Counsel's Opinion sought by UK IP groups on the possibilities for the UK to continue to participate in the unitary patent and Unified Patent Court post Brexit now released
Shortly after the Brexit referendum, the Intellectual Property Lawyers Association (IPLA), of which we are a member, along with other IP representative groups, jointly requested an Opinion from counsel Richard Gordon QC and Tom Pascoe of Brick Court Chambers on specific questions concerning the impact of Brexit on the UK's participation in the UPC. This Opinion has now been made public – see here
In summary, counsel's opinion on the questions asked of them was the following:
QUESTION 1A: CAN THE UK CONTINUE TO BE PART OF THE UNITARY PATENT?
The UK may only continue to participate in the unitary patent by entering into a new international agreement with the participating EU Member States. The permissibility of such an agreement under EU law would turn upon essentially the same matters as the legality of the UK’s continuing participation in the UPCA.
QUESTION 1B: CAN THE UK CONTINUE TO PARTICIPATE IN THE UPCA?
It is legally possible for the UK to continue to participate in the UPCA after ‘Brexit’ (although the CJEU’s reasoning in Opinion 1/09 is opaque and there is therefore a risk that the CJEU would find otherwise).
QUESTION 1C: CAN THE UK CONTINUE TO HOST THE LIFE SCIENCES/CHEMISTRY SECTION OF THE CENTRAL DIVISION?
Provided that it is legally possible for the UK to continue to participate in the UPCA, there is no reason why it cannot continue to host a section of the central division.
QUESTION 2: WHAT CHANGES WOULD HAVE TO BE MADE TO THE UPCA?
A number of amendments would have to be made to the Agreement [which they set out in detail in the Opinion].
QUESTION 3: WHAT WOULD THE UK HAVE TO SIGN UP TO?
The UK’s continued participation in the UPCA would require it to submit to EU law in its entirety as regards proceedings before the UPC. It would also need to sign up to an appropriate jurisdiction and enforcement regime (such as the Lugano Convention).
QUESTION 4: DOES IT MATTER WHETHER THE UK JOINS THE EEA?
Our advice does not depend upon whether the UK joins the EEA.
QUESTION 5: IS IT POSSIBLE OR DESIRABLE TO OBTAIN AN OPINION FROM THE CJEU?
It would only be possible to obtain a pre-emptive opinion from the CJEU on the legality of the UPCA if the Union became a party to the Agreement.
QUESTION 6: WHAT WOULD BE THE CONSEQUENCES OF ‘BREXIT’ IF THE UK RATIFIES THE UPCA WITHOUT AMENDMENT?
If the UK ratified the UPCA, without amendment, and subsequently left the EU, any divisions of the UPC in the UK would have to cease operating. The transitional consequences of this are matters of detail to be negotiated as part of the UK’s exit negotiations.
The counsel giving the opinion made clear that their advice was confined to the six questions above, which all relate to the threshold issue of whether it is possible for the UK to participate in the UPCA.
Although this Opinion presents the theoretical possibility of the UK being part of the UP/UPC system post Brexit, it is difficult to see how this would work politically as the agreement would need to be reopened and the UK Government would be require to recognise the primacy of EU law and the jurisdiction of the CJEU in matters covered by the agreement. Even if these barriers could be overcome the CJEU might still object to a non-EU state being party to the UPC.
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© Herbert Smith Freehills 2020