Home » Patents » UPC Update February 2018: UK and DE progress and the future of the UPC

UPC Update February 2018: UK and DE progress and the future of the UPC

Keltie LLP

K2 IP Limited

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IMG_8533-0The UK has now completed all its legislative steps with respect to the UPC Agreement and UPC’s Protocol on Privileges and Immunities and is in a position to ratify the UPC Agreement. However, the potential timescale of the constitutional court challenge in Germany and the remaining ratification/implementation period means, in IPcopy’s view, that the UPC system will not come into force, at least in its current configuration.

In the last few weeks, the UK Privy Council has approved the Unified Patent Court (Immunities and Privileges) Order 2018. This means that all the required pieces of legislation in the UK are now in place and the UK is, if it so chooses, in a position to formally ratify the UPC Agreement and the Protocol on Privileges and Immunities. Ratification will require the UKIPO to ask the Foreign and Commonwealth Office to ratify which in turn will require Boris Johnson to sign off a formal letter that will then need to be deposited in accordance with the provisions of the UPC Agreement.

So, on the face of it, the UK has maintained its commitment to continue with its preparations to ratify the UPC Agreement. However, it remains to be seen whether the UK will want to carry out the final steps of ratification given that there are now only 13 months left until the UK leaves the EU (“B-day”) and the UK’s future participation in the unitary patent system post-Brexit has not been officially addressed.

A possibly larger issue however is the status of the UPC complaint that was filed last year in the German Constitutional Court. Last week the court published a list of cases that it anticipates dealing with in 2018 and the UPC complaint was on the list (see entry 11 on this list).

Although the complaint is on the list there is no indication of the order in which the cases may be heard or even if the complaint will be heard this year (it is noted in this regard that the complaints against the EPO- see entry number 9 – were apparently also on the list last year).

It is likely that the constitutional court will take at least a few months to come to a decision. However, even if the case is quickly decided in a favourable manner as far as the UPC project is concerned then IPcopy thinks we’ve already essentially run out of time to get the system running before B-day.

The provisional application phase of the UPC is anticipated to run for 6 months before the Court opens in order to allow all the court systems to be put in place in time. Additionally the German ratification process is not complete since it has been paused due to the constitutional court challenge. IPcopy thinks it possible that it could take up to 6 months to complete this process even if the German court challenge is dismissed. Once this is combined with the provisional application phase then it seems that at least a year could be needed before the system could go live.

Additionally, for the unitary patent system to come into effect in its current form assumes that the UK ratifies an agreement just months before its status with the EU changes to such an extent that it cannot stay part of the system (unless there are some significant changes).

The UK’s (non-)participation in the unitary patent system, either by design (not completing ratification) or by consequence of leaving the EU following ratification, also raises enough of a question in IPcopy’s mind to ask whether the other participants of the system will want to push ahead anyway with getting the system running.

If the unitary patent system does, by some great effort, go live before 29 March 2019 then, as soon as the UK leaves the EU, one portion of the central division of the UPC will suddenly become non-operational and one of the more significant participants of the system will also cease to be a member.

All of which is a long winded way of IPcopy saying that the UPC now seems like, at the very least, it will need to go back to the drawing board before it can see the light of day.

Mark Richardson 27 February 2018


1 Comment

  1. Russell Barton says:

    Thanks for this Mark

    As you indicate there still seems a lot of uncertainty over the timetable for the German complaint.

    A couple of things that occur to me though:

    1. I believe Germany was ready to ratify hence why the Supreme Court asked the President not to ratify whilst the complaint was being considered. For the PAP to start it just requires notification of parliamentary approval of the UPCA from Germany which I would assume could be given very quickly IF the complaint was completely dismissed. The UK has already given notification but I think they are still short by two other countries even if Germany goes ahead.

    2. I’d be interested to hear from from anyone suitably qualified on EU law as to the likely effect of a transition period on the UK’s status wrt the UPCA. We obviously don’t know that we will even have a transition yet but in the EU’s draft https://ec.europa.eu/commission/sites/beta-political/files/draft_withdrawal_agreement.pdf

    Art 122 “Unless otherwise provided in this Agreement, Union law shall be applicable to and in the United
    Kingdom during the transition period.”

    Art 123 “For the purposes of the Treaties, during the transition period, the parliament of the United
    Kingdom shall not be considered to be a national parliament of a Member State”

    So should the UK be considered a Member State for the purposes of the UPCA? If not does that matter if Union Law (including the UP Regulation) still applies and the UK has already ratified?

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