Ireland and the Unified Patent Court

Ireland is an attractive destination for innovative companies to do business and it has firmly established itself as an important jurisdiction both for protecting and enforcing patent rights, and challenging invalid monopolies. Ireland’s participation in the Unified Patent Court (UPC) would represent an unrivalled opportunity not only for Irish businesses, but those from other English-speaking jurisdictions such as the UK and US too, to access the new system from a common law jurisdiction.

Ireland’s participation in the UPC system has still to be confirmed. The country’s formal ratification of the UPC Agreement (UPCA) is subject to a referendum. It is likely that the referendum will be held in June next year, to coincide with the European Parliament elections.

The UPC in-brief

Years in the making, the UPC became operational on 1 June 2023. Case law of the court is beginning to be established. The UPC comprises a Court of First Instance, a Court of Appeal and a Registry. In addition, the UPC also provides a Patent Mediation and Arbitration Centre to foster amicable settlements. The judges sitting on the UPC include both legal and technically qualified judges.

The opening of the UPC is considered to be the biggest overhaul of Europe’s patent litigation market in a generation. It is expected to enhance legal certainty through greater harmonisation in patent case law.

Ireland’s current position

Ireland signed the UPCA in 2013 but has yet to formally ratify it – a move that will require legislation to be passed in Ireland’s parliament. Ratification would mean the Irish courts ceding some jurisdiction in patent litigation matters to the UPC. This transfer of sovereignty and judicial powers to the UPC, an international body, requires a referendum under the Irish constitution.

In June 2022, the Irish government reaffirmed its commitment to hold a referendum. Ireland’s then deputy prime minister, now prime minister, Leo Varadkar said the government’s intention was to schedule the referendum for 2023 or 2024. 

The Irish government has highlighted the following benefits of the unitary patent and UPC system:

• reduced costs for patent proprietors, which is of particular relevance for small and medium sized enterprises (SMEs), as a unitary patent will offer substantial savings on renewal fees across the participating member states;
• a simplified court system allowing for consistency of judicial approach in patent cases with effect in all UPC participating member states;
• a single system in which to litigate patents offers less red tape and lower costs, with no need to deal with multiple national court systems to enforce patent rights in UPC participating member states;
• patent proprietors will be able to choose between the protection of a national patent, a traditional European patent, or a unitary patent, providing greater choice for innovators, researchers, businesses, and SMEs;
• research and development (R&D) activities may increase as business resources are not diverted to multiple national litigations and could therefore be redirected to R&D;
• streamlined UPC territory-wide patent protection may incentivise Irish businesses to export to a greater number of countries; and
• a local division of the UPC in Ireland would provide Irish businesses with the facility to litigate on home soil and create a wider pool of national skills and competences in intellectual property including, for example, legal services, and patent agencies.

The future of the UPC in Ireland

The UPC’s Court of First Instance is divided into local, regional, and central divisions. In 2014, the Irish government approved Ireland’s proposed participation in the UPC and the setting up in Ireland of a local division of the court, subject to the passage of a constitutional referendum.

An Irish local division would provide a useful means of access to the UPC system for patentees hailing from the US, UK and other English-speaking jurisdictions. As forum shopping between different local divisions in respect of patent infringement actions is to be expected, an Irish local division would provide Ireland with a powerful advantage in attracting such litigants.

On 13 July 2022, an Irish parliamentary committee discussed the UPC with representatives from the Irish Business and Employers Confederation (IBEC).

Naoise Gaffney, chair of the IBEC corporate intellectual property and IP group, said at the time: “After Brexit, Ireland has two powerful and unique advantages over other UPC locations. We should bear in mind that a lot of the patent litigation that will take place in the UPC will be global in nature and involve parties originating outside Europe. Being able to litigate on a pan-European basis before a court with native English proficiency and common law experience is a big deal for many such parties, particularly for those from countries with their own common law traditions like the US. Ireland can now take advantage of a marketplace the size of EU and combine it with the fact the country is a hub of patent-intensive industries, both multinational and indigenous.”

On 14 March 2023, IBEC and the Association of Patent and Trademark Attorneys (APTMA) called on the Irish government to hold the necessary referendum in November 2023, alongside the upcoming referendum on gender equality. However, the UPC referendum now looks set to be held along with the local and European elections in June 2024.

Why Ireland?

The UPC borrows aspects from both the common law and civil law legal systems. As a common law jurisdiction, Ireland offers a familiar route into the UPC for businesses based in common law jurisdictions such as the US and the UK.

In the first five months of the UPC, the vast majority of actions have been filed in the German language, which has limited the pool of judges able to hear the proceedings.  At a recent event attended by Pinsent Masons, UPC judges encouraged parties to submit pleadings and argue cases in English – particularly where they are seeking urgent injunctive relief – as it is the only language common to all divisions of the court. Pleading in English means that urgent cases can be heard by the standing judge, who may be located in another country to the one in which the application is made.  

Given the UK’s non-participation in the UPC system post-Brexit, Ireland would be the only native English-speaking jurisdiction. It is therefore poised to hold a significant and unique position, not just through the work of the proposed local division, but also on the wider EU stage.

Co-written by Hannah McLoughlin and Bridin Redmond of Pinsent Masons.