Home » Patents » The 12 point Brexit plan and the CJEU – can the UK be part of the UPC post-Brexit?

The 12 point Brexit plan and the CJEU – can the UK be part of the UPC post-Brexit?

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IMG_8533Can the UK continue with the UPC post-Brexit? IPcopy suggests a tentative way forward.

After months of soundbites we finally heard the “plan” for Brexit this week when the Prime Minister gave a speech at Lancaster House that detailed a 12 point plan for leaving the EU (Full transcript here).

Objective 2 of this action plan related to the control of our own laws and leaving the jurisdiction of the CJEU (see extract from the transcript in footnote below1). This in turn lead several commentators to speculate that this would block the UK’s participation in the unitary patent scheme post-Brexit since, under the UPCA, questions relating to the interpretation of EU law can be referred from the UPC to the CJEU.

How, in light of this link between the CJEU/UPC and the PM’s statement, could the UK continue participation in the UPC?

The simplest answer to the above question is that post-Brexit the UK will have to leave the UPC and unitary patent. However, this is seemingly at odds with statements made recently by Jo Johnson (see our article from earlier this week) where it was suggested that the UK has a great interest in being part of the UPC and that our continued participation will be part of the Brexit negotiations.

So, IPcopy wondered if there was a way of reconciling this apparent conflict such that the UK could stay part of the UPC. 

The UPC and the CJEU

There’s a good summary/overview of the nature of the Unitary Patent Regulation and the Unified Patent Court Agreement in the UPC opinion produced by Richard Gordon QC and Tom Pascoe of Brick Court Chambers. The upshot however is that the UPC is not an EU court but an international court and the UPCA is not an EU agreement but an international agreement.

The UPC broadly has jurisdiction over infringement and revocation of patents that have been granted under the European Patent Convention, an international agreement made up of a mixture of EU member states and non-EU countries. The Court comprises a Court of First Instance and a Court of Appeal. Questions on the application of EU law (as opposed to decisions on infringement/revocation) may be referred to the CJEU to ensure Union law is consistently applied (see Article 21 of the UPCA).

The UPC has no impact, however, on national law and, in particular, it is noted that patents granted under the UK Patents Act 1977 do not fall within the competence of the UPC. Instead, cases relating to such “UK Patents Act” patents need to be brought in the IPEC, the Court of Session or the High Court.

So, maybe what the PM said was true, from a certain point of view2

IPcopy notes that Jo Johnson repeatedly stated that the UPC was an international court and not an EU institution. This, taken in conjunction with the PM’s statements, makes us wonder if UK Gov is going to argue that what they’ve (Theresa May and Jo Johnson) been saying is consistent because even if we stay within the UPC (and therefore maintain some kind of link to the CJEU), our own national patent law (UK Patents Act 1977) is outside the jurisdiction of the CJEU.

Perhaps in this way the Government is looking to pull us out of the EU but still maintain its presence in the UPC?

Mark Richardson 19 January 2017

Footnotes
1 Extract from the 12 point plan

2. Control of our own laws

That means taking control of our own affairs, as those who voted in their millions to leave the European Union demanded we must.

So we will take back control of our laws and bring an end to the jurisdiction of the European Court of Justice in Britain.

Leaving the European Union will mean that our laws will be made in Westminster, Edinburgh, Cardiff and Belfast. And those laws will be interpreted by judges not in Luxembourg but in courts across this country.
Because we will not have truly left the European Union if we are not in control of our own laws.

2 Star Wars

Yes, that was a very tenuous and somewhat strained reference to the Star Wars universe but the memory of Rogue One is still with me so forgive me!

I thought about taking the reference further until I realised that both sides in the Brexit negotiations (UK and EU) probably each regard the other as the Empire.

Having said that I’m sure they’ve both worked out who to cast in the role of Bo Jo Binks…..


4 Comments

  1. Edoardo Feira says:

    Interesting point of view.

    The UPC may well be an “international agreement” and not (God forbid) a “sort of EU agreement”, if that makes selling it to the UK public easier.

    But, however one puts it, in the end the decision on whether a UK entity is infringing a patent owned by, say, a non-UK entity, will ultimately rest with the CJEU. So a foreign court will have the last word on a very national matter. At least from the point of view of the alleged infringer.

    Besides the difficulty in selling this to the public I wonder how compatible this may be with the UK legal system at all.

    Another interesting point raised is the brexit negotiations. I though it would have been “smart” for the UK to exchange the UPC ratification with something else during the negotiations.

    But if the UPC is ratified anyhow, possibly soon, as it would appear, what is there left to negotiate? The court itself mostly needs the UK ratification in order to start. Once up and running if the UK has to leave the system it would still be a major issue but, somehow, less so than compared to the non starting the court at all.

    Also, whether the UK can remain in the UPC in a post brexit scenario seems to me to depend more on the UK than on the EU. So what could the UK ask the EU related to the UPC participation?

    Interesting times ahead of us.

  2. Anonymous says:

    Some UPC articles that make me wonder how, despite the optimistic opinions of those having an interest in the ratification, the UK might participate in the UPC (and vice versa) after Brexit:

    1 The Unified Patent Court shall be a court common to the [UK and the] Contracting Member States and thus subject to the same obligations under Union law as any national court of the [UK].

    4.1 The Court shall have legal personality in [the UK] and shall enjoy the most extensive legal capacity accorded to legal persons under the national law of [the UK].

    20 The Court shall apply Union law in its entirety and shall respect its primacy.

    21 As a court common to the [UK and the] Contracting Member States and as part of their judicial system, the Court shall cooperate with the Court of Justice of the European Union to ensure the correct application
    and uniform interpretation of Union law, as any national court [of the UK], in accordance with Article 267
    TFEU in particular. Decisions of the Court of Justice of the European Union shall be binding on
    the Court.

    22.1 The [UK and the] Contracting Member States are jointly and severally liable for damage resulting from
    an infringement of Union law by the Court of Appeal, in accordance with Union law concerning
    non-contractual liability of [the UK] for damage caused by their national courts breaching
    Union law.

    22.2 An action for such damages shall be brought against the [UK] …. The claimant shall be entitled to
    obtain the entire amount of damages awarded by the competent authority from the [UK].

    23 Actions of the Court are directly attributable to [the UK and] each Contracting Member State individually,
    including for the purposes of Articles 258, 259 and 260 TFEU, and to all Contracting
    Member States collectively.

  3. Russell Barton says:

    @ Edoardo Feira

    I don’t see how the CJEU will have the final say on whether a patent is infringed.

    Infringement of EP patents is set out in the UPCA, and the CJEU has no jurisdiction to interpret those sections as they are not EU law (with the exception of the niches of Art 27 (i), (k) and (l))

    The CJEU may have something to say on remedies and on validity under the biotech directive but even that will be rare I think, and as we recently discovered EU interpretations of the biotech directive may affect the EPO and therefore the UK even without the UPC.

    @ ipcopy

    I think the commentators stressing the incompatibility between the UPCA and May’s statements are making a mountain out of molehill. Firstly broad macro statements can’t easily be applied to the fine detail of every micro situation, secondly too strong an application of the statement could rule out all sorts of things unrelated to the EU, thirdly for reasons you suggest it isn’t literally incompatible, and fourthly I don’t think its against the spirit of it either.

    I don’t think anyone is interpreting May’s comments as meaning that we will no longer bother with international law or treaties and will write all domestic law in a vacuum.

    As summarised in the High Court Art 50 judgment, new treaties and agreements can create legal effects on the plane of international law but cannot change domestic law. EU law was different to international law because it can “override even domestic primary legislation” and “Thus, for so long as EU law is accepted and applied by the national courts of a Member State, it operates as a form of law which is in that sense superior to all domestic law”

    May’s statements to me simply suggests putting an end to that special type of law not reducing the effect international law and treaties or mitigating their implementation into domestic law. The UPCA is international law that has been implemented into the domestic UK patents act. It doesn’t have special status like EU law and as you say the CJEU has no ability to interpret the domestic law which gives power to the UPC (the amended patents act). UPC orders will be enforced in the UK by a UK court in accordance with Schedule A4 4 (3).

    I also don’t think its sensible to interpret May’s statement as meaning that no decision decided by foreign judges can ever affect the UK. I think that most people expect that ability of EPO’s TBA to revoke an EP(UK) patent, the ECHR, the ICJ/ICC etc to carry on as before.

    If a British company (post-Brexit)_ wants a single product to be sold in the UK and the EU then they will need that product to comply with both sets of laws and may have to listen to the CJEU as well as the UK courts. Since the UPCA will make a single judgment and provide remedies that it are to take effect in the EU it stands to reason that the judgment and associated remedies have to be compatible with EU law, and the final court to decide on that is the CJEU. The remedies will also presumably need to be compatible with UK law to be enforceable in the UK. Should the enforcement of an order from the UPC ever be considered to be incompatible with UK law, then I suspect the final adjudicator would be the UK Supreme Court.

    @Anonynous

    Most of those don’t seem problematic to me. The Brussels/Lugano replacement may be the trickiest bit which I think is hinted at even by an optimist here http://kluwerpatentblog.com/2016/11/26/uk-will-not-accept-supremacy-eu-law-separate-agreement-ratifies-unified-patent-court-agreement/

  4. Peter Parker says:

    @IPCopy
    An analysis of the contents and wider implications of the Gordon/Pascoe opinion has recently been published elsewhere (http://www.stjerna.de/gp-opinion/?lang=en). I’m not sure whether the opinion will ultimately be of much assistance.

    @Russell Barton
    I would say that the CJEU can pretty much be expected to assume jurisdiction also over patent infringement questions once asked. As you may remember, one issue in the second legal action against the UP regulation (C-146/13) was the lack of a legal basis after the removal of Articles 6 to 8. Since the CJEU has accepted in its judgment that the contents of the UP can be regulated by making reference to other legal sources (ibid., para. 47), especially the UPCA, it would appear far from remote to me that the court will also seek to have its say on the referenced contents, including infringement issues.

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