Out-Law News 2 min. read

UK takes 'final legislative step' needed to ratify the Unified Patent Court reforms

A piece of legislation that UK law makers must pass so that the country can ratify a new Unified Patent Court (UPC) system in Europe has been laid before parliament.

The Order on Privileges and Immunities for the UPC is due to be debated before both the House of Commons and House of Lords, and both MPs and peers will be asked to vote on whether to approve it. Equivalent legislation is expected to be laid before the Scottish Parliament "in due course", the government said.

Both the Westminster and Holyrood orders will "require Privy Council approval", the Intellectual Property Office (IPO) confirmed in a statement.

The announcement was welcomed by patent law specialist Deborah Bould of Pinsent Masons, the law firm behind Out-Law.com.

"There had been uncertainty following the general election results as the UPC was not mentioned in the Queen’s Speech last week, so it is good news that the UK government has re-engaged on the issue and the process to ratification has started again," Bould said.

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 12 countries to have completed ratification to-date, but while German ratification moved closer earlier this year after legislation was passed in the country's parliament, a legal challenge has called into question whether those new laws are constitutional.

In November last year, the UK government confirmed that the UK would ratify the UPC Agreement, despite the country voting to leave the EU. However, since then formal ratification has been delayed, including because of June's general election. There has been continued uncertainty over whether the UK would be able to participate in the new system after the country formally exits the EU, even if its participation began prior to Brexit taking effect. The UPC Agreement currently requires countries participating in the new unitary patent and UPC system to be EU members. 

In a statement confirming the latest step towards ratification, the Intellectual Property Office said: "This is the final legislative step in the UK’s ratification of the Unified Patent Court. The Orders implement the Protocol on Privileges & Immunities and gives the Unified Patent Court its legal personality in UK law."

"The Orders are affirmative orders, which means they will be debated in each House of Parliament. Separately the Scottish Order will be debated in the Scottish Parliament.  They will also require Privy Council approval. Once this legislation has been passed the UK will be able to formally ratify the UPC Agreement," the IPO said.

Earlier this month the body tasked with laying the foundations for the new judicial system to take effect, the UPC Preparatory Committee, said that its previous target date for the UPC to become operational, of December 2017, "cannot be maintained". The Committee blamed delays to the ratification of the UPC Agreement by some countries.  

The IPO said "a new opening day" for the UPC will be announced "in due course".

Munich-based patent law experts Michael Schneider and Marc L. Holtorf of Pinsent Masons previously said that it could take approximately a year for the constitutional challenge against Germany's UPC implementing legislation to be resolved.

"This legal challenge is now set to cause delay to Germany's ratification and, therefore, the operation of the UPC," Schneider said. "It now looks increasingly likely that the earliest that the unitary patent and UPC framework could become operational will be towards the end of 2018 or into 2019."

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