence, the question arises which law applies if a Community unitary right has been infringed by several acts in different EU Member States (eg production, advertisement, sale), which from an economic point of view cause a single damage. In order to avoid a mosaic of several national laws being applicable due to the different acts of infringement in different countries, it has been proposed to apply the law of the defendant’s domicile (Axel Metzger, ‘Community IP Rights and Conflict of Laws: Community Trade Mark, Community Design, Community Patent – Applicable Law for Claims for Damages’ in Josef Drexl and Annette Kur (eds), Intellectual Property and Private International Law: Heading for the Future (Hart 2005) 215, 223), the law of closest connection (eg of the place from which the infringer’s actions were directed or where the decisions about distribution were made, see Higher Regional Court (OLG) of Hamburg, 27 January 2005 [2005] GRUR-RR 251, 255, The Home Depot, contra German Federal Court of Justice (BGH), 13 September 2007 [2008] GRUR 254, para 42, The Home Depot; Josef Drexl, ‘Internationales Immaterialgüterrecht’ in Franz Jürgen Säcker, Roland Rixecker and Hartmut Oetker (eds), Münchener Kommentar zum Bürgerlichen Gesetzbuch, vol 11 (6th edn, CH Beck 2015) para 143) or the law of the forum (de lege ferenda Marta Pertegás Sender, ‘Intellectual Property and Choice of Law Rules’ in Alberto Malatesta (ed), The Unification of Choice of Law Rules on Torts and other Non-Contractual Obligations in Europe (CEDAM 2006) 221, 246). While all these proposals are commendable, they are difficult to square with the words ‘act of infringement’ of art 8(2) Rome II (critical for the substitution of the wording of legislation by ‘judicial gloss’ Guy Tritton, Intellectual Property in Europe (4th edn, Butterworths 2014) Preface p xi). Therefore, a potential concentration on a single law should be achieved by focusing only on the last act of infringement directly causing the damage for which compensation is claimed, which will normally be the act of distribution (for injunctions, the problem is less relevant as art 102(1) Community Trade Mark Regulation and art 89(1) Community Design Regulation already provide EU unitary remedies).

b) Applicability of the unitary rights regulations themselves

Whereas the conflict rules of the unitary rights regulations cover the gap filling process in the absence of EU rules, they do not address the question under which circumstances the unitary rights regulations themselves are applicable. Article 101(1) Community Trade Mark Regulation and art 88(1) Community Design Regulation merely state that the ‘Community trade mark courts shall apply the provisions of this Regulation’, but do not define the geographic scope of application of these Regulations. As the ECJ has accepted that the territorial scope of prohibitions based on unitary Community rights must be limited to part of the territory of the EU if acts of infringement of a p. 1804Community Trade Mark are limited to this territory (ECJ Case C-235/09 DHL Express France v Chronopost [2011] ECR I-2801, para 48), and as an infringement of a European intellectual property right requires that the corresponding territory of protection is targeted or at least affected by the alleged infringing act (for trade marks ECJ Case C-324/09 L’Oréal v eBay [2011] ECR I-6011, para 65; for copyright ECJ Case C-5/11 Strafverfahren gegen Titus Alexander Donner ECLI:EU:C:2012:370, para 28; for database rights ECJ Case C-173/11 Football Dataco Ltd and Others v Sportradar GmbH and Sportradar AG ECLI:EU:C:2012:642, para 39; for the general acceptance of the principle of territoriality in EU law ECJ Case C-9/93 IHT Internationale Heiztechnik GmbH and Uwe Danzinger v Ideal-Standard GmbH and Wabco Standard GmbH [1994] ECR I-2789, para 22 (trade marks); ECJ Case C-192/04 Lagardère Active Broadcast v Société pour la perception de la rémunération équitable (SPRE) and Gesellschaft zur Verwertung von Leistungsschutzrechten mbH (GVL) [2005] ECR I-7199, para 46 (copyright)), consequently the silence of the unitary rights regulations as concerns their geographic scope of application vis-à-vis third states allows to resort to the general lex loci protectionis principle of art 8(1) Rome II Regulation (see also Recital (26) Rome II Regulation: ‘universally acknowledged principle of the lex loci protectionis’). Thus, the unitary rights regulations are applicable only if the claimant claims protection under an EU unitary right. If he does so, the court will have to apply the EU unitary rights regulations, and for gaps in these regulations have to resort to the conflict provisions of these regulations (for procedure art 101(3) Community Trade Mark Regulation, art 88(3) Community Design Regulation, art 103 Community Plant Regulation; for sanctions for infringement art 102(2) Community Trade Mark Regulation, art 89(1)(d) Community Design Regulation; for other matters art 101(2) Community Trade Mark Regulation, art 88(2) Community Design Regulation), which are, for sanctions for infringement, complemented by the reference to the law of the country in which the act of infringement was committed in art 8(2) Rome II Regulation (see a) above).

2. European patents

While patents granted on the basis of the European Patent Convention (Convention on the Grant of European Patents of 5 October 1973 as revised by the Act revising Article 63 EPC of 17 December 1991 and the Act revising the EPC of 29 November 2000) are at present largely equivalent to national patents (arts 2(2), 64(1), (3) European Patent Convention) and thus governed by art 8(1) Rome II Regulation, with only few specific provisions (see art 60(1), (2) European Patent Convention for ownership of employee inventions and art 74 European Patent Convention for patent applications as an object of property), the new ‘European Patent Package’ consisting of the UPC Agreement (Agreement of 19 February 2013 on a Unified Patent Court, [2013] OJ C 175/1), the Unitary Patent Regulation (Regulation (EU) No 1257/2012 of the European Parliament and of the Council of 17 December 2012 implementing enhanced cooperation in the area of the creation of unitary patent protection, [2012] OJ L 361/1) and the Translation Regulation (Council Regulation (EU) No 1260/2012 of 17 December 2012 implementing enhanced cooperation in the area of the creation of unitary patent protection with regard to the applicable translation arrangements, [2012] OJ L 361/89) will significantly change this situation. The UPC Agreement will apply to all European patents (ie patents granted under the provisions of the European Patent Convention, art 2(e) UPC Agreement, subject however to an opt-out in the transitional period of seven years, art 83(1), (3) UPC Agreement) and all European patents with unitary effect (ie patents granted under the provisions of the European Patent Convention which benefit from unitary effect by virtue of Unitary Patent Regulation, art 2(f) UPC Agreement) as well as corresponding supplementary protection certificates or patent applications (art 3 UPC Agreement). For European patents with unitary effect two additional EU regulations come into play, namely the Unitary Patent Regulation and the Translation Regulation, which define how a European patent with unitary effect may be obtained and which law is applicable to such a unitary right. The Patent Package is intended to complement the existing unified granting procedure under the European Patent Convention (Convention on the Grant of European Patents of 5 October 1973 as revised by the Act revising Article 63 EPC of 17 December 1991 and the Act revising the EPC of 29 November 2000) by establishing a new Unified Patent Court (UPC) with multinational panels (art 8 UPC Agreement) as a court common to all contracting Member p. 1805States (art 1, 2nd sentence UPC Agreement). The Patent Package will bring about two core changes, namely the creation of a European patent with unitary effect (by the Unitary Patent Regulation) and the concentration of infringement litigation over simple European (European Patent Convention-granted) patents and over European patents with unitary effect in a single Unified Patent Court with its own substantive and procedural provisions (UPC Agreement, Statute of the Unified Patent Court, [2013] OJ C 175/29, Rules of Procedure of the Unified Patent Court).

From a private international law perspective, before turning to potential specific private international law provisions in Unitary Patent Regulation and the UPC Agreement, the question arises of how the new instruments relate to the general corpus of European private international law, in particular the Rome I Regulation (Regulation (EC) No 593/2008 of the European Parliament and of the Council of 17 June 2008 on the law applicable to contractual obligations (Rome I), [2008] OJ L 177/6; →Rome Convention and Rome I Regulation (contractual obligations)) and the Rome II Regulation.

a) European patents with unitary effect (Unitary Patent Regulation)

Concerning European patents with unitary effect, it may be noted that the Unitary Patent Regulation and the Translation Regulation create a right with unitary effect which, unlike the Community trade mark, design and plant variety rights, does not cover the entire EU, but is limited to ‘those participating Member States in which the Unified Patent Court has exclusive jurisdiction with regard to European patents with unitary effect at the date of registration’ (art 18(2) 2nd sentence Unitary Patent Regulation). Moreover, for political reasons, in particular a reluctance to entrust the interpretation of substantive patent law to the ECJ, art 5(1) and (2) Unitary Patent Regulation merely state that the European patent with unitary effect confers on its proprietor an exclusive right and that the ‘scope of that right and its limitations shall be uniform’. The exact definitions of the ‘acts against which the patent provides protection . . . and the applicable limitations’ are, with few exceptions such as exhaustion (art 6 Unitary Patent Regulation), not spelled out in Unitary Patent Regulation. Rather, art 5(3) Unitary Patent Regulation refers for these issues to ‘the law applied to European Patents with unitary effect in the participating Member State whose national law is applicable to the European Patent with unitary effect as an object of property in accordance with Article 7’. Article 7(1) Unitary Patent Regulation, in turn, refers to the substantive, ie law excluding its conflict-of-law provisions, of the place in a participating Member State where the patent applicant had its residence or principal place of business or place of business on the date of filing of the patent application. Where no applicant has its residence, principal place of business or place of business in a participating Member State in which the patent has unitary effect, the European patent with unitary effect ‘shall be treated . . . as a national patent of the State where the European Patent Organization has its headquarters’ (art 7(3) Unitary Patent Regulation), ie as a German patent. The desired unification of the prohibited acts and limitations is thus achieved by reference to the national law of a participating Member State which is harmonized by the UPC Agreement (arts 25 et seq UPC Agreement) as an international convention to be ratified by all participating Member States for which unitary effect is granted (art 18(2) 2nd sentence Unitary Patent Regulation).

From a private international law perspective, the conflict rules in arts 5(3) and 7 Unitary Patent Regulation seem to overlap with the general rules of the Rome Regulations only in so far as the ‘acts against which the [unitary] patent provides protection and the applicable limitations’ are considered to fall under the Rome II Regulation (because they define the ‘basis and extent of liability’ in the sense of art 15(l)(a) Rome II Regulation). For these issues, arts 5(3) and 7 Unitary Patent Regulation will arguably have to be given precedence for the participating Member States over the general conflict rules of the Rome I and II Regulations, in particular over art 8(2) Rome II Regulation either on the basis of art 27 Rome II Regulation or as a lex specialis for reasons of effectiveness of the Unitary Patent Regulation (for the parallel debate for provisions in transport law regulations Johannes Schilling, ‘Materielles Einheitsrecht und Europäisches Schuldvertrags-IPR. Das Verhältnis der Rom I-Verordnung zu internationalen Sachrechtsakten’ [2011] EuZW 776, 778) or, concerning art 8(2) Rome II p. 1806Regulation, for reason of the caveat in that provision (‘for any question that is not governed by the relevant Community instrument’).

For all matters other than prohibited acts, limitations and proprietary aspects which are not covered by the Unitary Patent Regulation and the Translation Regulation (such as sanctions, eg calculation of damages), Recital (9) 2nd sentence Unitary Patent Regulation states that ‘the provisions of the EPC, the Agreement on a Unified Patent Court, including its provisions defining the scope of that right and its limitations, and national law, including rules of private international law, should apply’. While Recital (9) seems to suggest that the European Patent Convention und UPC Agreement are applied directly and not as part of the applicable national law (as defined by private international law rules), Recital (13) Unitary Patent Regulation adds that ‘[t]‌he regime applicable to damages should be governed by the laws of the participating Member States, in particular the provisions implementing article 13 of Directive 2004/48/EC’, which suggests, on the contrary, an application of the damages provisions in the UPC Agreement as part of the national law of the participating Member States. Recitals, however, are not the operative part of a Regulation, so that the Unitary Patent Regulation does not include a conflict rule except for the matters covered by art 5(3) and art 7 Unitary Patent Regulation (Josef Drexl, ‘Internationales Immaterialgüterrecht’ in Franz Jürgen Säcker, Roland Rixecker and Hartmut Oetker (eds), Münchener Kommentar zum Bürgerlichen Gesetzbuch, vol 11 (6th edn, CH Beck 2015) para 147, who proposes to apply art 8(2) Rome II Regulation for matters not covered by art 5(3) Unitary Patent Regulation such as sanctions).

b) ‘Simple’ European patents (UPC Agreement)

The limited scope of the conflict rules in Unitary Patent Regulation shifts the focus to the provisions which define the law to be applied under the Agreement on a Unified Patent Court, namely arts 3 and 24 Agreement on a Unified Patent Court which are relevant both for European patents with unitary effect and ‘simple’ European patents (art 2(e), (f), art 3 UPC Agreement).

(1) Relationship with general EU choice-of-law provisions (Rome I Regulation and Rome II Regulation)

Before turning to arts 3 and 24 UPC Agreement, it has to be decided whether these provisions can be applied immediately or whether they apply only subject to the general EU choice-of-law provisions as incorporated in particular in the Rome I Regulation and the Rome II Regulation. In this respect, it has to be noted that technically the UPC Agreement constitutes an international convention which did not yet exist when the Rome I Regulation and the Rome II Regulation were adopted. Therefore, it cannot claim precedence over these Regulations under art 28(1) Rome II Regulation (art 25(1) Rome I Regulation). Moreover, the precedence of the Rome Regulations over arts 3 and 24 UPC Agreement arguably finds further support in their nature as part of EU law which is specifically preserved by art 20 and art 24(1) first half-sentence as well as art 24(1)(a) UPC Agreement. The primacy of EU law, if it is extended to choice-of-law provisions, would indeed suggest that the applicable law is determined by the Rome Regulations, with the UPC Agreement only being applied if it is part of the substantive law referred to by the Rome Regulations. This view was apparently the position held in the legislative procedure. In the Commission’s non-paper on ‘Compatibility of the draft agreement on the Unified Patent Court with the Union acquis’ (Council Document 14191/11 of 20 September 2011), it is stated that ‘[t]‌he Agreement on a Unified Patent Court does not contain conflict rules in matters governed by the Rome I and Rome II Regulations’, while ‘[t]he Agreement on a Unified Patent Court does contain harmonized rules of substantive law’. The Commission further wrote that ‘[i]t needs to be ascertained that, in case the Rome Regulations lead to the applicability of the national law of a non-participating State, this law is applied, even if its rules differ from the rules provided for in the UPC Agreement’. The consequences of this interpretation, which is probably founded on the desire to preserve full primacy of EU law as a requirement for compatibility of the UPC Agreement with EU law, were later implemented in the UPC Agreement: the title of ch V – formerly IIIB – was changed from ‘Applicable Law’ to ‘Sources of Law’, and the applicability of the law of a non-participating state made possible (Council Document 13751/11 COR 2 of 23 September 2011, 20–21; see also Council Document 15487/11 of 13 October 2011, 20–21).

p. 1807Against this view, however, it may be pointed out that the UPC Agreement does not only lay down choice-of-law rules, but rather aims at substantive and procedural harmonization. Therefore, it may benefit from the argument that international conventions aiming at substantive law harmonization (as concluded by the Member States in the realm of their competences) may not be barred by the Rome I Regulation and the Rome II Regulation and thus be able to define their own scope of application (for an analogous argument concerning uniform transport law conventions (→Transport law (uniform law)) in relation to Rome II Regulation see Jürgen Basedow, ‘Rome II at Sea: General Aspects of Maritime Torts’ (2010) 74 RabelsZ 118, 127–8, stating that uniform substantive law conventions (→Uniform substantive law and private international law) exclude ‘situations involving a conflict of laws’ in the sense of art 1(1) Rome II Regulation and make the EU conflict rules not applicable). For the UPC Agreement, it could be added that arts 5(3), 18 and Recital (9) Unitary Patent Regulation expressly refer to the UPC Agreement and thus include it into the EU accepted corpus of international conventions. Finally, one may point to the order of art 24(1) and (2) Agreement on a Unified Patent Court, where the second para of art 24 Agreement on a Unified Patent Court mentions general EU private international law rules (such as Rome I and Rome II) only after EU law, including Unitary Patent Regulation and Regulation 1260/2012, the UPC Agreement, the European Patent Convention and other international conventions. This suggests an e contrario argument that the Unified Patent Court should apply the instruments mentioned in art 24(1)(a)–(d) UPC Agreement (substantive EU law, UPC Agreement, European Patent Convention, other international conventions) without a detour via private international law, with the general rules of EU and national choice-of-law provisions coming into play only where the Unified Patent Court has to resort to national law (art 24(1)(e) UPC Agreement). Moreover, if the Rome II Regulation was applied before resorting to arts 3, 24 UPC Agreement, the references in art 24(1), (2) UPC Agreement could be regarded as conflicting with the exclusion of renvoi in art 24 Rome II Regulation. Following this line of argument, arts 3, 24 UPC Agreement could be considered as a uniform law lex specialis to the Rome Regulations, the latter coming into play only where the UPC Agreement refers to national law (art 24(1)(e), (2) UPC Agreement).

For practical purposes, the difficult question of primacy of either arts 3, 24 UPC Agreement or the Rome Regulations can probably be left open in most cases: according to art 3 UPC Agreement, the Agreement applies only to European patents with unitary effect, European patents and related supplementary protection certificates or patent applications. Moreover, the jurisdiction of the Unified Patent Court (art 32(1) UPC Agreement) – subject to objective joinder under art 71b(3) Brussels I Regulation (recast) (Regulation (EU) No 1215/2012 of the European Parliament and of the Council of 12 December 2012 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters (recast), [2012] OJ L 351/1 (→Brussels I (Convention and Regulation)) as amended by Regulation (EU) No 542/2014 of the European Parliament and of the Council of 15 May 2014 amending Regulation (EU) No 1215/2012 as regards the rules to be applied with respect to the Unified Patent Court and the Benelux Court of Justice, [2014] OJ L 163/1) – covers only actions concerning infringement and/or revocation of ‘patents’ and certain related actions in the sense of the Unified Patent Court, ie European patents or European patents with unitary effect (art 2(g) UPC Agreement). Accordingly, to fall within the scope of the UPC Agreement and to establish jurisdiction of the Unified Patent Court, the claimant will have to sue under and thus claim protection (or the defendant non-infringement) of a ‘patent’ in the sense of the UPC Agreement. This, however, would also be sufficient under art 8(1) Rome II Regulation to make the law of the country for which protection is claimed applicable. Further, if the plaintiff sues and thus claims protection under a ‘patent’ in the sense of the UPC Agreement, this will be a participating state, as otherwise the action would fail for lack of infringement in the territory of protection. In the state of protection, the UPC Agreement will thus have been implemented so that the UPC Agreement and the European Patent Convention will either apply directly under art 24(1)(b) and (c) UPC Agreement, or under art 8(1) Rome II Regulation apply as part of the lex protectionis, so that in either case the question of primacy can be left open.

The same probably holds true for art 8(2) Rome II Regulation, to the extent the European patent p. 1808with unitary effect is concerned, provided the ‘act of infringement’ is claimed to have occurred in those Member States where the unitary effect has come into existence, as these Member States, according to art 18(2) 2nd sentence Unitary Patent Regulation, will also have to be contracting states where the Unified Patent Court has jurisdiction and thus the UPC Agreement has been implemented into national law, so that it applies both under art 24(1)(b) UPC Agreement and art 8(2) Rome II Regulation (see also Josef Drexl ‘Internationales Immaterialgüterrecht’ in Franz Jürgen Säcker, Roland Rixecker and Hartmut Oetker (eds), Münchener Kommentar zum Bürgerlichen Gesetzbuch, vol 11 (6th edn, CH Beck 2015) para 147, who argues that the country of protection and the country where the act of infringement happened are identical if that country is a participating Member State). Differences may remain only if the ‘act of infringement’ occurred in a non-participating state. Moreover, a minor technical difference stems from the fact that under art 8(2) Rome II Regulation, the various national implementing laws of the UPC Agreement at the different ‘acts of infringement’ are applicable, whereas under a direct application via art 24(1) UPC Agreement, one could argue that the UPC Agreement as such applies.

(2) Source of law under art 24 UPC Agreement

The substantive and procedural law of the Unified Patent Court under the UPC Agreement is described by art 24(1) UPC Agreement. According to this provision, the Unified Patent Court must,

in full compliance with article 20 [primacy of EU law], when hearing a case brought before it under this Agreement . . ., base its decisions on (a) Union law, including Regulation (EU) No 1257/2012 and Regulation (EU) No 1260/2012; (b) this Agreement; (c) the EPC [eg art 69 European Patent Convention on the scope of patents]; (d) other international agreements applicable to patents and binding on all the Contracting Member States [eg Paris Industrial Property Convention (Paris Convention for the Protection of Industrial Property, 20 March 1883, with later amendments, 828 UNTS 305)]; and (e) national law.

For the determination of the applicable national law, which may be relevant for all aspects not covered by the UPC Agreement, eg transfer of a European patent without unitary effect, art 24(2) UPC Agreement adds that

[t]‌o the extent that the Court shall base its decisions on national law, including where relevant the law of non-contracting States, the applicable law shall be determined: (a) by directly applicable provisions of Union law containing private international law rules [eg Rome I and Rome II Regulations], or (b) in the absence of directly applicable provisions of Union law or where the latter do not apply, by international instruments containing private international law rules [the order in art 24(2) Agreement on a Unified Patent Court is probably not meant to change the precedence of existing choice-of-law conventions over the Rome I and II Regulations under art 28 Rome II, art 25 Rome I]; or (c) in the absence of provisions referred to in points (a) and (b), by national provisions on private international law as determined by the Court.

The latter reference to court-determined national private international law provisions raises the question how the Unified Patent Court is to determine the applicable national conflict rules. As the determination of a conflict rule accepted in most or even all Member States will probably in most cases be impossible, and as application of the conflict rules at the seat of the respective division will lead to different rules being applicable to the same patent depending on the seat of the division, it seems most convincing to draw an analogy to art 7 Unitary Patent Regulation and apply the conflict rules of the country where the patent applicant was resident at the time of application. Finally, art 24(3) UPC Agreement clarifies that

[t]‌he law of non-contracting States shall apply when designated by application of the rules referred to in paragraph 2, in particular in relation to articles 25 to 28 [right to prevent direct and indirect use of invention and limitations], 54 [burden of proof], 55 [reversal of burden of proof], 64 [corrective measures in infringement proceedings], 68 [award of damages] and 72 [period of limitation].

As the substantive law of non-contracting states is unlikely to include the mentioned provisions of the UPC Agreement, art 24(3) UPC Agreement is probably intended as a form of qualification provision, stating that the matters in the mentioned UPC Agreement provisions are to be considered as substantive (as opposed to procedural) law in nature. Finally, it may be noted that art 82(3) UPC Agreement refers for enforcement procedures to the law of the contracting Member State where the enforcement takes place.

p. 1809Literature

  • Philippe Baechtold, Tomoko Miyamoto and Thomas Henninger, ‘International Patent Law: Principles, Major Instruments and Institutional Aspects’ in Daniel Gervais (ed), International Intellectual Property: A Handbook of Contemporary Research (Edward Elgar 2015) 37;

  • Jürgen Basedow, ‘Foundations of Private International Law in Intellectual Property’ in Jürgen Basedow, Toshiyuki Kono and Axel Metzger (eds), Intellectual Property in the Global Arena (Mohr Siebeck 2010) 3;

  • Jürgen Basedow, ‘The Law of Open Societies: Private Ordering and Public Regulation of International Relations’ (2012) 360 Rec. des Cours 11;

  • Colin Birss, ‘Unitary Rights and Judicial Respect in the EU: “Bringing Cool Back”’ (2013) 3 Queen Mary Journal of Intellectual Property Law 195;

  • Josef Drexl, ‘Internationales Immaterialgüterrecht’ in Franz Jürgen Säcker, Roland Rixecker and Hartmut Oetker (eds), Münchener Kommentar zum Bürgerlichen Gesetzbuch, vol 11 (6th edn, CH Beck 2015);

  • European Max Planck Group on Conflict of Laws in Intellectual Property, Conflict of Laws in Intellectual Property: The CLIP Principles and Commentary (OUP 2013) art 2:605: Unitary regional rights, p 186;

  • James Fawcett and Paul Torremans, Intellectual Property and Private International Law (2nd edn, OUP 2011);

  • Holger Fleischer ‘Optionales europäisches Privatrecht (“28. Modell”)’ (2012) 76 RabelsZ 235;

  • Hamburg Group for Private International Law, ‘Comments on the European Commission’s Draft Proposal for a Council Regulation on the Law Applicable to Non-Contractual Obligations’ (2003) 67 RabelsZ 1;

  • Axel Metzger, ‘Community IP Rights and Conflict of Laws: Community Trade Mark, Community Design, Community Patent – Applicable Law for Claims for Damages’ in Josef Drexl and Annette Kur (eds), Intellectual Property and Private International Law: Heading for the Future (Hart 2005) 215;

  • Pedro de Miguel Asensio, ‘Regulation (EU) No. 542/2014 and the International Jurisdiction of the Unified Patent Court’ [2014] IIC 868;

  • Marta Pertegás Sender, ‘Intellectual Property and Choice of Law Rules’ in Alberto Malatesta (ed), The Unification of Choice of Law Rules on Torts and other Non-Contractual Obligations in Europe (CEDAM 2006) 221;

  • Marius Schneider and Vanessa Ferguson, ‘Cross-border Enforcement of Intellectual Property Rights: Africa’ in Paul Torremans (ed), Research Handbook on Cross-border Enforcement of Intellectual Property (Edward Elgar 2014) 329;

  • Paul Torremans, ‘An International Perspective II: A View from Private International Law’ in Justine Pila and Christopher Wadlow (eds), The Unitary EU Patent System (Hart Publishing 2015) 161;

  • Guy Tritton, Intellectual Property in Europe (4th edn, Butterworths 2014).