Out-Law / Your Daily Need-To-Know

UK ratification of UPC Agreement won't happen in 2015, IPO confirms

Out-Law News | 29 Jun 2015 | 10:56 am | 2 min. read

The Unified Patent Court (UPC) Agreement will not be ratified in the UK this year, the Intellectual Property Office (IPO) has confirmed.

In a statement sent to Out-Law.com, the IPO ruled out ratification of the Agreement this year but said that it intends to complete the "domestic preparations" for ratification ahead of the UK referendum on whether the country should remain in the EU, which is scheduled for some time in 2017.

"The UK will ratify the Agreement once all necessary preparations are in place," the IPO said in its statement. "This includes legislative changes, including amendments to the Patents Act to recognise the jurisdiction of the UPC and the territory of the unitary patent and also legislation giving the UPC the relevant privileges and immunities as an international institution. There are also practical considerations such as finding a location for the court and ensuring that this is fitted out suitably. The necessary preparations should be completed by spring 2016."

Plans to introduce a new system that will enable businesses to obtain unitary patent protection across participating EU countries have been worked on for years. A new legal framework has been developed to establish and underpin the unitary patent regime, and a new Unified Patent Court, with central, regional and local divisions, is being created too to handle disputes concerning the validity and alleged infringement of unitary patents. Importantly, the UPC will also have jurisdiction for disputes concerning traditional European patents – currently enforced on a national basis – unless the patent has been 'opted out' of the exclusive jurisdiction of the UPC by the patent holder during a transitional period of at least seven years.

Before the unitary patent framework can be finalised and unitary patent protection can become reality, at least 13 EU countries, including the UK, France and Germany, must ratify the UPC Agreement, which was reached in February 2013.

Patent law specialist Victoria Bentley of Pinsent Masons, the law firm behind Out-Law.com, said: "This confirms our expectation that ratification will take place well ahead of the UK referendum on whether to remain in the EU." 

"In any event, the UPC Agreement is drafted to allow for changes to membership of the EU. It requires ratification by the three largest member states in terms of number of European patents, which are Germany, the UK and France. If the UK were no longer a member state, then ratification by The Netherlands would be mandatory instead," she said.

Bentley added: "We also have visibility now of the proposed costs for using the new court, as well as the fee to 'opt out' a traditional European patent from the UPC's exclusive jurisdiction.  The proposed opt out fee is €80 per European patent, or patent family.  Further details of the proposed costs are set out in the UPC Preparatory Committee's consultation document published on 8 May (23-page / 215KB PDF). However, interested parties have until 31 July 2015 to submit comments on the proposed costs and fees, and it is expected that the Committee will face calls to revise this fee downwards, given that its purpose is to cover administrative costs of the opt out and that it is a cost that patent owners wishing to opt out will face simply to maintain the status quo."