There has been a change of minister for IP, and signs that the government intends to pursue a “hard Brexit”, since it was announced that the UK would proceed with ratifying the UPCA. However, it appears that UK ratification is still intended and preparations are continuing.
The Unified Patent Court (UPC) is a proposed single court system for hearing cases relating to the EU’s proposed Unitary Patent (UP) and also any other patents that have been granted by the European Patent Office and are in force within the EU. For more details, see our previous post here. The UPC is created by the Unified Patent Court Agreement (UPCA), which is an international treaty open to all members of the EU. It is not an EU regulation.
The UPCA will come into force on the first day of the fourth month after it is ratified by 13 member states of the EU, which must include the three member states in which the greatest number of European Patents are in force. At present the “big three” are Germany, France and the UK, so the UPCA cannot come into force until either it is ratified by the UK or the UK leaves the EU and ceases to be a “member state”. So far, the UPCA has been ratified by 11 member states, including France but not including Germany or the UK.
In order to allow the UPC administration to prepare for the opening of the Court before the UPCA comes into force, a Protocol on Provisional Application has been agreed. During a provisional application period, the administration of the court can begin, and staff can be appointed.
On 28 November 2016 Baroness Neville-Rolfe, who was then the UK Minister of State for Intellectual Property, announced that the UK would proceed with its preparations to ratify the Unified Patent Court Agreement. Since then, Baroness Neville-Rolfe has been replaced as UK Minister of State for Intellectual Property by Jo Johnson, who told the Science and Technology Select Committee on 11 January 2017 that it is still the government’s position that the UK will ratify the UPCA.
CIPA held a seminar on 31 January 2017, with presentations by Laura Starrs, Head of the UK Intellectual Property Office’s UPC Task Force, and Kevin Mooney, Chairman of the Committee drafting the Rules and Procedure of the UPC, who made the following points
Likely Timetable for the UPC Agreement to come into force
March 2017 – The UK ratifies the UPCA (apparently there will be an attempt to get the treaty ratified before Article 50 of the Lisbon Treaty is triggered). The UK would be the 12th state to ratify.
May 2017 – The German parliament consents to ratification of the UPCA. Since Germany would be the 13th state to ratify, and France has already ratified, this removes the last obstacle to the coming into force of the UPCA. However, Germany will not actually ratify the UPCA at this time, so this will not cause the UPCA to come into force. When Germany notifies this parliamentary approval to the General Secretariat of the Council of the European Union, it triggers the Provisional Application of the UPCA in accordance with the Protocol to the UPCA provided that the other states that have ratified the UPCA have also ratified the Protocol by then (some of them haven’t yet, and need to be leant on).
Once Provisional Application has begun, the first meeting of the Administrative Committee will be held to formally adopt the various draft regulations such as the Rule of Procedure and the rules governing practitioners’ certificates. The first meeting of the Advisory Committee will also be held, primarily in order to submit formally the names of proposed judges to the Administrative Committee.
September 2017 – Provided that there are no unexpected problems, Germany ratifies the UPCA. This triggers the three-month period for the coming into force of the UPCA. The “Sunrise Period” begins. During this period, Representatives may register with the UPC and patentees may “opt-out” their existing EP patents from being subject to the UPC (remember that unless they are opted out, existing European Patents in the states covered by the UPC automatically become subject to the jurisdiction of the UPC). We are all strongly encouraged to use this sunrise period to get registered, to learn how to use the Case Management System, and to get on with opt-outs, so that everything is ready by the time the court begins to function.
1 December 2017 – The UPC opens for business.
In addition to providing a court system for the EU’s proposed Unitary Patent, the UPC will also be the only court with jurisdiction to hear validity and infringement disputes concerning ordinary national patents granted by the EPO and in force in any country covered by the Unitary Patent system. However, these EP national patents can be opted out of the UPC’s jurisdiction (and opted back in again) during a 7-year transitional period.
The “Opt-Out” system must be operated with care and due diligence. Opting out and in again must be done by the proprietor. The proprietor is defined as the person entitled to be entered in the register as the proprietor, not the person who actually is entered. Therefore if there are unregistered assignments, the opt-out must be done in the name of the true proprietor and not the registered proprietor. Representatives will have to make proper enquiries to check who the actual proprietor is, to avoid getting this wrong. If the wrong details are given, the opt-out will not be valid (until corrected, and then only from the date of correction). If a European Patent is owned by different people in different countries, the opt-out application must be made by all proprietors.
UK Domestic Law
UK domestic provisions for UPC are largely complete. However, it is still necessary to pass regulations (a) to implement the Protocol on Privileges and Immunities, and (b) to extend the UPC to the Isle of Man.
The UPC, Brexit and the CJEU
There seems to be a strong feeling that the UK should remain a part of the UPC system even after leaving the EU. It was stressed that the UPC is an international court created by an international treaty. It is not a UK court, even though a part of the Central Division sits in London. Consequently, although the UPC will be subject to the jurisdiction of the CJEU, this does not have the consequence that any UK court will be subject to the CJEU. This is seen as providing political acceptability for the UK’s continued membership after leaving the EU. It is not clear what steps will be required for the UK to continue to be part of the UPC after Brexit. Counsel consulted by CIPA provided one opinion, setting out certain changes that should be made. Some German constitutional lawyers have argued that no action is needed at all. The UPC Agreement does not in fact include any provisions for members to leave. However, UK lawyers who are not European Patent Attorneys will only be able to continue to practice at the UPC if the UPCA is amended, as the right of lawyers currently applies to those who are authorised to practice before a court of a contracting EU Member State
The Unitary Patent
In practice, there is no point in being part of the UPC if we are not also part of the Unitary Patent system. It will be necessary to negotiate an agreement between the UK and the EU to enable the UK to remain part of the UP system after Brexit (because the UP is created by EU regulations, unlike the UPC). This will require political will. In the rest of the EU, it is seen as highly desirable that the UK should remain within the UP system, as this will make the Unitary Patent much more attractive to patentees.
Scott & York Comment
At the practical level, it seems as if the actions necessary to implement the UPC and the UP systems are largely done, and everything should be ready for the systems to start at the end of this year. The UK Government is currently keen to proceed. However, domestic politics (with regard to continuing involvement in EU-related institutions) and international politics (with regard to the agreements necessary to allow the UK to remain part of these systems after leaving the EU) have the potential to disrupt matters hugely. We are likely to hear more on this subject in the coming year.
Article by Alasdair Kennington