A guide to the UPC and the UP - Flipbook - Page 125
39. But, although judgments of the ECJ are not legally binding on the EPO or its boards of
appeal, they should be considered as being persuasive.
40. The EPO (see Notice dated 1 July 1999 concerning the amendment of the Implementing
Regulations to the European Patent Convention, OJ EPO 1999, page 573) and the Boards of
Appeal (see decision of the Enlarged Board of Appeal G 5/83, OJ EPO 1985, 64) have
acknowledged the need for uniformity in harmonized European patent law.”
7-53
Against this background, it remains to be seen how the relationship between the different
judicial bodies (i.e. TBA, CJEU and Court) will develop. 77 The influence of the existing national
and EPO case law on the decisions of the Court is an important aspect, even though case law is
not listed as a source of law in art.24 UPCA. On a practical note, it is likely that the case law of
the Court, the national courts and the EPO will influence each other to a significant extent. In
this regard it will be interesting to see how the Court will deal with the differences which already
exist between EPO case law and the differing national approaches in interpreting the provisions
of the EPC. This is particularly true for the so-called “problem/solution approach”, which is
regularly applied by the EPO Opposition Divisions and TBA, but is not as widely used by the
national courts. 78 Further differences have arisen in the case law of the national courts of
different Contracting Member States on other issues such as the doctrine of equivalents when
considering infringement and the role of “plausibility”, and if there is one the standard to be
used for it when considering validity. 79
Other International Agreements as a Source of Law
7-54
Art.24(1)(d) UPCA mentions “other international agreements applicable to patents and binding
on all the Contracting Member States” as a source of law.
7-55
There are many international agreements to which not only the Contracting Member States,
but many other countries adhere. These agreements cover a variety of subjects, such as
jurisdiction, prosecution of patents and recognition and enforcement of judgments. In this
area, the following Conventions are relevant.
Vienna Convention
7-56
77
78
79
80
81
82
83
In relation to the interpretation of the UPCA, the Preparatory Committee has already turned to
the Vienna Convention on the Law of Treaties 1969 in seeking to give some clarity on the
consequences of the transitional regime in art.83 UPCA. 80 The Vienna Convention applies to
international agreements governed by international law and concluded in written form between
one or more States 81 and states that a treaty [i.e. the UPCA] shall be interpreted in good faith in
accordance with the ordinary meaning to be given to the terms in their context and in the light
of its objective and purpose. 82 In addition to the text of the treaty, the Vienna Convention
provides that subsequent agreements between the parties and subsequent practice in the
application of the treaty may aid its interpretation. 83 It is only where the application of this
guidance leaves the meaning (i) ambiguous or obscure or (ii) manifestly absurd or
See paragraphs 7-14 to 7-16 regarding the controversy about the CJEU’s competence on the Unitary Patent Regulation.
For example see Kinkeldey and Karamanli “Art.56” in “Benkard, Europäisches Patentübereinkommen”, 2nd edn. (Munich: CH
Beck, 2012) marginal nos 23 to 25.
An issue which the EPO Enlarged Board of Appeal discusses, but does not resolve, in G 2/21 “Plausibility” of 23 March 2023
“Interpretative note – Consequences of the application of Article 83 UPCA” dated 29 January 2014, available at
https://www.unified-patent-court.org/en/news/interpretative-note-consequences-application-article-83-upca
[Accessed 13 April 2023].
art.2(1)(a) Vienna Convention.
art.31(1) Vienna Convention.
art.31(3) Vienna Convention.
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A Guide to the UPC and the UP 115
