I wasn’t planning on writing again on the possible impact of the Scottish Referendum on intellectual property rights unless there was a “Yes” vote. The polls however seemed to have moved recently from “probably No” to “Dave? It’s squeaky bum time”. Additionally a couple of us here at IPcopy have wondered whether a “Yes” vote (i.e. a vote to break up the UK) might have a greater impact than previously thought on the Unitary Patent Package. Essentially, we’ve been considering a Scottish variant of the Malta problem which has previously been discussed on this blog – what I’m now going to refer to as the Scottish Situation.
To recap briefly, the “Malta problem” runs as follows (see earlier post for full details):
- Under the terms of the unitary patent regulation, for the unitary patent (UP) validation route to be available, the claims of the European patent that the unitary patent will derive from must be the same for all participating states within the unitary patent system at the point that the unitary patent validation is made.
- Note that Malta joined the EPC on 1 March 2007.
- Now assume Malta completes all its required ratification actions (relating to the unified patent court (UPC) agreement) and fully joins the unitary patent system. In this scenario EP patents that have a filing date before 1 March 2007 and a grant date after the UP system comes into effect, will NOT have claims that are the same for each participating member state of the unitary patent system. This is because Malta was not an available EP designation at the time the EP patent application was filed.
- In other words, the granted patent will effectively have one set of claims that cover all participating member states except Malta and no claims that cover Malta.
- So, your European patent does not have the same claims in respect of all participating Member States, and hence, according to Article 3(1) of the Unitary Patent regulation, cannot benefit from unitary effect. Therefore, the unitary patent is automatically closed to you, and your only option for obtaining protection is the validation route.
Now does this relate to the Scottish Referendum I hear you ask? Well, lets make a few assumptions
- Scotland votes “Yes”
- The unitary patent system comes into force January 2016 (this is consistent with the current “official” timescale)
- Scotland sticks somehow to the proposed timetable and actually becomes independent in March 2016
- Having realized there’s actually a boatload of stuff to sort out between the referendum and the independence date, Alex “Let’s just do it. It’ll be awesome! Promise!” Salmond et al decide to concentrate on the more important aspects of the succession process and relegate joining the EPC until some point after independence (let’s say March 2017).
- Scotland signs up to the enhanced cooperation process for the unitary patent and ratify the UPC agreement. Let’s say August 2017.
We then end up with a situation that looks something like this.
In area 1: Scotland is part of the UK. Probably no problem
In area 2: the UP system is up and running. EP patent applications filed after 1 March 2007 are eligible for unitary patent status on grant.
In area 3: Scotland is now independent but not part of EPC or the unitary patent system (i.e. they’ve not signed up to the UP regulations or ratified the UPC agreement). According to the EPO President, EP(UK) patents do not extend to Scotland in this scenario. This is where the problem is – see below
In area 4 – Scotland is part of the EPC but not the UP system
In area 5 – Scotland has joined the EPC and the UP system.
By our reckoning in the above arrangement there is a problem for EP patent applications with a filing date in area 3 once Scotland joins the UP system in area 5.
Following the line of reasoning from the Malta problem:
- EP patent applications filed in area 3 cannot designate Scotland because Scotland has not joined the EPC at this point.
- However, if EP patent applications filed in area 3 subsequently grant in area 5 then they will not be eligible for unitary patent status because the claim set is not the same for all states (because there will be one claim set for all UP states except Scotland but there will be no claim set for Scotland because Scotland was not designated in the EP application on filing).
If Scotland join the EPC on Independence Day then the above issue will not arise. If Scotland does not join the EPC on Independence Day then, given that around 300,000 applications are filed per year, there could be a significant number of patent applications that have the unitary patent route closed to them. The Scottish Situation is born….
- Make sure that EPC accession is linked to independence (how easy is it for accession to the EPC to occur?)
- Don’t file any EP patent applications in area 3 if you have any interest in gaining unitary patent protection down the line!
- Vote “No” because, ….you know, …..we’re Better Together.
That this argument has not cropped up in the No campaign already is faintly staggering. Perhaps they’re leaving it for the final push?
Mark Richardson 12 September 2014