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30 March 2020 | Europe
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The UK will not participate in the UPC confirms IP Minister responding to House of Lords’ letter

22 April 2020

IP Minister Amanda Solloway has written to the House of Lords in response to their letter formally requesting confirmation that the UK would not be participating in the UPC. This request by the House of Lords followed a response given by the Government in February to a parliamentary question (recorded on Hansard) which said this was the case (see our post here); no formal statement had otherwise been made.

The IP minister's response was confirmatory - the UK will not take part in the UPC system. See the extract from her letter (of 24 March) below:

"As you will be aware the Government published our approach to negotiations with the EU on 27th February. This set out our vision for future cooperation between legally autonomous sovereign equals. It ruled out any obligation for our laws to be aligned with the EU's, or for the EU's institutions to have any jurisdiction in the UK. That explicitly included the Court of Justice of the EU.

Continued participation in the Unified Patent Court would mean ceding jurisdiction over key patent disputes in the UK to a court that is bound to apply and respect the supremacy of EU law, including judgments of the CJEU. Participating in such a system would be incompatible with our overall approach to future relations with the EU that I have set out above.

Consequently, the Government will not be seeking the UK’s continued participation in the Unitary Patent and Unified Patent Court."

Read full post on the IP Notes blog


 

What’s next for the UPC project? Our analysis following the German Federal Constitutional Court decision

30 March 2020

The Bundesverfassungsgericht (the German Federal Constitutional Court) has released its long-awaited ruling on the complaint against the German ratification of the UPC Agreement. It has found, by 5:3 majority, that the Act by which Germany was to accede to the UPC Agreement is void, because it was not passed with the required parliamentary majority. Without Germany’s ratification, the UPC Agreement cannot come into force. What is likely to happen next, and when?

In theory, the Consitutional Court’s objection could simply be overcome by getting the required parliamentary majority for the Act on a second attempt. The Bundestag (the German federal parliament) is still sitting, despite the ongoing Covid-19 crisis. Further, on 26 March 2020, the Federal Justice Minister at the Bundestag said that the Federal Government “will carefully evaluate the decision of the Federal Constitutional Court and examine possibilities to remedy the identified lack of form before the end of this legislative period” (that period runs until approximately October to December 2021).

Read full post on the IP notes blog


 

No plain sailing for the UPC – German Court Upholds Constitutional Challenge

20 March 2020

The Bundesverfassungsgericht (German Federal Constitutional Court) has this morning announced that it has found (by a majority decision) that the Act of the Bundestag which sought to approve and implement the Unified Patent Court in Germany is void. The Court indicated that the Act would amend the German constitution in substantive terms, but had not been approved in the Bundestag with the two-thirds majority necessary for such amendments.

In its press release, the Court stated that “in order to safeguard their right to influence the process of European integration by democratic means, this, in principle, also entails the right of citizens that sovereign powers be conferred only in the ways provided for by the Basic Law. An act of approval to an international treaty that has been adopted in violation thereof cannot provide democratic legitimation for the exercise of public authority by the EU or any other international institution supplementary to or otherwise closely tied to the EU.”

https://www.bundesverfassungsgericht.de/SharedDocs/Pressemitteilungen/EN/2020/bvg20-020.html

The decision leads to further uncertainty as to if and when the UPC will come into effect. It does not appear, however, that the reasoning precludes the UPC being adopted by Germany in a constitutionally correct manner. More analysis will follow.


 

German Federal Consitutional Court to announce UPC decision this Friday 20 March 2020

18 March 2020

The German Federal Constitutional Court, which is handling a case objecting to the ratification of the UPCA by Germany, has announced that it will hand down its decision this Friday, 20 March 2019, without a further oral hearing.

It is generally thought that the German court is likely to reject the objector’s case. If this is the outcome on Friday, all eyes will turn to the question of what the next steps are, now that the UK has left the EU and the UK Government has confirmed that the UK will not participate in the UPC system.


 

UK will not be a part of the UPC – government confirms

28 February 2020

The UK Prime Minister's Office has confirmed (27.02.20) that the UK will not be participating in the UPC system: saying "Participating in a court that applies EU law and bound by the CJEU is inconsistent with our aims of becoming an independent self-governing nation."

Perhaps not surprising, given the wider signs emerging from Downing Street of late and whilst it may be a negotiating tactic, we wouldn't bet on it. It will be interesting now to see what happens next with the UPC project, post this UK government announcement. All eyes will now turn to Germany and the approach they intend to take. What is certainly clear is that the UPC will be less attractive to business without the UK's participation in it.

Meanwhile, HSF's EU-wide patent litigation practice stands ready to manage multi-jurisdictional patent litigation as it always has, whether the UK is part of the UPC of not.

See here for the latest news on the Unified Patent Court and Unitary Patent.


 

Optimism from the EPO and UPC Preparatory Committee on UPC start date; EU JURI Committee report highlights continuing challenges

07 February 2020

Despite positivity from the EPO and UPC preparatory committee on the speed with which the Unitary Patent package (the Unified Patent Court and unitary patent system) can be implemented once a favourable decision is given by the German courts on the constitutional complaint, there remains much to do to get the UPC started, not least a decision on whether the UK can remain part of the system post-transition.

The "EU Patent and Brexit" report commissioned by the European Parliament reviews the positions of the UK Government, the European Parliament, the CJEU and the European Council on options for the UPC at the end of the Brexit transition period and whether the UK can remain a member - in the process revealing that there is still much to resolve. 

The EPO and UPC Preparatory Committee meeting

The EPO and the UPC preparatory committee met on Friday 10 January 2020, in a meeting purportedly triggered by an interview by Managing IP with the judge rapporteur in the constitutional complaint against the German UPC legislation, Judge Huber, in which he suggested that a decision on the German constitutional complaint would be given in the first quarter of 2020.  This meeting is reported on EPO website "The EPO and representatives from EU Member States call for the speedy implementation of the Unitary Patent package".

Key points to arise in this meeting were that the EPO President and representatives from EU Member States expressed their optimism that the German Court will render its judgment as announced and their hope that this will clear the way for German ratification. They emphasised that the UPC and Unitary Patent are of paramount importance to competitiveness, growth and innovation in Europe and called for the speedy implementation of the system. The EPO article emphasised the state of readiness of the UPC, with EPO President Antonio Campinos quoted as saying: "We are confident that the necessary steps can be accomplished in time for the Unitary Patent package to become operational at the end of 2020."  Alex Ramsay, the chair of the UPC Preparatory Committee had said before Christmas in his end of year message that he expected the UPC to be ready to go "early in 2021".

However, there remains much to do to get the UPC started, not least a decision on whether the UK can remain part of the system post-transition.  As Mr Ramsay said, once Germany signs the Provisional application protocol, the provisional application period would last 8 months for everything to be ready, although the sunrise period opt-out system is already ready. He also said that judge selection has continued and candidates will be informed of their selection once the provisional application period starts. In his interview with Juve, which predicts the arrival of the UPC in early 2021, Mr Ramsay stated that he was “keen to keep all the signatory states, including the UK, in the UPC system. ...it would be realistic to expect the UPC to be operational in early 2021. And yes – I believe the UK will be a part of it."

The JURI report on "EU Patent and Brexit"

The optimism of a speedy implementation of the UPC does not appear to be reflected in the "EU Patent and Brexit" report requested by the JURI Committee (the European Parliament's Committee on Legal Affairs) published in November 2019. This report reviews the various options for the UPC when the UK functionally leaves the EU at the end of the Brexit transition period, and whether the UK can stay a member of the UPC by digesting the positions of the UK Government, the European Council, the European Parliament and the CJEU.

In its analysis the report finds that: "The recent ratification of the UPCA has proved that the UK intends to stay within the framework of a European Patent system that goes beyond the EPC, even after Brexit. In certain ways this sends a somewhat mixed message, as the UK wishes to leave the Single Market of the EU and the jurisdiction of the CJEU. On the other hand, it seems not per se legally impossible that the UK can stay within the UPCA, even when not an EU Member State".  However, it goes on to say that this intention of the UK is countered by the UK Government's statement that "the end of the jurisdiction of the CJEU in the UK was one of the main intentions of the whole Brexit process".

When considering the consequences of its analysis, it reaches the following conclusions:

First, that "[m]aintaining the UK within the UPCA would need innovative legal solutions, as the UPC is an international court applying EU law -and the reason for Brexit was all about not applying EU law any more. All EU actors are of the opinion that the CJEU would have the final say about interpretation of existing EU Law, that the primacy of EU law has to be respected and that the CJEU is the ultimate guardian of EU intellectual property law. On the other hand, the jurisprudence of the CJEU is not expressly excluding the possibility to allow a non-EU Member State forming part of the UPCA".

Secondly that "As any UPCA contracting state has the right to nominate judges, any British judge would decide about the interpretation and application of EU (patent) law. It would be only logical that the UK authorities accept the primacy of EU law when it comes to judgements which have been issued by UPC sections with the participation of UK judges, especially from the London specialised section".

It seems that the issues raised in the report need to be dealt with before implementation can occur.

Interestingly, the report also suggests that to move the London Section of the UPC's Central Division somewhere else would, in the European Council's opinion, not be a purely administrative decision (as was the case with moving the European Medicines Agency), but would require the unanimous amendment of the UPC Agreement and thus the agreement of all signatories including the UK.


 

RATIFICATION OF THE UPC AGREEMENT IN SIGHT? GERMAN CONSTITUTIONAL DECISION LIKELY EARLY IN 2020

16 December 2019

As those with an interest in patents will be aware, the Unified Patent Court is still not a reality. The final ratification of the Unified Patent Court Agreement ("UPCA") required for the agreement to come into effect, is that of Germany (over 13 states having ratified including the UK and France, which, along with Germany, were the three states which were required to have ratified along with at least ten more, before the UPCA could come into force – see here for ratification details). Without the UPC established to enforce them, unitary patents cannot be granted.  Germany's ratification has yet to be received. 

The outcome is still awaited of the constitutional case objecting to a ratification of the UPCA by Germany, which was listed to be decided in 2019.  In a recent interview, Judge Huber of the German Federal Constitutional Court (which is the court due to decide the case) denied that the delay had anything to do with Brexit, rather that other important cases were also waiting to be decided and took precedence. He suggested that the case might be decided in the early part of 2020.  

It is generally thought that the German court is likely to reject the objector's case, but only once this is determined can the German government make a decision on whether to ratify the UPCA. Indications are that all administrative preparation to ratify had been made in readiness, however the issue of Brexit is also key, in governmental terms at least. In July 2019, in a response to a Brief Enquiry, the Federal Government stated that the consequences of Brexit were as yet unknown (and by implication were delaying ratification), but also reasserted the current Federal Government's commitment to the unitary patent and UPC project.


 

Ratification of the UPC Agreement by Germany continues to be held up by constitutional court case and Brexit

17 October 2019

As those with an interest in patents will be aware, the Unified Patent Court is still not a reality. The final ratification of the Unified Patent Court Agreement ("UPCA") required for the agreement to come into effect, is that of Germany (over 13 states having ratified including the UK and France, which, along with Germany, were the three states which were required to have ratified along with at least ten more, before the UPCA could come into force – see here for ratification details). Without the UPC established to enforce them, unitary patents cannot be granted.  Germany's ratification has yet to be received. 

The outcome is still awaited of the constitutional case objecting to a ratification of the UPCA by Germany, which was listed for this year (2019) but which has yet to be heard.  It is generally thought that the German court is likely to reject the objector's case, but only once this is determined can the German government make a decision on whether to ratify the UPCA. Indications are that all administrative preparation to ratify had been made in readiness, however the issue of Brexit is also key. In a response to a recent Brief Enquiry, the Federal Government stated that the consequences of Brexit were as yet unknown (and by implication were delaying ratification), but also reasserted the current Federal Government's commitment to the unitary patent and UPC project.


 

Despite an "unpredictable environment" preparations for the UPC continue

20 December 2018

The UPC Preparatory Committee has issued a “Status of the Unified Patent Court Project” press release, confirming that there are now 16 states which have ratified the UPC, and that German ratification is still awaited (dependent on the outcome of the complaint pending before the Constitutional Court in Germany) "before the project can move into the next phase, the period of provisional application". 

"Despite the current, somewhat unpredictable environment, the technical and operational preparations are continuing allowing for the project to move at pace in the event of a positive outcome from the German Constitutional Court". 

So, nothing more than was already known, but a confirmation that the status of the project is constantly being reviewed. The press release states that the Chairman of the UPC Preparatory Committee "continues to meet with the Executive Group and the operational team on a monthly basis" and notes that those that have applied for judicial positions in the Unified Patent Court are being contacted separately.


 

Italy moves the Unitary Patent a step closer

5 December 2018

The Italian Government approved a draft Bill on 21 November 2018 aimed at adapting the Italian IP Code to the Unitary Patent Regulation (EU 1257/2012) and the Unified Patent Court (UPC) Agreement. The next step before the Bill is passed will be for the Italian Parliament to give its favourable opinion.

The draft Bill will essentially amend the Industrial Property Code in Italy to incorporate unitary patent protection and the jurisdiction of the UPC.

What’s new?

  • Safety net

Under the current system a European patent acquires effect in Italy once an Italian translation of the patent has been filed with the Italian Patent Office within three months of the publication of the patent grant. Once the UPC is in place, holders of European patents will be entitled to apply for their European patents to have unitary effect in all 26 Member States that have participated in the enhanced cooperation to create the unitary patent, within one month of the patent grant being published on the European Patent Bulletin.

There is a degree of uncertainty as to whether the process for applying for unitary effect will take longer than the 3 months, in which case the patentee will have lost out on the chance to validate their patent in Italy.

The draft Bill has therefore introduced a safety net mechanism whereby if an application for unitary effect is rejected or withdrawn, the 3 month term for the validation in Italy will take effect from the date when they receive the rejection or of the withdrawal. This will allow patentees to validate a patent in Italy even if their unitary application is not granted.

  • Experimental use exception

Another important amendment concerns the experimental use exemption. Under the draft Bill, the rights conferred by a patent shall not extend to acts carried out for experimental purposes relating to the subject matter of the patented invention or to the use of biological material for the purpose of breeding, or discovering and developing other plant varieties.

The previous wording of the Italian Industrial Property Code did not include a specification regarding the type of experimental use. In essence, this limitation of the experimental purposes to “the subject matter of the patented invention” could lead to a more restrictive interpretation of the scope of permitted “experimental use” (e.g. limited to experiment “on the patented invention” and not “with the patented invention” in line with Italian case law).

  • Infringement exemption for vessels/aircraft/vehicles

The draft Bill would introduce an exemption for the use of patented inventions on board vessels or in the construction or operation of aircraft or land vehicles or other means of transport of countries of the International Union for the Protection of Industrial Property (Paris Union) or members of the World Trade Organisation, when such vessels or vehicles temporarily or accidentally enter the Italian territory.

  • Transition period

The draft Bill guarantees the application of Italian law to proceedings concerning European patents until the UPC Agreement comes into force and for the duration of its transition period.

The final touches

The remainder of the draft Bill is aimed at removing any inconsistencies with existing provisions governing patents in force in Italy and their application to unitary patents where necessary. If significant changes are not required to it, the draft Bill could be approved in the near future.

The draft Bill rounds off Italy’s preparations for the unitary patent and UPC system, which had been put into motion with the amendment of the Italian Industrial Property Code to incorporate provisions on indirect infringement as required by the UPC Agreement.

For more information see our IP blog www.hsfnotes.com/ip/


 

Bulgaria ratifies the Protocol on Provisional Application of the UPC Agreement but delays still in store for the UPC

21 August 2018

On 24 July Bulgaria ratified the Protocol on Provisional Application of the UPC Agreement (Protocol). Four more ratifications/declarations are needed, including Germany, for the Protocol to come into effect and allow the practical workings of the Unified Patent Court (UPC) to be established in preparation for the court coming into operation, which will happen once the UPC Agreement (UPCA) itself has been sufficiently ratified.  In both cases, ratification by Germany is a prerequisite. Recently reported comments from the Chairman of the UPC Preparatory Committee have revealed that there may be at least a 6-8 month delay once Germany is ready to ratify the UPCA, given how much needs to be done for the UPC to be ready to open its doors. It therefore looks increasingly unlikely that the UPC will take effect before Brexit unless Germany ratifies the Protocol in the next few months.

Background

The Protocol allows the provisional application of the institutional, financial and administrative provisions of the UPCA to enable the necessary legal and practical arrangements to be made in contemplation of the establishment of the UPC, including the appointment of judges. The EPO has commented that the Protocol "should ensure that the Court is fully operational and ready to hear cases on the very day the [UPC} Agreement formally enters into force by the contracting states".

However, for the Protocol to come into effect, 13 signatory states (which must include France, UK and Germany) which have ratified the UPCA or informed the depositary that they have received parliamentary approval to ratify the UPCA, must have signed and also either ratified, accepted or approved the Protocol or declared that they consider themselves bound by the provisional application of the articles of the UPCA mentioned in Article 1 of the Protocol. These Articles cover, inter alia, the establishment of the UPC, the Registry, the Mediation and Arbitration Centre, the training and appointment of judges, and the provisions allowing for the UPC Statute and Rules, legal aid, remuneration of judges, the setting up of local or regional divisions, and the establishment of the pool of judges.

Two of the three mandatory signatories and ratifiers/declarers, France and the UK, have ratified and declared (respectively) with respect to the Protocol, but Germany has still not done either. Bulgaria's ratification brings the total Protocol ratifying/declaring states to eight (see the Council of the EU's page listing signatories and ratifiers to the Protocol), so a few more will be required, alongside Germany, for the Protocol to come into effect.

Impact on the speed at which the UPC can be established

The Protocol must be fully ratified before judges can be employed and local divisions etc fully established; basically all the ground work that needs to be in place before the actual UPC court can get started cannot start without the Protocol's full ratification.  However, signatory states cannot ratify the Protocol unless they have already ratified the UPC Agreement or declared themselves ready to do so.

In a recently reported comment, the Chairman of the UPC Preparatory Committee, claimed that there would need to be 6 to 8 months of preparation time from full ratification of the Protocol, before the UPC could be fully functional. This suggests that were Germany to declare itself ready to ratify the UPCA and thus was then able to ratify the Protocol, there would need to be a delay between it ratifying the Protocol and actually ratifying the UPCA, since once fully ratified the UPCA will come into force, i.e. the UPC will be established (and unitary patents will be available also since the Unitary Patent Regulation would also come into force), on the first day of the fourth month after the month in which the German ratification occurs, and the implication of the Preparatory Committee Chair's comment is that this would not allow sufficient time for the court to be ready.

In summary, the UPC is still some way off; in fact at least 6-8 months away, even once Germany announces its readiness to ratify.  The timings suggest that the UPC may be unlikely to be operational before the UK leaves the EU unless German ratification of the Protocol occurs shortly.


 

UK Government's Brexit White Paper highlights importance to the UK of the UPC and IP rights in general post-Brexit

17 July 2018

Significantly, for those with interests in IP rights generally and the Unified Patent Court in particular, the UK Government's White Paper on Brexit makes encouraging noises about future recognition and security for IP in the UK and in the UK's relationship with the EU, including support for the Unified Patent Court and the UK's role within the new patent system. 

The White Paper (published on 12 July 2018) details the Government's proposals for the future relationship between the United Kingdom and the European Union  and includes a limited number of proposals relating to intellectual property:

  • The United Kingdom intends to explore staying in the Unified Patent Court (UPC) and Unitary Patent system post-Brexit. The United Kingdom will work with the member states that have signed up to the UPC Agreement to ensure that the agreement can continue on a firm legal basis.
  • Arrangements on future co-operation on intellectual property are recognised as important to provide confidence and security to rights holders operating in and between the United Kingdom and the European Union.
  • The United Kingdom will establish its own geographical indications (GIs) scheme to provide continuous protection for UK GIs in the United Kingdom and protection for new GIs applied for by UK and non-UK applicants.

UPC and unitary patent

Opinions vary on the likelihood of whether the United Kingdom could continue as part of the UPC and Unitary patent system post-Brexit. The foreword to the White Paper by the Prime Minister states that the proposals in the White Paper would end the jurisdiction of the Court of Justice of the European Union in the United Kingdom. It is not clear whether the United Kingdom would nevertheless accept the role of the Court of Justice of the European Union in respect of references from the UPC on matters of European law.  The support for the new system offered by the White Paper is however an encouraging start. 

Future co-operation on intellectual property

IP rights which are designated as applying across the EU (EU trade marks, Community plant variety rights, Community registered designs and Community unregistered designs) and those, qualification for which involves activity within the EU (such as database rights), are all at risk of termination in relation to the territory of the UK once the definition 'EU' no longer includes the UK. The draft withdrawal agreement of 19 March 2018 (as supplemented by the joint statement on 19 June 2018) set out the text (highlighted in green in the draft) agreed between the Commission and United Kingdom at negotiator level, in relation to the replacement of EU-wide rights with equivalent UK rights, which may indicate that there will be substantive future co-operation. The statement above in the White Paper serves to underline this approach as well as recognising the significance of this issue for rights holders in the UK and across the EU.

For more on the UK's White Paper, what has been agreed so far at negotiator level between the EU and the UK on the withdrawal agreement, and the impact of Brexit on intellectual property rights - see the Intellectual Property section of our Brexit Legal Guide 2018.


 

The UK ratifies the Unified Patent Court Agreement on World IP Day 

26 April 2018

The UK has ratified the UPC Agreement today, which also happens to be World IP Day. 

The UK IP Minister announced the ratification at a World IP Day event at the House of Commons this afternoon. It seems that the UK Government has listened to the many representative groups in the Patent arena who suggested that being part of the new system prior to Brexit was preferable to trying to join it post-Brexit.  Now we need to wait to see if the German constitutional challenges can be resolved before the end of March next year. 

The UK, along with France and Germany, is one of three signatory states which must ratify before the Agreement can come into force. France ratified long ago (2014), so German ratification is all that is now needed. Ratification by Germany has been held up by challenges to the legislation which was passed to allow Germany to ratify in both the Bundestag and the German Constitutional Court. Neither has yet been resolved. 

15 other countries have already ratified the UPC Agreement. Once Germany ratifies, the Agreement will come into force on the first day of the fourth month after the month of that last required ratification. Assuming the constitutional challenges fail, German ratification will likely be timed to coordinate with the new Unitary Patent Court being ready to operate. Once in effect, the UPC court will operate across all current EU states except Croatia, Poland and Spain which have not signed up to the Agreement. A European patent with unitary effect (otherwise known as a unitary patent) will be available, covering all the participating states, once the UPC is established. Unitary patents will be enforced through the UPC which will also have jurisdiction over European patents which have not been opted out of the new system.

For more on the UPC Agreement including the other states which have ratified already see the UPC Agreement section of our UPC hub (www.hsf.com/upc). 


 

The UPC and unitary patent - March 2018 Update

1 March 2018

On 21 February details were published of cases listed to be heard by the German Federal Constitutional Court which included the complaint against Germany's participation in the UPC system which has been holding up further preparations for ratification of the Unified Patent Court Agreement (UPCA) by Germany (see the Unified Patent Court Agreement section of our UPC Hub for more detail on this). The listing of the application raises the prospect of a decision sometime in 2018 which, if in favour of Germany being able to ratify, would allow the UPC to move towards commencement, but only if the UK also ratifies.  The timing of any result of the hearing will be significant: early, and the UPC may be able to get going before Brexit, late and there may be more problem with the UK being part of the UPC if it is already outside the EU by the time the UPC commences (which will only  take effect on the first day of the fourth month after the month in which the last of Germany or the UK has ratified the UPCA). There is general uncertainty as to whether a non-EU member state can be part of the new system. Much will be dependent on whether the CJEU will accept such an arrangement.

The UK took a further step towards ratification by the Privy Council approving The Unified Patent Court (Immunities and Privileges) Order 2018 on 8 February 2018 which confers legal capacity and grants immunities and privileges on the Unified Patent Court and its representatives, judges, Registrar, Deputy-Registrar and staff. This needed to be approved before the UK could proceed to ratification.  As yet no date has been announced for UK ratification however.

For more on ratification, including the 15 EU member states who have already ratified (Latvia being the most recent, on 11 January 2018) and the potential impact of Brexit on the new system, see the UPCA section of our website. 


 

THE UNIFIED PATENT COURT  - OPEN FOR BUSINESS IN 2018?

19 January 2018

At the start of 2017 the expectation was that the UPC Agreement would achieve the required ratification levels and that the UK could well ratify in advance of Brexit in order to become a full participant, even given the question marks that arose about the ability of a non-EU jurisdiction to be part of the new unitary and European patent enforcement system. Now, at the start of 2018, things are still uncertain.

Despite the IP Minister's announcement in November 2016 that the UK would ratify, no ratification was forthcoming, although the UK has drawn closer to ratification as a result of the International Organisations (Immunities and Privileges) (Scotland) Amendment (No 2) Order 2017 being approved by the Scottish Parliament on 25 October 2017. This order will confer certain privileges and immunities on the UPC and its judges and other staff. The equivalent statutory instrument, the Unified Patents Court (Immunities and Privileges Order) 2017 was laid before the House of Commons on 26 June 2017 and following approval by both chambers of the Westminster parliament (including the House of Lords in December 2017), it is waiting approval by the Privy Council, along with the Scottish order. Representative bodies of IP practitioners joined together shortly before Christmas 2017 to send a note to the Government on the key areas that need addressing prior to Brexit, including ratification of the UPC Agreement (see our post on this here).

Elsewhere in the EU three more states ratified the UPCA in 2017: Italy, Estonia and Lithuania, and Latvia on 11 January 2018. This brings the total number of ratifying states to 15 more than the 13 required, but still missing two of the mandatory ratification states other than France: Germany and the UK (while it is still in the EU).

However, with France ratifying the Protocol on Privileges and Immunities at the end of December 2017 and Belgium adopting legislation in December to implement the UPC, the EU looks poised to commence the new court system as soon as possible once the UK leaves the EU. This will be possible only once Germany has ratified. Italy will take the place of the UK as the third mandatory ratifier after France and Germany, and has already ratified as mentioned above.

German ratification is dependent on the outcome of the challenge being mounted in the German Federal Constitutional Court (FCC) regarding the constitutionality of the law passed by German Parliament on the UPC's implementation. The German court has asked for observations on the case and had previously set a deadline for any comment by end of October 2017 – though it has been reported that this has now been extended to the end of the year. The FCC will then determine whether or not to dismiss the complaint, a process which is expected to take until at least April 2018. If the complaint is dismissed, Germany will be able to ratify the UPCA soon after. There has, however, been talk of the possibility of the case being referred to the Court of Justice of the EU (CJEU), which would cause substantial delay to the case being decided and ultimately to Germany's ratification.

The Preparatory Committee of the UPC published a "Summing up and looking forward" press release on 21 December 2017 detailing the "provisional application" phase and how this will work. It is essentially a pilot phase which will be allowed to come about if sufficient signatory states agree to the Protocol on the Agreement on a Unified Patent Court on Provisional Application. The protocol means that the State Parties agree to apply the institutional, organisational and financial parts of the UPCA provisionally before the UPCA enters into force. Once the Protocol enters into force, the organisation (as such) will therefore be created and acquire legal personality. The Administrative Committee, the Budget Committee and the Advisory Committee will be established at the start of provisional application and will then take over the responsibility of the preparations from the Preparatory Committee.

During the provisional application phase the organisation will be able to conclude necessary agreements with third parties and formalise all the preparatory work done by the Preparatory Committee. One area that cannot be conducted before the provisional application phase is the completion of the recruitment of the judges. This is obviously a significant difficulty for the committee. Only once the judges are appointed the two Presidents can be elected, the Presidium can be set up and the Registrar and the Deputy Registrar can be appointed.

However, for the Protocol on Provisional Application to come into effect, 13 signatory states - which have signed the UPCA (and which must include France, UK and Germany) and have ratified the UPCA or informed the depositary that they have received parliamentary approval to ratify the UPCA - must have signed and ratified, accepted or approved the Protocol (in accordance with Article 2(2) of the Protocol) or declared themselves bound by Article 1 of the Protocol. These cover, inter alia, the establishment of the UPC, the Registry, the Mediation and Arbitration Centre, the training and appointment of judges, and the provisions allowing for the UPC Statute and Rules, legal aid, remuneration of judges, the setting up of local or regional divisions, and the establishment of the pool of judges.

Now that the UK has signed the Protocol, along with the other 2 mandatory signatories, the Protocol is close to coming into effect, although a few more signatories and ratifications are needed.  The UK will still need to pass legislation (via statutory instrument) to ratify the Protocol as will some other signatories.

The UPC Preparatory Committee says it has assessed that the (even once sufficient ratification of the Protocol has taken place) the provisional application phase needs to be a period of between six to eight months in order to have time to put everything in place and prepare for the Court to be operational.

UPC news from 2017

November UPC Update

7 November 2017

In June we gave an update on the progress of the UPC, including the announcement by the UPC Preparatory Committee that the 1 December 2017 start date could not be maintained. We reported on the need for ratification of the UPC Agreement, as well as the UPC Protocol on Provisional Application (the Protocol), by a number of states including the UK and Germany, which are mandatory signatories along with France.

UK

The UK has recently drawn closer to ratification as a result of the International Organisations (Immunities and Privileges) (Scotland) Amendment (No 2) Order 2017 being approved by the Scottish Parliament on 25 October 2017. This order will confer certain privileges and immunities on the UPC and its judges and other staff. As we have reported on previously, the equivalent statutory instrument, the Unified Patents Court (Immunities and Privileges Order) 2017 was laid before the House of Commons on 26 June 2017 and is awaiting approval by both chambers of the Westminster parliament. Before this can occur, it must pass through three committees: the Joint Committee on Statutory Instruments (JCSI), the Secondary Legislation Scrutiny Committee and the Delegated Legislation Committee. The members of the JCSI were recently re-appointed (on 31 October 2017), following its dissolution prior to the general election in June this year. It is now up to the JCSI to report on any instance where legislative power has been exceeded or the drafting of the order is defective or requires further explanation.

Germany

There has been some delay to the German ratification of the UPCA, owing to a case pending before the German Federal Constitutional Court (FCC) regarding the law passed by German Parliament on its implementation. The German court has asked for observations on the case and had previously set a deadline for any comment by end of October 2017 – though it has been reported that this has now been extended to the end of the year. The FCC will then determine whether or not to dismiss the complaint, a process which is expected to take until at least April 2018. If the complaint is dismissed, Germany will be able to ratify the UPCA soon after. There has, however, been talk of the possibility of the case being referred to the Court of Justice of the EU (CJEU), which would cause substantial delay to the case being decided and ultimately to Germany's ratification.

Overall, according to the latest update on the UPC website, published on 21 September 2017, while good progress has been made, "[i]t is now difficult to predict any timeline". 


 

Guidance on the Unitary Patent from Herbert Smith Freehills and the EPO

15 September 2017

Want to know how to obtain the new unitary patent right that will become available across 26 of the 28 EU member states (including the UK) once the Unified Patent Court is established? Wondering how the new right will impact on your patent portfolios and licensing schemes? 

Herbert Smith Freehills' Laura Deacon (Of Counsel) and Joel Smith (Head of IP, UK) have had a practice note on the unitary patent published by Practical Law which looks at these issues, including patent portfolio management and transactions involving the new right.

A quick reminder on the basics of obtaining a UP:

  • In order to be eligible for registration as a unitary right, a European patent must have been granted with the same set of claims in respect of all 26 participating Member States. The new EPO guide states that "It is therefore important not to withdraw the designation of any of the 26 participating Member States because this would rule out obtaining a Unitary Patent. Moreover, a European patent should not contain a different set of claims for any of the participating Member States, as this too would also prevent the EPO from registering a Unitary Patent."
  • To obtain a UP: a formal "request for unitary effect" must be filed with the EPO in writing by the European patent proprietor. This request must be filed no later than one month after the mention of the grant of the European patent is published in the European Patent Bulletin.

The EPO published guidance on obtaining, maintaining and managing unitary patents on 7 September here.

The guidance details:

  • How to obtain a unitary patent (UP)
  • The compensation scheme for translation costs
  • Renewal fees
  • Publications and file inspection
  • How to register transfers, licences and other rights and file statements on licences of right
  • Procedural questions, language regime , representation and fee payment
  • Legal remedies against EPO decisions: the role of the UPC

For more on the unitary patent see our dedicated UPC and UP Hub here.


 

Lithuania becomes 14TH to ratify the UPC Agreement

6 September 2017

Lithuania has now ratified the UPC Agreement (UPCA) (on 24th August 2017 - see the UPCA ratification index here).

Under the terms of the UPCA, the Agreement can only come into effect once at least 13 contracting states have ratified, but these must include France, Germany and the UK (if all other ratifications are in place prior to Brexit) or Italy (if post-Brexit). France and Italy have already ratified, as have Austria, Belgium, Bulgaria, Denmark, Estonia, Luxembourg, Malta, the Netherlands, Portugal, Sweden and Finland.  Once all the required ratifications are in place the UPC can commence on the first day of the fourth month after the last required ratification.

The delay to German ratification has been caused by a complaint being filed at the German Constitutional Court which led to the Court asking the German parliament to delay signature of legislation that would have progressed the UPCA's ratification by Germany.

The UK put some of the UPC ratification legislation before Parliament in June. The Unified Patent Court (Immunities and Privileges) Order 2017 was laid before Parliament on 26 June 2017 – see the explanatory memorandum here. This Order implements the Protocol on Privileges and Immunities of the UPC  (the Protocol)  and confers legal status in the UK on the United Patent Court and privileges and immunities on the Court, its judges and staff, under the International Organisations Act 1968, which allows the grant of certain immunities and privileges to the international organisation and its officers and employees. This Order (and an equivalent measure in the Scottish Parliament) needs to be passed before the UK can ratify the Protocol as well as the UPC Agreement itself. However, both Houses of Parliament will be required to debate the measure before approving it and it will also need the approval of the Privy Council. 

As we have reported on our Intellectual Property Notes blog and on this Hub,  the timetable for the UPC appears to be slipping, due not only to delays by the UK, in part due to the recent general election, but also because of the challenge to German ratification mounted in the German Constitutional Court mentioned above. The UPC Preparatory Committee have withdrawn their 1 December 2017 start date and are as yet unable to confirm any further dates.

Ireland's ratification is not a pre-requisite for the UPCA to come into effect (now that there are already sufficient ratifiers) but its process is worthy of note as it requires a referendum.  A recent announcement suggests this will happen at some point in the next two years.

One other key ingredient is also missing: there have also been delays to the Protocol on Provisional Application which is required to be ratified by contracting states in order to allow the administrative preparations for the courts, including the appointment of judges, to go ahead in order for the UPC to be ready immediately the UPC Agreement comes into force.


 

Estonia ratifies the UPC Agreement – 13 ratifications now in place – just Germany and the UK to go

2 August 2017

Estonia ratified the UPC Agreement (UPCA) on 1 August 2017, making it the thirteenth contracting member state to do so (see the European Council's ratification index here). Under the terms of the UPCA, the Agreement can only come into effect once at least 13 contracting states have ratified, but these must include France, Germany and the UK (if all other ratifications are in place prior to Brexit) or Italy (if post-Brexit). France and Italy have already ratified, as have Austria, Belgium, Bulgaria, Denmark, Estonia, Luxembourg, Malta, the Netherlands, Portugal, Sweden and Finland.  Once all the required ratifications are in place the UPC can commence on the first day of the fourth month after the last required ratification.

For our report on the delay to German ratification caused by a constitutional challenge see here.

The UK put some of the UPC ratification legislation before Parliament in June (The Unified Patent Court (Immunities and Privileges) Order 2017 see here.

Ireland's ratification is not a pre-requisite for the UPCA to come into effect (now that there are already sufficient ratifiers) but its process is worthy of note as it requires a referendum.  A recent announcement suggests this will happen at some point in the next two years.

One other key ingredient is also missing: there have also been delays to the Protocol on Provisional Application which is required to be ratified by contracting states in order to allow the administrative preparations for the courts, including the appointment of judges, to go ahead in order for the UPC to be ready immediately the UPC Agreement comes into force.


 

Government lays pre-ratification UPC legislation before Parliament

28 June 2017

The Unified Patent Court (Immunities and Privileges) Order 2017 was laid before Parliament on 26 June 2017 – see the explanatory memorandum here. This Order implements the Protocol on Privileges and Immunities of the UPC  (the Protocol)  and confers legal status in the UK on the United Patent Court and privileges and immunities on the Court, its judges and staff, under the International Organisations Act 1968, which allows the grant of certain immunities and privileges to the international organisation and its officers and employees. This Order (and an equivalent measure in the Scottish Parliament) needs to be passed before the UK can ratify the Protocol as well as the UPC Agreement itself. However, both Houses of Parliament will be required to debate the measure before approving it and it will also need the approval of the Privy Council. 

As we have reported on our Intellectual Property Notes blog and on this Hub,  the timetable for the UPC appears to be slipping, due not only to delays by the UK, in part due to the recent general election, but also the recent challenge to German ratification mounted in the German Constitutional Court. The UPC Preparatory Committee have withdrawn their 1 December 2017 start date and are as yet unable to confirm any further dates.


 

Private challenge to the UPC system made before German Constitutional Court delays progress of German UPCA ratification

15 June 2017

On 7 June, the UPC Preparatory Committee announced that the December start date could no longer be maintained. The Preparatory Committee says that it is monitoring UPCA ratification and participation in the Protocol continuously in order to be able to establish a timetable for a start date as soon as possible. Since that announcement, German press articles suggest that there has been a private challenge before the German Constitutional Courts concerning the UPC System in light of which the Court has requested that the approved bills are not signed, such that ratification by Germany cannot be completed. The nature of this challenge, and therefore the length of any delay it may cause, is currently unclear.


 

UPC COMMENCEMENT POSTPONED –1 DECEMBER 2017 START DATE CANNOT BE MAINTAINED ANNOUNCES PREPARATORY COMMITTEE

08 June 2017

In January we reported the UK IP Minister Jo Johnson's enthusiastic support for the UPC and ratification of the UPC Agreement (UPCA) whilst the UK is still a member of the EU. Without this, the UPC system would have to wait for the UK to leave, before the next most patent designated EU state at the date of signature of the UPCA (which would be Italy) could fulfil the role as third mandatory ratifier (after France and Germany). The UPC Preparatory Committee announced earlier this year that it was still confident of a 1 December 2017 start date, as long as the expected final ratifications were in place. This was a significant caveat given the Brexit situation and the need for further ratification of the UPC Protocol on Provisional Application (the Protocol) by UPC participating states before the practical arrangements can begin to be made for the new courts, such as the appointment of judges. The timetable looked even more hopeful when, subsequently, the UK general election was announced for June, implying an inevitable and resultant delay in the progress of any UK ratification until after the election at least. On 7 June, the UPC Preparatory Committee announced that the December start date could no longer be maintained.  The Preparatory Committee says that it is monitoring UPCA ratification and participation in the Protocol continuously in order to be able to establish a timetable for a start date as soon as possible.

UPC Protocol on Provisional Application: Before final ratification of the UPCA, participation in the Protocol is needed in order that UPC judges can be appointed and the practical arrangements put in place for the new courts. This will allow the provisional application of the institutional, financial and administrative provisions of the UPCA and will enable the necessary legal and practical arrangements to be made in contemplation of the establishment of the UPC. However, for the Protocol to come into effect, 13 signatory states - which have signed the UPCA (and which must include France, UK and Germany) and have ratified the UPCA or informed the depositary that they have received parliamentary approval to ratify the UPCA - must have signed and ratified, accepted or approved the Protocol (in accordance with Article 2(2) of the Protocol) or declared by unilateral declaration or in any other manner that they consider themselves bound by the provisional application of the articles of the UPCA mentioned in Article 1 of the Protocol. These Articles cover, inter alia, the establishment of the UPC, the Registry, the Mediation and Arbitration Centre, the training and appointment of judges, and the provisions allowing for the UPC Statute and Rules, legal aid, remuneration of judges, the setting up of local or regional divisions, and the establishment of the pool of judges. The UK has signed the Protocol, along with the other 2 mandatory signatories, and the Protocol is close to coming into effect, although a few more signatories and ratifications are needed. The Council of the EU has a page listing signatories to the Protocol. The UK will still need to pass legislation (via statutory instrument) to ratify the Protocol as will some other signatories. 

At its May meeting, the EU Competitiveness Council acknowledged that there were a few countries holding up the Protocol but that it could be done before the summer break and if so the UPC might still be on track for a December opening. The Preparatory Committee's announcement on 7 June indicates that this is not now expected to happen.

UK ratification of the UPCA: The UK's representative at the Competitive Council meeting in May noted that the UK's ratification of the UPCA itself would not occur until the next Parliament, but that the intention of the current Government was to ratify it. If the UK ratifies the UPCA, without amendment, and subsequently leaves the EU, any divisions of the UPC in the UK will have to cease operating. The transitional consequences of this are matters of detail to be negotiated as part of the UK’s exit negotiations. If the UK cannot continue to take part in the UPC beyond Brexit, it will become one of the European jurisdictions where separate patent protection will need to continue to be sought following the introduction of the new UPC/UP system. 

For a detailed insight into what this would mean for the UPC and intellectual property rights in general, in the UK and across Europe, please see our briefing following the Government's announcement on ratification here

The latest version of the Draft Rules of Procedure of the UPC were published on the UPC Preparatory Committee website on 10 April 2017 - here. It is understood that these are the final version, although a finalised format has not been published.

For more on the UPC and unitary patent system, see our Hub here: www.hsf.com/upc.


 

UK General Election may delay UK ratification of the UPC Agreement and hence the commencement of the UPC and UP system

20 April 2017

The UPC Preparatory Committee's announced start date for the UPC of 1 December 2017 now looks in doubt as the UK general election will likely postpone the UK's ratification of the UPC Agreement, on which the commencement of the UPC is dependant. A 2018 start date appears more probable, barring any delay by Germany which must also ratify for the UPC (and UP) to go ahead.

For more on this and detail on the impact of the UPC and UP system see our UPC hub


 

UPC Preparatory Committee releases an update to the 18TH Draft of the UPC Rules of Procedure

12 April 2017

The UPC Preparatory Committee has released an updated version of the 18th draft of the UPC Rules of Procedure (with the amendments being dated 15 March 2017), which can be accessed here

Subject to formal adoption, we understand that this update may represent the final version of the UPC Rules of Procedure.


 

UPC Preparatory Committee holds final meeting at which it signals its readiness to move to Provisional Application Phase and Germany passes bills necessary to ratify the UPC Agreement

21 March 2017

The UPC Preparatory Committee held its final meeting on 15 March at which it agreed a final collection of legal, HR and financial documents and confirmed that the provisional application period could commence once the final Signatory States had acceded to the Protocol on Provisional Application.  The Committee was confident this would be met in time to allow provisional application to commence at the end of May 2017 in order to allow for all the practical preparations to be made for a 1 December 2017 start for the UPC. 

Matters such as the recruitment of judges, the IT and case management system and other practical arrangements for the opening of the Court and its local and central divisions are in progress, but will be dealt with by other teams.

Final amendments to the Rules of Procedure for the UPC were agreed and a full publication was promised on the UPC Preparatory Committee site shortly.

Patentees should note that the Committee again confirmed its expectation that the sunrise period for opt-outs of European patents from the jurisdiction of the UPC will start in September 2017.  A review of all EPs held should now be instigated, if not already in progress, to determine which may be candidates for opt-out. 

The Preparatory Committee acknowledged that the timetable of the entry into force of the UPC Agreement (and hence the UPC and unitary patent system) "is subject to change given the reliance on national governments to accede to the Protocol on Provisional Application",  however regular updates were promised on its website.

Germany has now passed draft legislation to enable it to ratify the UPC Agreement and to provide corresponding amendments to German patent law.  The UK is expected to ratify the UPC Agreement by the end of April 2017. 

For more information and comment on what patentees and licensees should be doing now, see our e-bulletin of 21 March here.


 

Italy ratifies the UPC Agreement – only Germany and the UK needed to ratify before the UPC can commence

20 February 2017

On 10 February Italy lodged its instrument of ratification of the Unified Patent Court Agreement (UPCA) with the EU Council.  Italy is the twelfth state to ratify the UPCA (for details of other ratifications see the UPCA section of our Unified Patent Court (UPC) and unitary patent (UP) Hub here). For the UPCA to come into force at least 13 contracting states must ratify including 3 specific ones: France, Germany and the UK. France has already ratified. The UK has announced that it will ratify (see below) and Germany is said to be holding on until August so that the 4 month lead-in period which applies once there is sufficient ratification can commence in time to allow a 1 December 2017 start date for the (under Article 89 UPCA, the agreement enters into force on the first day of the fourth month after the deposit of the thirteenth instrument of ratification).


 

UPC in place by December 2017 and opt-out starting in September – says Preparatory Committee

19 January 2017

The UPC Preparatory Committee has announced its expectation that the UPC will be operational by December 2017 with a sunrise period for opting out patents from its jurisdiction from September 2017.  However, it does sound a note of caution, stating that the "timetable is conditional and provided with the clear disclaimer that there are a number of factors that will dictate whether it is achievable. The most important factors in meeting these dates is the necessary ratifications of the UPCA and accession to the Protocol on Provisional Application. If these are not achieved the time-plan will be disrupted".

Teresa May's rejection of the CJEU in her Brexit speech on 17 January 2016 that the UK will make the UK's participation in the UPC post-Brexit difficult. See the comments by Mark Shillito, our Head of Intellectual Property, in this article "Brexit means ditching the CJEU, May makes clear", published in the Law Society Gazette on the same day. 


 

BREXIT – WHAT IP ISSUES TO CONSIDER NOW

05 January 2017

We set out our thoughts and predictions upon how protection and enforcement of IP in the UK may be impacted once Brexit arrives.  We have also suggested some immediate action points for consideration in the weeks or months to come, prior to Brexit, to ensure that your business is best protected prior to any changes.

READ MORE >


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