Legal Alert: A Path to the UPC

Co-authored by: Herbert Kunz

The Netherlands deposited its ratification of the Unified Patent Court (UPC) Agreement on September 14, becoming the 11th contracting state to do so. As a result, only ratification by Germany and the UK is necessary for the Agreement to enter into force. Both Germany and the UK are close to ready to ratify; however, the 51.9% vote for the UK to leave the European Union (Brexit) this summer has cast doubt on whether ratification will proceed.

There is nothing to stop the UK from ratifying the UPC Agreement if it chooses to do that now, while the UK remains an EU member. If the UK ratifies, Germany appears likely to also ratify. That would permit the UPC to open for business and the EPO to begin granting Unitary Patents (UPs). If the UK does not either ratify or withdraw from the UPC Agreement, the UPC and UP arrangements are likely to remain in limbo until the UK either leaves the EU or withdraws from the UPC Agreement.

The UK IP Federation and others, however, have questioned whether the UK should join the UPC and UP arrangements if there is no guarantee they could continue in those arrangements after Brexit. In particular, concern arises out of Opinion No. 1/09 of the EU Court of Justice (CJEU) that rejected an earlier European patent court proposal, because it would have included non-EU member states who would not be bound by EU law and decisions of the CJEU. It was for that reason that the UPC Agreement is currently limited to participation by EU member states. Similarly, the UP regime would be created by EU regulations, currently applicable only to EU member states.

The Federation and two other UK IP groups asked two EU law experts several questions relating to whether the UK could remain in the UPC and UP arrangements after Brexit. On September 12th, UK barristers Richard Gordon QC and Tom Pascoe delivered their opinion. While they could not provide a guarantee, the opinion states that the UK could negotiate to remain in these arrangements by agreements with the EU and UPC Contracting States as part of Brexit. The opinion indicates that it may be easier to do that if the UK ratifies the UPC Agreement before Brexit, which also is the view expressed by EPO President Battistelli in speeches in New York City this past week.

In other UPC and UP news, the lower house of Italy’s parliament approved legislation this past week, which would permit Italy’s ratification of the UPC Agreement. Milan is a leading candidate to replace London as the site of the UPC central division that will deal with life sciences patent litigation, if the UK no longer participates in the UPC.

Stay up to date on UPC and UP news on our website: www.fr.com/services/patent-law/unitary-patent.