The UK government has recently indicated that it backs the UPC and Unitary Patent. That has ended some
speculation about how or whether the UK would participate following
the UK "Brexit" referendum decision of 23 June 2016 to
leave the EU. On 28 November 2016, Baroness Neville-Rolfe, UK
Minister of State for Business, Energy and Industrial Strategy,
stated at a meeting of the EU Competitive Council that the UK
will ratify the agreement on the UPC (which is a pre-requisite for the system to
come into operation under the currently formulated
inter-governmental UPC Agreement).
Although the UPC is not itself an EU
body, it had been suggested CJEU Opinion
1/09 of 8 March 2011 indicated that all participants of the UPC and Unitary Patent system must be EU Member
States. This had caused some concerns that if the UK ratified the
UPC Agreement to allow the new system to
start it would later be forced to leave upon the UK's exit from
the EU. An alternative concern was that the system might go ahead
without the UK (and its experienced judges) and require moving the
Central Division for Life Sciences from London. However, since the
23 June 2016 referendum decision, a number of credible legal
opinions, particularly from Germany, have suggested that Opinion
1/09 was misinterpreted. Instead, they argue, the legal framework
of the UPC and Unitary Patent system can
accommodate a post-Brexit UK with relatively modest amendments.
Aside from the legal issues, questions have been raised whether
the UK can stay in the UPC as a political
matter, post-Brexit. However, these may be overstated. The UK will
continue to be a party to the European Patent Convention and
participate in the EPO (both of which
arise from inter-governmental agreement). The UPC and Unitary Patent system can be thought of
similarly. If the UK is willing to be part of the system, including
having the CJEU as the appellate court,
it is submitted that it can participate. A challenge to that UK
participation by some other participating state would appear
politically unattractive, given the lobbying around Europe for the
UK to ratify.
As a practical matter the UPC system
is likely to be up and running for over a year by the time the UK
actually leaves the EU. By then, the UK will be integrated into the
court infrastructure; UK judges and staff will be working in the
UPC system; and cases involving the UK
will be in progress. It would be very disruptive to users to then
try to carve out the UK.
Perhaps the biggest question now is "when will the UPC and the Unitary Patent come into
force?" Some assistance in answering this question came on 14
December 2016, when the UK signed the Protocol on Privileges and Immunities of the
Unified Patent Court. Amongst other matters, the Protocol
provides EU privileges and immunities to the judges and staff of
the Unified Patent Court in those countries hosting divisions of
the court. This important instrument must be ratified by the UK
together with the UPC Agreement before
the UPC can open. It is understood that
the UK, in conjunction with its Intellectual Property Office, is
working to a timetable in which orders of ratification for the
UPC Agreement and the Protocol will be
presented to Parliament for approval in February/March 2017,
leading to ratification of both instruments shortly afterwards.
Once Germany then ratifies, assuming its stated intention to do so
after the UK, the provisional period of the UPC will then begin. Parties can begin to
opt-out European patents from the UPC
system during this period, if they wish to do so.
The UPC and the Unitary Patent will
start receiving cases on the first day of the fourth month after
the final ratification. According to the above timetable this could
be as early as the end of 2017, although it is unclear whether
other processes, such as recruitment of judges and other staff, as
well as preparation of court buildings and IT systems, will be
ready by this time. Consequently, it is expected that the German
ratification will be used to control the provisional period and
"go-live" dates until the UPC
system is fully ready.
Taylor Wessing has written and advised extensively on the
subject of the UPC and Unitary Patent, as
well as providing a series of webinars, news and practical
guidance. These can be found on our
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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