The UK is to continue participation in the unitary patent system by ratifying the Unified Patent Court (UPC) Agreement.

Following rumours that have been circulating since last week, the UK confirmed yesterday, at an EU Competitiveness Council meeting, that it will continue with its preparations for ratification of the Unified Patent Court Agreement. This announcement seemingly gets the unitary patent system back on track and a start date at some point during 2017 once again seems a possibility.

The full announcement from the UK government can be found here and is also reproduced at the end of this post. In this post, IPcopy takes a closer look at what was said, what needs to happen next and then speculates what might happen post-Brexit.

Prior to the UK’s referendum on the EU, the unitary patent tour bus was merrily cruising along picking up the passengers it needed and was expected to arrive at its destination at some point in the first half of 2017. A number of countries had ratified the UPC Agreement, more were progressing their own ratification procedures and everyone was anticipating that the UK and Germany would follow suit in due course.

Then, the UPC tour bus hit a huge hole in the road – the Brexit pothole – which, at the very least, threatened to delay progress and, at worst, might have damaged the UPC vehicle beyond repair.

Five months on from this incident the UK appears to be signalling that the journey can continue and the announcement states that “the UK will continue with preparations for ratification over the coming months”. Since eleven countries including France have already ratified the UPC Agreement then ratification by the UK and also Germany will be enough to get the UPC vehicle over the finish line to enable unitary patents to be granted and for the Unified Patent Court to start hearing patent cases.

Given that the journey so far has taken decades and has had its fair share of dead ends, yesterday’s news has been welcomed by many involved in the process. However, IPcopy wonders if we’ve just swapped one set of uncertainties for another.

In particular, the following questions and points remain unclear:

• The UK has completed most of the ground work necessary to ratify the UPC Agreement. A further statutory instrument will be required on Privileges and Immunities but we will then be in a position to ratify. However, it is noted that no specific timescale was actually provided for in the announcement;
• As well as UK ratification, it will also be necessary for Germany to complete its ratification procedure before the system can go live. Elections are due next year in Germany which might interfere with the process. At what point is the German ratification procedure?
• Assuming both the UK and Germany complete ratification then the system will get off the ground. Prior to the referendum we seemed to be targeting a May 2017 start date. This timescale is still theoretically possible though both Germany and the UK would need to get a serious shift on. More likely IPcopy would expect the system to get underway in the second half of 2017 assuming there are no more potholes out there.
• There was no indication in the announcement yesterday what will happen post Brexit.
• One post-Brexit possibility is that the UK intends to try and remain in the unitary patent system. According to a recent opinion by Richard Gordon QC and Tom Pascoe this may be legally possible but would require the UK to safeguard the supremacy and uniformity of EU law. Quite how that would go down with Leavers is anyone’s guess. It would also leave the UK’s long term participation in doubt until the CJEU comments on the subject. This would represent an unwanted level of uncertainty for businesses wanting to use the system.
• It is also worth pointing out that the UPC Agreement (see Article 21 of the UPCA and Article 38 of the Statue of the UPC) refers to the involvement of the CJEU in the unitary patent system. At the Conservative Party conference the Prime Minister, Theresa May, indicated that we would not be leaving the EU “only to return to the jurisdiction of the European Court of Justice”. If the UK is hoping to stay in the system post-Brexit then how should the involvement of the CJEU in the unitary patent system be squared with the PM’s comments? [*]
• Another post-Brexit possibility is that the UK intends only to stay in the system long enough to get it up and running but then intends to bow out when we exit the EU. This again would represent a level of uncertainty for businesses and for the system. Will the system fully take off if the UK leaves shortly after the system goes online? (For anyone presuming that such a course of action doesn’t make any sense then I respectfully invite you to review 2016 again. The normal rules no longer seem to apply to anything….)
• And what of the UK judges that will form part of the UPC judiciary? The announcement highlights that “The judiciary appointed include UK judges”. While the UK remains part of the EU this is fine but what happens to those judges when we leave the EU? Can they remain as UPC judges or would they have to leave? (There are no explicit provisions in the UPC Agreement that seem to deal with this scenario).

So, we seem to be getting the unitary patent and Unified Patent Court after all but in reality we may just be kicking all the associated uncertainties further down the road until they get explicitly addressed.

Interesting times are ahead! IPcopy will continue to follow developments as they arise and will report further here. In the meantime if you have any questions then please let us know!

Mark Richardson 29 November 2016

[*] IPcopy noted with a smile that the announcement is at pains to point out (see the “Notes to editors” section at the bottom of the announcement) that the UPC is not an EU institution  but “an international patent court”. Presumably such a statement is an effort to avoid a backlash from the press wanting to latch on to any indication of the UK’s Brexit plans. However this statement is only really convincing for the length of time it takes you either to read down to Article 21 of the UPCA or to ask anyone that’s in any way familiar with the system! IPcopy waits with baited breath for Nigel Farage to chime in on the subject…..

Full text of UPC Announcement

UK signals green light to Unified Patent Court Agreement

The UK government has confirmed it is proceeding with preparations to ratify the Unified Patent Court Agreement.

This is part of the process needed to realise the Unitary Patent and Unified Patent Court (UPCA). Under the new regime, businesses will be able to protect and enforce their patent rights across Europe in a more streamlined way – with a single patent and through a single patent court.

The court will make it easier for British businesses to protect their ideas and inventions from being illegally copied by companies in other countries.

UK Minister of State for Intellectual Property, Baroness Neville Rolfe said:

The new system will provide an option for businesses that need to protect their inventions across Europe. The UK has been working with partners in Europe to develop this option.

As the Prime Minister has said, for as long as we are members of the EU, the UK will continue to play a full and active role. We will seek the best deal possible as we negotiate a new agreement with the European Union. We want that deal to reflect the kind of mature, cooperative relationship that close friends and allies enjoy. We want it to involve free trade, in goods and services. We want it to give British companies the maximum freedom to trade with and operate in the Single Market – and let European businesses do the same in the UK.

But the decision to proceed with ratification should not be seen as pre-empting the UK’s objectives or position in the forthcoming negotiations with the EU.

Following the announcement today, the UK will continue with preparations for ratification over the coming months. It will be working with the Preparatory Committee to bring the Unified Patent Court (UPC) into operation as soon as possible.

Notes to editors

The UPC itself is not an EU institution, it is an international patent court. The judiciary appointed include UK judges.