Hague Evidence Convention and the EU: did member state loose competence?

The Hague Evidence convention was already concluded 45 years ago, but it has lost not much of its relevance. The Convention on the Taking of Evidence Abroad in Civil or Commercial Matters, as it is formally called handles preserving evidence for later civil litigation in cross border situations and thus forms, with 58 parties, an important convention in Private International Law.

The European Union has similar rules in place since the 1206/2001 Regulation on "cooperation between the courts of the Member States in the taking of evidence in civil or commercial matters", which explicitly names the Hague convention and replaces it in situations between member states. One of the reasons for adopting it, was that not all EU member states were parties (still Belgium, Ireland and Austria are non-parties).

One of the peculiarities of the Evidence convention is, that it allows member states of the Hague Conference (in 1970) to sign and ratify the convention, and other states to accede. Contrary to most conventions (but as is the case often with Hague conventions), there is a difference in legal effect of accession and ratification. The convention applies always between all ratifying states, but only between acceding states after their accession has been explicitly accepted by a ratifying state (or an acceding state that acceded earlier). The Hague Conference maintenance a nice excel sheet following acceptance, from which can be seen, for example, that the recent accession of Armenia has only effect with respect to 11 states (including the EU countries Czech Republic, Bulgaria, Germany)

In the past, EU member states have accepted new acceding states at their own initiative and pace, but is this still allowed or should they ask permission from the EU and approve accession of other states "in the interest of the European Union"? This post investigates the present situation, and -to stay with our example- whether the acceptances by Czech Republic, Italy and Germany of Brazil's accession without the approval of the EU are lawful.

Internal competence means external competence
The first question to be asked, is whether the EU has competence with regards to the Hague Evidence Convention. The EU is not a party, and "only" 25 of its 28 member states are, and matters within the EU are now falling outside the scope of the Convention, as the Regulation has replaced them. Nevertheless, in the famous opinion regarding the Lugano convention (Case 1/03, ECLI:EU:C:2006:81), the European Court of Justice  confirmed that if the EU has regulated a matter internally (in this case through the Execution regulation 44/2001), that also gives it competence for externally (the Lugano convention mostly the same text, but between the EU and EFTA states). The mere similarity between the systems makes that the two may "effect eachother". In the case between the Evidence REgulation and Convention this similarity clearly exists.

"Accepting an accession" is a treaty action
What is the acceptation of an accession? According to CJEU in opinion 1/13, and based on teh Vienna Convention on the law of treaties, the acceptance of an accession constitutes a treaty-making action. Thus if the EU would be (exclusively) competent to conclude the treaty, it should be (exclusively) competent to accept an accession. That seems crystal clear.

Exclusive or Shared competence?
Is the competence exclusive or shared? That's for me an open question, but -given the similarities in the fields- I assume, we are talking exclusive competence of the EU here.

Conclusion: 
The conclusion from this exercise is that acceptance of accessions of the Hague Evidence Convention falls in the (probably exclusive) competence of the EU. That is already the case  for some years (since 2001 when the Evidence Regulation was concluded?), but this became only apparent when acceptance of Hague Child Abduction acceptances were discussed (2012), and only became very clear once CJEU opinion 1/13 was given by 14 October 2014.
So, to return to our Brazil example; were Bulgaria, Czech and Germany at fault? They accepted after 1/13 was given, and thus it seems they are to blame for accepting without being competent to.

Other Hague conventions involved?
With competence of the EU established in the Hague Adoption Convention (explicitly) and the Hague Evidence Convention (by me at least;-), the story might not be over. Opinion 1/13 should also be evaluated in light of the 1996 Hague "Protection of Children" convention (similar provisions in Brussels II: 2201/2003), the 1965 Hague Service Convention (similar to Service Regulations 1393/2007 and 1348/2000). Those conventions however do not  allow member states to accept an accession, but allow them to prevent entry into force by lodging an objection within 6 months. There are more Hague conventions with relevant provisions and where the EU has (at least some) competence (the 1980 Access to justice convention, the Access to Justice convention), but the relevance of those conventions in daily practice is much lower. Last but certainly not least, the Hague Apostille Convention, the most ratified Hague convention with over 100 parties, also has the possibility of objection to accessions, and may (and here I am guessing) also be partly under EU competence (many of the documents falling under that convention fall under an easier EU system)...

Busy period for EC?
The European Commission will have a busy time in proposing regulations (1 for each acceding member state) for acceptance of the two conventions, or it will face delay in implementation. That is not just a legislative matter, but also a practical one: what criteria are to be fulfilled for accepting (or in the case of some conventions: not objecting) acceding countries? Should a national authority be in place (required by most convnetions and necessary for its functioning)? Or should a state show it can comply with the obligations? Do diplomatic conflicts factor in? It would be wise to have a discussion on those matters and see if a regulation can be proposed that delegates the responsibility for accepting to an EU institution or a working group of member states if relevant criteria have been met. That seems the only way to do this transparently and fast.
In the case of the Hague Service Convention and the Child Protection Convention, time is even more of the essence, because entry into force of a regulation allowing member states to reject accession of an acceding state within 6 months of the accession seems much too fast for the EU legislative machine.

Unified Patent Court: a Dutch Post Consultation Update

Last May, the Dutch government has held a consultation regarding the changes to the Rijksoctrooiwet (the Kingdom Patents Act) in order to implement the provisions of the unitary patent. The consultation also included implementation provisions for the approval act of the Unified Patent Court.

I have dedicated a blog post to my unease with the current implementation path which IMO had serious disadvantages for the caribbean territories in the Kingdom, to which -as non EU territories- the unitary patent would never apply, but to which the Dutch version of the European Patent (including translation requirements etc) would continue to apply. For those who understand Dutch: my contribution to the consultation is here.

The exciting news of today: the government response to the consultation is in! It shows a disappointingly low response: only 9 responses were received. The response to my (and apparently others') concerns and suggestions regarding the implementation in the caribbean translated (disclaimer: by me) below (with my comments in red):

A couple of respondents asked wether it was possible to implement the option to request unitary effect for a European patent also also for Curaçao, Sint Maarten and the Caribbean part of the Netherlands. This is impossible, as both the Unified Patent Court Agreement and Regulations 1257/2012 and 1260/2012 only can apply to the EU Member State the Netherlands and can therefore not apply to the Caribbean part of the Kingdom. This is true for the Regulations, but it is very much debatable with regards to the UPC Agreement, to which the Kingdom is a signatory, and which will anyway apply to the Caribbean part as the territorial scope of decisions regarding non-unitary patents extends to everywhere where the European patent applies (Article 34 of the UPC agreement seems clear: Decisions of the Court shall cover, in the case of a European patent [with non-unitary effect], the territory of those Contracting Member States for which the European patent has effect.). It remains incomprehensible that the chosen procedure for the UPC agreement approval does use a regular Act and not a Kingdom act. Even if ratification takes only place for the European Netherlands, the Kingdom act approval process guarantees consultation of Curaçao and Sint Maarten and the possibility to include their views in an area where they are clearly effected. 

A couple of respondents has pleaded to extend the Act with provisions that are specific to the situation where a [Dutch version of the] European patent is only applicable in the Caribbean part of the Kingdom, such as other translation requirements, financial provisions or different governance competences. The government is of the opinion that such changes are out of scope of the proposed act. It is emphasized that when a European patent enjoys unitary effect in the European part of the Netherlands, and also gives protection in Curaçao, Sint Maarten and the Caribbean part of the Netherlands as a result of national validation, the situation in the Caribbean part of the Netherlands does not differ from a national validation applicable to the whole Kingdom [e.g. a non-unitary Dutch EP].

Again, the idea is thus that in a case of unitary effect by taking the European Netherlands out of the territorial scope of the "Dutch European patent", nothing changes for the Caribbean. This is not true of course, because:

-invalidation of a unitary effect does not invalidate the the Caribbean part (and vice versa!)

-infringement of a unitary patent in Sint Maarten and in Amsterdam has to be litigated separately

Furthermore, although there may be quite some similarities between 

i) a non unitary EP valid through the whole kingdom on subject x and 

ii) a territorially limited Dutch EP on subject y

but this is not the most relevant comparison, because it still means that a big difference will exist between the unitary patent in the European Netherlands on subject x and the same limited Dutch EP also on subject x in the rest of the Kingdom. This means for example that for the same invention, probably the applicable law is different and renewal fees need to be paid at 2 different locations. 

Regarding the level of renewal fees that should apply to this situation [the territorially limited Dutch EP], the government notes that this is not the subject of the Kingdom Patents Act, but of the implementing Decision of the Kingdom Act. That's true, but it is also a bit cryptic. If the implementing decisions are not changed, patent holders keep paying the full price for their territorially limited Dutch EP. Does the government anticipate to lower renewal fees? And to what level? The fact that the economic value of the Dutch EP falls by 99% (in terms of GDP) means that also with a significant reduction of -say- 50%, the proposition for a territorially limited Dutch EP would be a lot less strong. 

Conclusion

This blogger is slightly disappointed that the government keeps its somewhat formalistic approach (nothing changes in the Caribbean as they don't get a new court or patent) and genuinly annoyed about the fact that the implementation path does not acknowledge the situation that according to article 34 UPC decisions apply also to the Caribbean. He reminds again that as a rule, European Union treaties are approved by an approval act covering the whole Kingdom (because it concerns also the Caribbean parts as Overseas Countries), while ratifying only for the European part (the territorial scope of Union law). That should also be the minimum thing to do here as well. 

And now we wait...

The proposal is now off to the Raad van State (Council of State), a routine and required step. Its advice will be made public as soon as the government sends the legislation to the parliament. The government has the possibility to amend the proposal based on the advise, and may also amend it during the first stage of the parliamentary procedure (before parliamentary voting) through a "nota van wijziging" (Note of amendment). And also members of the 2e Kamer (house of deputies) are able to propose amendments and draft motions (e.g. regarding renewal fees). So not all is lost, there is still lots of intelligent people that can bring the legislation on a level where EU unification doesn't mean separation in the Kingdom!

Consultation Unified Patent Court/Unitary patent in the Netherlands (consultatie rijksoctrooiwet)

Last month, I have argued why I think the proposed Dutch implementation of Unified Patent Court and unitary patent is not fair for Sint Maarten, Curaçao, Bonaire, Sint Eustatius and Saba. These islands formed the Netherlands Antilles until October 2010 and are now "countries" or "special municipalities" within the Kingdom of the Netherlands. The European Patent Convention applies, in contrast to EU law (as the territories have an OCT status in the EU as "Overseas Countries and Territories"). 

I have given my view at the online consultation regarding the implementation act, and post it here -in Dutch- for clarity. As I have no intention to link my name to my treatynotifier account, I have opted for not having my reaction posted publicly at the consultation website. It seems most have reacted in this way, as only 4 reactions were published on the consultation site. 

For the sake of completeness, my full reaction is shown below (in Dutch).

Mijn commentaar richt zich voornamelijk op de gekozen implementatie voor de Caribische koninkrijksdelen. Het maken van een unitair octrooi met bijbehorende eengemaakte octrooirechtspraak leidt in het voorstel weliswaar tot unificatie op Europees gebied, maar heeft als -naar mijn mening ongewenste- consequentie dat hetzelfde Europese octrooi verschillende rechtsgevolgen heeft binnen het Koninkrijk. De memorie van toelichting gaat niet in op de belangenafweging tussen eenmaking op Europees gebied en eenmaking op Koninkrijksgebied en geeft niet aan hoe de overige landen/bijzondere gemeenten in het koninkrijk hier tegenaan kijken. Bovendien lijken er wetgevingsopties te zijn die het uiteenlopen van Caribische en Europese wetgeving in het Koninkrijk verminderen die niet besproken (laat staan gekozen) worden. 

Implicaties voor de Cariben
De effecten van deze wijziging in de Cariben lijken in de toelichting ook niet aan bod te komen. Indien een unitair octrooi wordt verleend, geldt het Nederlandse Europese Octrooi uitsluitend daar (hierna: Caribisch EP), en is het dus beduidend minder waard dan het reguliere Nederlandse  EP (het europees octrooi met gelding voor het gehele koninkrijk - behalve Aruba). Komt dit in de instandhoudingskosten tot uitdrukking, want dat wordt nu niet genoemd? Ook lijkt het vertaalregime (vertaling geheel in het Engels, en conclusies in het Nederlands) niet in balans voor het Caribisch EP: is er echt behoefte aan vertalingen (ook gezien de kosten) in een gebied waar Engels vaak net zo goed wordt begrepen als Nederlands?

Octrooi Centrum Nederland
Het OctrooiCentrum krijgt voorts volgens de memorie van toelichting nauwelijks te maken met gewijzigde omstandigheden, hoewel het aantal “validaties” zal afnemen. De gevolgen mogen qua technische werkzaamheden beperkt zijn, maar is er geen effect op budget en personeelsbestand indien een groot aantal unitaire octrooihouders afziet van een Caribisch EP of is de verwachting dat een significant aantal validaties nog steeds zal plaatsvinden? Wellicht is het in dit geval geraden om het aantal validaties/instandhoudingen te vergelijken met gebieden van vergelijkbare grootte, zoals Malta. 

Een alternatief met meer uniformiteit in het Koninkrijk
Ik vraag me af of er niet een alternatieve implementatie kan worden gevonden die uitgaat van het koppelen van het Caribische octrooi zoveel mogelijk aan het unitair octrooi en kosten voor overheid en aanvrager laag te houden, door

-geen additionele vertaling meer voor te schrijven
-de houder van een unitair octrooi automatisch het Caribisch EP toe te kennen
-geen jaartaksen te vragen
-geen register bij te houden, maar slechts te verwijzen naar het unitair octrooiregister
-als object of property, in vorm etcetc altijd de status van het unitaire octrooi te volgen (een door het UPC beperkt unitair octrooi, leidt automatisch tot een beperkt Caribisch octrooi; eigendomsoverdracht of in onderpand geven op wat voor grond dan ook van het unitair octrooi, leidt automatisch tot eigendomsoverdracht/verpanding van het corresponderende Caribisch EP. 
-De Nederlandse rechter doet alleen inbreuk-gerelateerde zaken voor het Caribisch octrooi; en houdt beslissingen ook daarover aan, zolang er vergelijkbare inbreukzaken spelen over het corresponderende unitaire octrooi. De Nederlandse rechter is niet bevoegd wat betreft de reikwijdte/niettigverklaring van het octrooi. 

(-op termijn te streven naar een verdrag tussen de EU, Frankrijk, VK en NL wat betreft hun niet-EU gebiedsdelen, waarbij de unitaire octrooiverordeningen werking krijgen ook binnen deze delen; op vergelijkbare wijze als bepaalde EU wetgeving ook op EVA-staten van toepassing is binnen EEA context)

Rechtspraakverdrag
Deze consultatie gaat niet over de goedkeuringswet voor het eengemaakt octrooigerecht, maar deze is wel bijgevoegd (en de onderwerpen zijn te sterk gelinkt om ze hier niet te beantwoorden). Ik vraag me af of er ook hier geen mogelijkheid bestaat voor een andere implementatie. 

Rijkswet of wet?
Ten eerste -zelfs bij deze wijze van implementatie- dient m.i. voor een rijkswet en niet voor een gewone wet gekozen te worden. Artikel 34 bepaalt dat in geval van een niet-unitair octrooi (klassieke EPs) de beslissing geldt voor het hele gebied waar het Europees octrooi effect heeft, dus ook de Caribische Koninkrijksdelen. Aangezien het octrooiverdrag Curacao en Sint Maarten raakt, zou dat alleen al zou goedkeuring bij rijkswet vereisen (desnoods zoals bij de EU verdragen: goedkeuring voor het gehele koninkrijk, maar ratificeren slechts voor het Europees deel)

Ratificatie voor Caribische Koninkrijksdelen
Ten tweede wordt niet aangegeven of er de mogelijkheid bestaat om ook voor de Caribische koninkrijksdelen het rechspraakverdrag te ratificeren. Daarvoor is weliswaar geen aparte provisie in het verdrag, maar aangezien het Koninkrijk der Nederlanden (en niet Europees Nederland) ondertekenaar is, is het wellicht ook mogelijk om voor het gehele (of bijna gehele) koninkrijk te ratificeren. Dat zou een hoop van de bovengenoemde complicaties oplossen, zeker als er in dat geval voor wordt gekozen dat er wat betreft een Caribisch EP geen rechtsgang naar de Nederlandse rechter zou openstaan. 

BREAKING: The Hague court asks questions to CJEU regarding jurisdiction in Benelux trademark disputes

The Benelux is not a Member State of the European Union,
 but it's  fully part of the  territory of the EU, so what courts 
would be designated  if the Brussels I regulation is used?
 [image copied from my update on the issue of January]

Last year I wrote a blogpost on an unintended consequence of the consolidation of two treaties (Benelux Trademark Law and Benelux Industrial Designs Law) into a single treaty: the 2005  Benelux Convention on Intellectual Property. While the jurisdiction provisions in the treaty were copy-pasted from the older treaties, the treaty itself was a new one. In the EU, jurisdiction is governed by the Brussels I regulation (44/2001 until 2015; now a recast is in place), which states that jurisdiction in treaties from before that regulation (here: the 2 old Benelux treaties) would take precedence over the Regulation. This does not hold however for later ("posterior") treaties.

The Benelux judges seem never to have realized this and always based their jurisdiction on Benelux law, until in November 2013 the Court of Appeal of The Hague argued that clearly now Brussels I should take precedence; a choice with unintended consequences as Brussels I has never been written with a "common IP right to several member states" (as is the case with the Benelux trademark and the Benelux design) [note that jurisdiction for the community trademark is excluded from Brussels I; and that for the unitary patent Brussels I was changed to reflect the situation of a court common to several member states; in this case we are talking about several courts in 3 countries that may or may not have jurisdiction]. The The Hague court concluded that the Brussels I regulation prevailed, and was sure enough not to deem questions to the Court of Justice of the European Union necessary.


In October 2014 however, the court of first instance of The Hague was faced with the same question and suggested questions to CJEU and possibly the Benelux Court of Justice. The case concerns Brite Strike, which markets itself [copied from my previous post for convencience] ("Two police officers started Brite-Strike Technologies Inc. because they were simply not satisfied with what the "top makers" of tactical lights offered for the needs of police officers") Technologies Inc (a US company) v Brite Strike Technologies SA (a Luxembourg company) (ECLI:NL:RBDHA:2014:13187). The matter concerns alleged bad faith in the registration of the Benelux trademark Brite Strike by the Luxembourg company, which was a distributor of the US company. Article 4.6(1) BCIP would render the Luxembourg judge exclusively competent, while article 22(4) of the Brussels I regulation points to the judges of the Benelux (at least, that is one interpretation).

We are half a year further, and ie-forum reports the questions have been finalized and sent to CJEU in Luxembourg (Case C-230/15). The Luxembourg defendant meanwhile is without legal representation in the case and has not reacted to any of the proposed questions.

The first three questions are very similar to the questions suggested in October, while the fourth one has been dropped. the questions (now available in their official translation) are below:

1) Must the Benelux Convention on Intellectual Property (Trademarks and Designs) (BCIP) (whether or not on the grounds set out in paragraphs 28 to 34 of the judgment of the Gerechtshof Den Haag (Regional Court of Appeal, The Hague) of 26 November 2013) be considered to be a subsequent convention, with the result that Article 4.6 of the BCIP cannot be considered to be a special rule for the purposes of Article 71 of Regulation No 44/2001 [The Brussels I regulation]? 

If that question is answered in the affirmative: 

2) Does it follow from Article 22(4) of Regulation No 44/2001 that the Belgian, Netherlands and Luxembourg courts all have international jurisdiction to take cognisance of the dispute? 

3) If not, how should it be determined, in a case such as the present, whether the Belgian, Netherlands or Luxembourg courts have international jurisdiction? Can Article 4.6 of the BCIP (nonetheless) be applied with a view to (further) determining international jurisdiction?

[copying in my evaluation of October again] It is hard to evaluate what the answers of ECJ and/or BCJ will be, but indeed, the questions posed seem indeed to be the relevant questions. If I had to give my best guess of the answers I'd say:
I: This is a clash between following the letter of Brussels I (rendering BCIP posterior) or the intent of the EU and Benelux legislator (rendering BCIP anterior and applicable). Most clarity will be given if the answer is in the negative: when Brussels I is to prevail, a regulation should be applied which was never written with the peculiarities of the Benelux territory in mind, which is bound to result in more questions. However, the ECJ is known to favour the literal interpretation of Brussels I for the sake of predictability, so I think the answer will be: YES
II: The second question is regarding Brussels I 22(4) and gives jurisdiction to the courts of the Member State in which the deposit or registration has been applied for (this can be: the Benelux, rendering all courts competent; or where the physical application took place: at the trademark office in The Hague, Netherlands, rendering always NL competent), has taken place (idem) or is under the terms of a Community instrument (not applicable?) or an international convention (BCIP) deemed (the convention explicitly excludes the location of registration as a determinant in jurisdiction, and would point to the Benelux courts in general) to have taken place. I would assume that because of the last part of the sentence, courts from all 3 countries are competent.
III: This may be the trickiest question... IF the Benelux is to be regarded a separate territory for the application of Brussels I, then the internal law of Benelux (BCIP?) should determine jurisdiction. However, if multiple courts have international jurisdiction (in this case NL, BE, LU) under Brussels
I, normally they all have jurisdiction, and the lis pendens doctrine will render the court first seized competent to hear the case. Again, I don't see much reason why ECJ would not take a literal meaning of 22(4), render all courts competent, and the location within Benelux dependent on the court first seized.

More information:
There is not much more available on this case on the web. It was mentioned by the IPKat blog, the Marques blog and IPCuria; and the Dutch government has published some additional information (as they do with all CJEU cases) in Dutch.
----
This post was last updated on 8 September to include the formal translation of the questions and an update of available information on the web. 

Implementation of the Unified Patent Court Agreement in the Netherlands: Bad choices for the Caribbean

[A small warning is in place. While I aim as a treaty notifier to provide neutral and factual info on treaty ratification and implementation, this post is ... different, and describes the position of its author, with which you are free to (dis)agree.]

[Warning 2: this post is written about 10 hours before the European Court of Justice decides on challenges regarding the unitary patent in cases C-146/13 and C-147/13, which -if rejected- certainly will effect the fate of the UPC The challenges were dismissed. ]

In 2013, 25 EU countries signed the Agreement on a Unified Patent Court (UPC, full text): a single court, with subdivisions in several countries, with jurisdiction on European patents. After the agreement enters into force, its judgments (e.g. revocation, or declarations of infringement) will apply to European patents in all parties to the agreement (15 at the start, but all 28 EU states may become parties). Jurisdiction on European patents in the 10 non-EU European patent convention states as well as the non participating EU parties will remain with its national courts. Furthermore in the first years, national courts of member states have jurisdiction regarding European patents (EP) alongside the Unified patent court. It is in that period possible to opt out an EP from jurisdiction of the UPC so only national courts have jurisdiction. On the other hand, if "unitary effect"is attributed to a European patent (the so called "unitary patent", which may be requested after grant, and after fulfilling certain condition), which means a single renewal fee, a single object of property etc its the UPC that has sole jurisdiction. Lost? I tend to be too (and those not lost are still struggling how the interplay is between EU law, the patent agreement and some of its vaguer provisions)! take a look at several sources on the UPC and unitary patent here, here and here.

Back to the Netherlands. In an online consultation, the Dutch government announced how it will implement the UPC agreement. The package contains the draft changes to the Patent Act (incl a 50 page long explanatory memorandum) as well as the approval act of the Agreement (also incl explanatory memorandum). Most of the changes are considered "minor" and constitute a rigorous exercise in bringing the national patent provisions in line (even while that is not strictly required) with the UPC agreement and discusses at length translation techniques and effects. It also introduces two exceptions to infringement: software decompilation (mirroring UPC article 54k) as well as the so called pharmacist's exception  (UPC Article 54e) for consistency between national and UPC provisions, as otherwise it may (opinions regarding interpretation of the UPC provisions in national courts in  differ here) be that a different law is applied to the same situation; just dependent on which court is addressed... No problems here, as far as I am concerned, as there is a good case to be made...

Dutch implementation

The problem is however with the implementation in those parts of the Kingdom of the Netherlands located in the Caribbean: the former Netherlands Antilles. European patents are extended to 5 of its six islands (Aruba has its own patent) as part of the Dutch part of the EP. In the present situation Curaçao, Sint Maarten, the Caribbean Netherlands and the European Netherlands thus constitute a single jurisdiction with regards to patents, governed by a single patent act (the Kingdom patent act that this consultation is about) with the courts of The Hague as the sole courts with jurisdiction.

There are 2 problems with the implementation from a Caribbean standpoint, at least one of which can absolutely be solved in national law; of the second problem the solution is probably possible, but I am not 100% sure.

1. Implementation of Unitary effect
When unitary effect is attributed to a patent, the unitary patent will apply to the Netherlands by virtue of the Unitary patent regulation. Because this regulation is a EU regulation, and none of the Caribbean islands form part of the territory of the European Union; the provisions of the unitary patent do not apply directly in the Caribbean. The result attribution of unitary patent is that the national EP is retroactively regarded as never to have existed. In the Netherlands however, the European part of the Dutch national EP (EP-NL) is regarded to never have existed, but the national EP remains in effect; albeit only with effect in the 5 Caribbean islands (EP-NL-Carib). Unification with the unitary patent, means thus a split of the unified Dutch EP.
Surprisingly, however, the provisions for EP-NL-Carib remain the same as for EP-NL (let;s say: limited territory; same rules). This means that (the same? there is no provision for reduced costs) renewal fees have to be paid for a territory that has just become 99% smaller in terms of GDP. Also, even although English is an official language in Sint Maarten, and it has a special status on Bonaire, Sint Eustatius and Saba, the requirements for a translation of conclusions in Dutch remains. This will become very serious hurdles for a small territory, and I don't expect many renewals (the consultation documents nevertheless enthusiastically state that there will be no strong effect on the Dutch patent office that registers EP-NL (Incl EP-NL-carib).

1.1 Alternative solution
In my opinion, a solution should be sought that "attaches" the EP-NL-carib to the Unitary patent in order to obtain "de facto" a unified area in the Kingdom of the Netherlands, to make EP-NL-carib not needlessly expensive, and to impose no Dutch language requirements on a population predominantly speaking English, Papiamento (ok, and Dutch). This can be easily done with the following provisions:
*No validation, translation or registration for EP-NL-Carib
*The ownership of EP-NL-carib follows automatically the ownership of the Unitary patent and as an object of property (incl ponding etc)  also always follows the unitary patent and is -only as an object of property- governed by the law of the unitary patent.
*Any licence or contract regarding the unitary patent that applies to the Netherlands also applies to the EP-NL-carib (note: the unitary effect still allows licensing with regards to individual countries, so EP-NL-Carib should follow the unitary patent as far as it covers the (European) Netherlands.
*Revocation actions against a EP-NL-Carib can not be initiated (as the revocation will follow the unitary patent)
*infringement actions can as with any EP-NL be brought before the Dutch judge in The Hague (there is no experience to do this on Curacao); and possibly before the unified patent court (see point 2).
*Supplementary protection certificates (SPC) based on EP-NL-carib can follow unitary patent SPC in a similar fashion. This provision can -for now- however been left out, as it will take some time before unitary patent based SPC will become relevant.

2. Territorial extent of ratification
With every treaty ratification in the Netherlands, the territorial extent is made explicit. Unlike the UK (where a treaty may be extended to the Isle of Man etc), the different parts of the Kingdom are all "countries" within the Kingdom and thus the government has to specify where the treaty applies. This is done and accepted in international law, even if no explicit clause exists that allows for ratifications by different parts of a state. The draft legislation now provides for ratification only on the part of the European Netherlands. Without further justification, it is suggested that this is the only option. This means that EP-NL (non unitary patents) can be brought before the UPC in the first years, which will however not have jurisdiction to rule on infringement in the Caribbean. Revocation  of the EP-NL by the UPC however will have effect for the EP-NL as a whole, and thus affect the Caribbean. Disputes regarding the EP-NL-carib however can only be brought before the court of The Hague (even after the initial period), and a risk therefore exist of diverging decision regarding the EP-NL-carib (Dutch court) and EP-unitary (UPC) as well as parallel litigation.

2.1 Preferred option: ratification for the whole Kingdom except Aruba
In my view the Netherlands can (and should) ratify on behalf of the full Kingdom (except Aruba). As it is stated explicitly in Article 34 of the UPC agreement, that decisions regarding (non unitary) EP are valid for the whole territory where the EP is valid, it is implicit that a country also can (and must) ratify for those parts of its territory where also the EP is valid. The only argument against this reasoning is that the parties to the agreement are "Member States of the European Union", and while it is the full Kingdom that is the subject of international law and thus that Member State, it could be argued, that this implies that only the EU territory of the states is concerned. The UPC Agreement is however not an EU treaty and refers both to  EU regulations and to the European patent convention, so there is (again, in my opinion) no reason to read to much into the territorial extent based on the term Member States .
Ratification also for the Caribbean part, will allow the judge to also consider EP-NL-Carib based on the provisions for non-unitary patents in the UPC agreement, as well as the Kingdom act (national law). Recourse needs to be taken to national law probably a bit more than for other EP, as EU law does not formally apply. In view of the uniform implementation of EU law in the Kingdom act, this should practice not constitute a big problem.

Conclusion

The suggested benefits of the unitary patent and Unified Patent Court Agreement for the European Netherlands puts five territories at a significant disadvantage. It is striking that this is not even addressed as a concern in the proposed legislation and that the policy choices here are given as the only path forward. In this post I have shown that there are two (independent) options to rectify the situation: 

*coupling the Dutch part of the European patent that is only valid in the Caribbean directly to the unitary patent that governs protection in the European Netherlands.

*Ratification of the UPC for the European Netherlands, as well as the Caribbean parts of the Kingdom, thus enabling full jurisdiction of the UPC over all Dutch EP in all parts of the Kingdom. 

Why do I care? There is certainly not much litigation expected from the small territories of these islands. I care, because from a historical perspective, the Kingdom has a special responsibility towards the islands and we shouldn't easily put aside their trouble for our own (envisioned) advantages. My concern echos the wider concern (see here: The Caribbean territory of the Kingdom and the EU: on the complicated relationship between European law and national law regarding Kingdom affairs) that further unification of the EU gives problems with the unification within the Kingdom; and thus may make further (and generally regarded unsatisfactory) changes inevitable (ranging from less integration of laws, becoming part of the EU to even: independence).

The approach seems also different from the Isle of Man, as the UK seems to do everything to apply the unitary patent also there (althouth they are unclear as to the legal strategy of how to accompoish this). It would thus be interesting to compare the UK and NL (and FR) strategies regarding its non EU territories where European Patent Convention fully applies. 

A Dutch "State of the Treaties"

As a follower of treaty ratifications with a special emphasis on the Netherlands, the publication of the "Rapportage over stand van zaken parlementaire goedkeuring verdragen" (Report on the status of parliamentary approval of treaties) is always of special interest as it lists which treaties will be submitted by the government for parliamentary approval in the next years (with a special emphasis on the actions to be taken in 2015). As such it can be regarded as a "State of the Union" (or more Dutch: Prinsjesdag) regarding treaty ratification. In this post I will highlight some of the plans

The publication consists of 4 lists of treaties, depending on the action the government has with them:

*List I: Treaties that are expected to be sent to parliament in 2015 (by far the most important and longest list)

*List II: Treaties that will be laid before parliament at a later date, or towards which no decision has been taken)

*List III: Treaties that will NOT be laid before parliament, but for which that position may change over the next few years

*List IV: Treaties wrt a decision was taken not to lay them before parliament

As the Kingdom of the Netherlands consists (after the dissolution of the Netherlands Antilles in 2010) of 5 separate territories (Aruba, Curacao, Caribbean Netherlands, European Netherlands, Sint Maarten) with different legal systems, a decision to apply treaties is always taken for each territory separately and explicitly mentioned here.

The first point that springs to mind when looking at List I is the high level of ambition of the Government: it plans to introduce a staggering 48 conventions in 2015! A peak at the corresponding List I of 2014 (50 treaties) however shows that as many as 31 were already planned for parliamentary approval a year earlier. The reason why the Government only was able to fulfill 40% of its treaty ambition is however not discussed. The list therefore also contains -apparently inevitable- copy-paste errors: The Hague Maintenance Convention falls within the exclusive competence of the European Union, and the Dutch legislator only has ratification possibilities regarding the Caribbean territories and stated in 2014 correctly to "wait for approval on behalf of the EU". It is a bit surprising to read about the same waiting exercise in 2015: the treaty already entered into force for the EU (except Denmark) on 1 August 2014!.

Jurisdiction in civil matters

What's missing? I was surprised to see no mention of the 2005 Hague Choice of Court Agreements convention. That convention should make sure that a court chosen by parties in a business contract is only one that takes a case, and -more importantly for the small Caribbean jurisdictions- that a decision by a court chosen is recognized in  all other convention parties. Especially the latter case seems important in view of the hesitation of many foreign courts to recognize decisions of jurisdictions with whom they are not very familiar. With Mexico and the European Union being a party from October/November, the convention will ensure recognition on 27 countries in one go! The much more extensive 2007 Lugano convention on jurisdiction in civil and commercial matters (confusingly abbreviated EVEX in Dutch case law)  is on the 2015 list. Also here the EU is already a party (as are Denmark, Iceland, Norway and Switzerland) and the convention would thus govern jurisdiction in civil disputes between the Caribbean territories and 30 countries. The convention however was already on List I in 2014 AND 2013, and had as of today not yet sent to the Council of State of Advice (the last step before parliamentary approval is requested).

IP

The list contains several IP-related treaties. New compared to last year is the 1999 Geneva Act to Hague Agreement on industrial designs (at least: for the European Netherlands and Curacao). Ratification of the Netherlands would probably trigger entry into force also for Belgium and Luxembourg, as those two have already ratified and the three are to be considered as a single territory with respect to Designs. Within the Benelux a further a December 2014 amendment of the Benelux Convention for Intellectual Property (BOIP) is also mentioned, which would include more grounds for opposition and annulment in line with Community Trademark regulations.

Unsurprisingly, also the "Agreement on a Unified Patent Court" is on the list: the court will be a common court to EU member states for litigating European patents, and its entry into force will trigger the possibility to apply for the unitary patent: a European patent with the same "unitary" effect in several EU states. As the Agreement will apply to the territory of the state party where the European patent applies, this agreement will (without special declarations) also apply to the non EU territories Caribbean Netherlands, Curacao and Sint Maarten (but not Aruba) in a similar way that the UK ratification will also apply to the Isle of Man. The list however sets application the Caribbean territories as "not applicable" suggesting (as the government did here as well) that ratification is simply impossible. To me it looks like this impossibility is a political and possibly practical one: I hope the territories have had their say in whether they wanted to participate or not as IP is fully in their competence!

Update: what instrument governs jurisdiction in Benelux Trademarks and Designs?

The Benelux is not a Member State of the European Union, but it's
 fully part of the  territory of the EU, so what courts would be
designated  if the Brussels I regulation is used?

In my October post, I discussed the unforeseen consequences of consolidating the Benelux conventions regarding the Benelux Trademark and the Benelux Designs into the 2005 Benelux Convention for Industrial Property: because the 2005 convention appeared after entry into force of the Brussels I regulation (44/2001, since this month succeeded by a recast: 1215/2012), the treaty -and its jurisdiction rules which were copy-pasted from the older treaties- may need to be considered a "posterior" treaty to the Brussels I regulation, thus rendering Brussels I applicable. This has important complications, as Brussels I seems not very well suited to jurisdiction in national courts regarding IP rights applicable to part of the EU territory (Netherlands, Belgium, Luxembourg).

After the observation of the Court of Appeal of The Hague (who didn't think it necessary to ask prejudicial questions) end 2013 that Brussels I would apply, the reasoning was followed in several Dutch cases. Where the assumption of jurisdiction would lead to differences when applying the Brussels I or when applying the Benelux convention, the court (always the The Hague court) suggested to ask prejudicial questions to CJEU.

It's three months later now: so time for a short update
* Still no questions are asked! In the The Hague district court case Sojuzplodoimport v Spirits International the plaintiff accepted jurisdiction of the Rotterdam court (thus stopping the The Hague procedure), and therefore the need for the questions disappeared.
* The Hague Court still maintains that Brussels I probably prevails, lastly today in Converse/All Star v Carmika.
* After Belgian courts have not discussed the tension between Brussels I and the Benelux convention most of last year, the jurisdiction issues have now also appeared in the Court Appeal of Brussels (and upon questions of the judge also at the end of the procedure of the court of first Instance): In Louboutin v Dr. Adams Footwear (the infamous litigation regarding rights regarding the red sole, via ieforum.be) the judge notices the Dutch position, but argues that it is not relevant in the present procedure, as both instruments give rise to the same outcome (jurisdiction within the scope of Brussels I could be assumed based on appearance of Dr. Adams in the dispute).
*I am not aware of the situation being an issue in Luxembourg (it was not addressed in the case against the rejection of the trademark Benediktiner Weissbier)...

So in short: the notion that Brussels I may be prevailing is gaining support; and at least in the Netherlands this may be turning into that Brussels I probably applies. It seems to me only a matter of time before questions to CJEU (and possibly Benelux Court of Justice) are asked in a case where different conclusions are reached based on the Benelux Convention and based on Brussels I.