Last week ratification legislation for the Unified Patent Court Agreement (UPCA) entered into force in Germany. This move follows years of delays caused by challenges to the UPCA in the German Federal Court.

On the face of it, the path to a functioning unitary patent system seems clear and a new operational start date of “around mid-2022” has been published by the UPC Preparatory Committee. However, a number of further steps and obstacles remain, some of which seem more than just formalities.

The final step before the UPC comes into effect will be the deposit of Germany’s instrument of ratification (the official ratification page here shows that this has not yet occurred). However, before then the Court’s IT systems need to come online, its budget needs to be finalised and the judges need to be recruited. Also needed is ratification of the Protocol on the Provisional Application of the UPCA by Germany and two further participating member states.

The above-described steps should be matters of formality but there are additional, potentially more serious, issues to consider, none of which were mentioned in the recent UPC Preparatory Committee update. These issues, as IPcopy sees them are as follows (in no particular order):

1. The UPC Agreement states in Article 89 that “This Agreement shall enter into force on 1 January 2014 or on the first day of the fourth month after the deposit of the thirteenth instrument of ratification or accession in accordance with Article 84, including the three Member States in which the highest number of European patents had effect in the year preceding the year in which the signature of the Agreement takes place”. The UPCA was signed in February 2013 and so, under one interpretation of Article 89, one of the three Member States was the UK. Does the UPCA need updating to clarify the meaning of Article 89? Does it matter that the UK is no longer part of the Agreement?
2. Under Article 7(2) UPCA the central division of the UPCA will have its seat in Paris with sections in London and Munich. Annex II of the UPCA sets out the technical subject matter of cases that are to be distributed to London. Does Article 7(2) UPCA need to be amended before the Court can come into effect? How can cases be redistributed given the references to London?
3. The Protocol on the Provisional Application of the UPCA requires a number of states, including Germany, France and the UK, to ratify the Protocol. Germany and two other participating states are required to bring the Protocol into effect (and thereby allow the formal matters above to be completed) but the UK withdrew its ratification on 20 July 2020. What impact does the UK’s withdrawal have on this Protocol?
4. The Protocol on Privileges and Immunities of the UPC states in Article 18 that it will come into effect after France, Germany, Luxembourg and the UK have deposited their instrument of ratification. Again, the UK has withdrawn its ratification on 20 July 2020. What impact does this have?

In IPcopy’s opinion the above 4 issues, at least, need addressing openly before the unitary patent system can come into effect. If not, there must surely be questions over the validity of the unitary patent project until such time as the CJEU has had a chance to comment. Given these uncertainties will patent attorneys recommend obtaining a unitary patent to their clients? Will use of the Unified Patent Court be something that should be postponed until some test cases have been heard? And, as a consequence, will the majority (all?) granted EP patents get opted out from the exclusive competence of the UPC?

Mark Richardson 19 August 2021