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
Isn’t one step missing? EU accession? Or is it assumed that EU membership will be automatic?
You are correct that EU membership by an independent Scotland will be required to join the unitary patent system. In the above thought experiment however I don’t think it matters too much whether Scotland join the EU on their Independence Day or at some point between then and the date we’ve used for joining the UP system.
As we’ve hopefully described the important points are (i) when they join the EPC (namely that there’s a gap between being an EPC member by virtue of being part of the UK and joining the EPC in their own right) and (ii) the subsequent inclusion in the unitary patent system.
I forgot to include a link to a Managing IP article where the EPO President considers the issue of Scotland joining the EPC. The link to that article is below and I’ll add it into the main article above shortly. It is interesting to note that this MIP article suggests that the EPC accession process is not a short one and that there would be no fast tracking. So maybe our thought experiment above is not too wild after all!
This an interesting exercise. Let me see if I can add to the facts; and to the speculation…
-1-Accession to the EPC is possible by a “European state”, but only “at the invitation of the administrative council”. It therefore seems that those 2 hurdles need to be taken in the case of accession; Entry into force is first day of the 3rd month after ratification; which means that an Admnistrative council decision on -say 10 jan 2016-, and an accession on 20 jan would result in entry into force on 1 April 2016, introducing a gap of 3 months
-2-With the accession of other states however EPO has been lenient in the last month before accession. Any patent filed in the month before entry into force of a new state, could -upon request- obtain the date-stamp of the date of accession, thus shortening the period
-3-However, although no multilateral conventions have statements regarding “succession”, many new countries have used that route. They have simply sent a letter to to the depositary (in this case: Germany) after their independence indicating that they “consider themselves to be bound” to the convention . Those statement are generally given retroactive effect; i.e. from the moment of independence. If the Scottish state would do so on -say- 1 Jan 2016; and EPO would immediately change its forms, that would be the end of it.
-4-The fourth option is speculative. It has to do with the notion “state”. In some systems a sovereign state can be part of another sovereign state. This was the case for Ukraine in the Soviet Union. In other words, if Scotland would choose to become a sovereign state in the UK on 1 oct 2015 and a “true” sovereign state on 1 jan 2016, it could deposit its accession even when it was still under the UK-part
-5-The fifth option is speculative again. What would prevent the UK from depositing an instrument of accession on behalf of the soon to be independent state Scotland before it really enters into force?
These options may seem far fetched, but I think that the succession option is realistic, as there is no real precedent of a multilateral convention open to a group of states where this is denied… It may not hold for the EU, where always detailed negotiations have taken place, but for the EPC, and in combination with Scotland being fully prepared (legislation etc), I don’t see how Germany would deny it!
Article 331 TFEU permits transitional provisions on entry of a new state into enhanced co-operation. Any problems could be dealt with in suitably imaginative transitional provisions.
If Spain or rUK (rest of UK) block Scottish entry into the EU then UPC is entirely academic. Scotland becomes like Norway, bound by the EPC only. Isn’t that what Scottish ‘yes’ voters want, anyway, to be more like Norway?