Out-Law News | 29 Nov 2016 | 2:47 pm | 3 min. read
The UK government announced it is "proceeding with preparations to ratify the Unified Patent Court Agreement" and that those preparations will now continue "over the coming months".
To ratify the UPC Agreement, the UK must pass legislation to give recognition to the judicial framework which will underpin a new unitary patent system. Disputes over the validity and infringement of unitary patents, and European patents that are not opted out of the UPC system during a transition period, will be resolved before the new courts.
The announcement comes after months of uncertainty over the future of the planned unitary patent and UPC framework in light of the UK's vote to leave the EU.
Patent law and life sciences expert Helen Cline of Pinsent Masons, the law firm behind Out-Law.com, said the announcement was "good news for the UPC project" but that uncertainties remain.
In a statement, UK minister for intellectual property, Baroness Neville Rolfe, said: "The new system will provide an option for businesses that need to protect their inventions across Europe. The UK has been working with partners in Europe to develop this option."
"We will seek the best deal possible as we negotiate a new agreement with the European Union. We want that deal to reflect the kind of mature, cooperative relationship that close friends and allies enjoy. We want it to involve free trade, in goods and services. We want it to give British companies the maximum freedom to trade with and operate in the single market – and let European businesses do the same in the UK. But the decision to proceed with ratification should not be seen as pre-empting the UK’s objectives or position in the forthcoming negotiations with the EU," she said.
Cline said that continued UK participation in the project is needed to ensure that the proposed new patent and court system remains attractive to industry. However, she said the government's statement does not clarify uncertainty about the UK's participation in the unitary patent system in the longer term.
"It does not look like the UK has agreed any mechanism for continuing participation in the unitary patent system after the UK leaves the EU," Cline said. "This is now most likely to be discussed as part of the wider negotiations that will take place after Article 50 is triggered."
"Being able to remain a participant is by no means certain. It has always been assumed that existing EU case law limited participation in the UPC project to EU member states only. Therefore, there is a risk that moves to secure the UK's continuing involvement as a non-member state could be challenged before the Court of Justice of the EU. However, this interpretation of the EU case law is being re-evaluated and if a satisfactory solution can be found, the unitary patent system could become truly European and opened up to other non-EU countries such as Norway and Switzerland," she said.
"However, for the time being, the UK government's announcement creates new, possibly unwelcome, uncertainties for patent holders around the permanency of the UK's involvement. These uncertainties will need to be considered as part of an overall patent strategy," Cline said.
The UPC Agreement needs to be officially ratified by at least 13 EU countries, with that number including France, Germany and, as it stands, the UK, for the Agreement to take effect. The Agreement also currently requires countries participating in the new unitary patent and UPC system to be EU members.
In September, in confirming its own ratification of the UPC Agreement, the Netherlands said that Germany was also expected to ratify "shortly". However, Cline said that it is thought likely that Germany will hold up ratification until the UK ratification process is complete.
The Netherlands became the eleventh country to ratify the Agreement and the legislation needed for Italy to ratify and implement the UPC Agreement came into force this week. France is among the countries to have already ratified.
Patent law expert Emmanuel Gougé of Pinsent Masons said French businesses would welcome the UK's announcement.
"The French industry has always expressed its support towards the UK being part of the UPC and has supported all attempts to find a solution in relation thereto, so a majority of businesses in France will see the UK's decision as a very positive step forward," Gouge said.
The UK's announcement that it would proceed towards ratification of the UPC Agreement was confirmed at a meeting of government ministers from across the EU on Monday. In a short statement, the Competitiveness Council, a branch of EU law-making body the Council of Ministers, said the UK's announcement "paves the way for the unitary patent protection system to enter into operation as soon as possible in 2017".
Cline said it is possible that the unitary patent system could be operational and the courts open for business by the middle of next year, but a more probable timetable is autumn or winter 2017.