'Next government' will complete UK ratification of patent reforms, IPO confirms

Out-Law News | 27 Apr 2017 | 11:57 am | 4 min. read

The forthcoming UK general election will delay the UK's ratification of a new Unified Patent Court (UPC) system until at least the summer and almost certainly push back the date on which the new framework could become operational, Out-Law.com can confirm.

A spokesperson for the UK's Intellectual Property Office (IPO) told Out-Law.com that while some work has already been undertaken towards UK ratification, it will be for "the next government" to complete "future steps".

The UPC, when established, will serve as a new judicial enforcement framework to underpin a new unitary patent system. Businesses will be able to apply to the European Patent Office for unitary patents which, if granted, would automatically confer on them patent protection for their inventions which will apply across every country that gives recognition to the unitary patent regime, which at the moment looks set to be 25 of the 28 existing EU countries.

For the new UPC system to take effect, at least 13 EU countries, including the three with the most European patents in effect in 2012 – Germany, France and the UK, must pass national legislation to ratify the UPC Agreement that the countries behind the new system finalised in 2013.

France is one of the 11 countries to have completed ratification to date, while German ratification has also moved closer in the country's parliament.

In November last year the UK government confirmed that the UK will ratify the UPC Agreement, despite the country voting to leave the EU. However, there is uncertainty over the UK's participation in the new patent regime post-Brexit as the UPC Agreement currently requires countries participating in the new unitary patent and UPC system to be EU members, and all the legislation necessary to ratify the Agreement has still to be placed before the UK parliament.

The responsibilities for UK ratification are cross-departmental within government. Last year, following work led by the IPO, changes were made to the UK's Patents Act through secondary legislation to implement the UPC Agreement and give recognition to the territory of the unitary patent.  However, a Protocol on Privileges and Immunities of the Unified Patent Court has still to be implemented. The Foreign and Commonwealth Office (FCO) has particular responsibility for leading the work on national implementing legislation for the protocol.

The protocol provides for rights to the premises of the UPC and its archives and documents, as well as its qualified exemption from "legal process" and national taxes, including in respect of the judges who sit in the court, among other things.

The forthcoming UK general election on 8 June has put a squeeze on the timeframe for legislation to be passed by the UK parliament as the parliament will be officially dissolved as of 00.01am on Wednesday 3 May 2017 and official business looks set to end today.

A number of pieces of legislation have been pushed through the so-called 'washup' phase prior to dissolution of the parliament. However, scrutiny of legislation for ratifying the UPC Agreement has not been listed as part of the scheduled business in the latest House of Commons business statement. Similarly, the House of Lords calendar does not contain a reference to such legislation coming before that House.

However, some statutory instruments can take effect without express approval being necessary from both houses of parliament. This legislation can take effect immediately although can be 'disapproved' through a 'negative procedure' within 40 days if a motion for annulment is brought before the parliament.

The IPO spokesperson said, though, that, regardless of the way the implementing legislation is introduced, the ratification process will not be complete until after the UK general election.

"The UK government confirmed its intention to proceed with preparations to ratify the Unified Patent Court Agreement (UPCA) at the Competitiveness Council in November 2016," the spokesperson said. "We need to ensure UK law complies with the UPC Agreement before we ratify."

"The Privileges and Immunities Protocol was laid in parliament on 20 January, in accordance with the requirements of the Constitutional Reform and Governance Act 2010. The Protocol is necessary to give the UPC the privileges and immunities it needs to operate. National implementing legislation through a Privileges and Immunities Order under the International Organisations Act 1968 is required before ratification of the UPC Agreement.  This is led by FCO. Once the Privileges & Immunities legislation obtains parliamentary approval, we can ratify the UPC Agreement," they said.

"The UK made the necessary changes to the Patents Act 1977 through secondary legislation in March 2016. The legislation implements the UPC Agreement and also recognises the territory of the Unitary Patent. The government has signed the Protocol on Provisional Application. Future steps will be for the next government to take, subject to factors including the parliamentary timetable," the spokesperson said.

Last month the IPO had told Out-Law.com that its preparations for ratification were "progressing" and that it was anticipating a spring 2017 launch of "the period of provisional application".

At the time, intellectual property law expert Christopher Sharp of Pinsent Masons, the law firm behind Out-Law.com, explained that the provisional application period will involve establishing the UPC as a legal entity and resolving logistical issues such as the employment of staff and installation of IT systems. It will also allow for applications from businesses to opt out their European patents from the jurisdiction of the UPC to be filed, he said.

Earlier this year, the body tasked with laying the foundations for the new judicial system to take effect, the UPC Preparatory Committee, said that it expected the UPC to  become operational in December 2017. However, it said at the time that the timescale was dependent on "the necessary ratifications" of the UPC Agreement.

Sharp said: "With summer recess to follow shortly after the election, and potentially a new government in place with new priorities, it is possible that the UK's ratification of the UPC Agreement may fall subject to delay for a number of months. The UK's formal notification of its intention to leave the EU last month means that it becomes more politically difficult for the government to ratify the UPC Agreement with every passing day, and increasingly likely that UK ratification will become part of the negotiations that will take place on the terms of the UK's exit from the EU."

"If the timetable for UK ratification does slip, it is almost certain that the new unitary patent and UPC system will not become operational until well into 2018 at the earliest," Sharp said.

After the election, the parliament will reopen on 13 June before the Queen formally opens the new session on 19 June. The parliament will then close again for summer recess on 20 July before returning on 5 September.