Establishment of the Unified Patent Court (UPC):
The UPC is established via an international agreement: the Agreement on a Unified Patent Court (UPCA), Council of Europe, 11 January 2013. This is an international agreement/treaty between 25 of the 28 Member States of the European Union setting up the Unified Patent Court. The UPCA has not been not signed by Spain, Poland, or Croatia.
The UK ratified the UPCA on 26 April 2018, despite the UK's plans to leave the EU (see the official UK Government announcement here and our commentary on the decision here). This was seen as a surprising move as it had been thought that the UK was unlikely to do so given the general view that non-EU members could not participate in the new UPC system. However, the UK has now passed all the requisite legislation to allow it to ratify and the Government appears to have responded to pressure from industry and IP practitioner representative groups to ratify in the hope that the new system may commence prior to Brexit and the UK may continue to be part of it beyond its withdrawal from the EU.
German ratification is not the only pre-requisite for the new system to get started. The commencement of the UPC system will take effect only on the first of the fourth month after the month in which Germany has ratified the UPC Agreement. Germany's ratification has been delayed by an objection filed at the German Federal Constitutional Court (FCC) claiming that ratification would be unconstitutional. There is no clear indication when this case will be heard, although a hearing in 2018 is now thought more likely since the application was included in a list of cases for the FCC published in February 2018. There has also been a debate in the Bundestag on the repeal of the legislation passed by Germany to allow ratification to take place. This question has been referred to various parliamentary committees for further consideration.
An Opinion from Leading Counsel, commissioned jointly by the Intellectual Property Lawyers Association (IPLA), of which Herbert Smith Freehills is a member firm, and other IP representative groups, on specific questions concerning the impact of Brexit on the UK's participation in the UPC, had concluded that the UK was not absolutely barred from participating even if outside the EU but much would depend on whether the CJEU was prepared to allow this. See our commentary on this Opinion given in September 2016 (and a link to the Opinion itself) here. This will continue to be relevant in the context of the continued participation of the UK in the UPC post-Brexit if commencement occurs prior to Brexit or if the UK wishes to join the UPC system post-Brexit.
A Protocol on the Provisional Application of the Agreement on the Unified Patent Court (the Protocol) has been agreed which 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, including the appointment of judges. The EPO commented that the Protocol "should ensure that the Court is fully operational and ready to hear cases on the very day the 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 UPC Agreement 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.
For the UPCA to come into force:
Summary of the current state of fulfilment of the criteria for the UPCA to come into force:
- The Brussels I Regulation amendments have been made and these took effect from 10 January 2015
- Signature and ratification of the UPCA:
- Every EU Member State has signed the agreement except for Croatia, Poland and Spain, so there are sufficient signatories.
- Summary of UPCA Ratifications:
- Austria ratified on 6 August 2013
- France ratified on 14 March 2014
- Sweden ratified on 5 June 2014
- Belgium ratified on 6 June 2014
- Denmark ratified on 20 June 2014
- Malta ratified on 9 December 2014
- Luxembourg ratified on 22 May 2015
- Portugal ratified on 28 August 2015
- Finland ratified on 19 January 2016
- Bulgaria ratified on 3 June 2016
- Netherlands ratified on 14 September 2016
- Italy ratified on 10 February 2017
- Estonia ratified on 1 August 2017
- Lithuania ratified on 24 August 2017
- Latvia ratified on 11 January 2018
- The United Kingdom ratified on 26 April 2018
There now only needs to be ratification by Germany for the UPC regime to come into effect. To follow ratification see the table produced by the Council of Europe.
UK: The UK Government announced on 28 November 2016 that it would be ratifying the UPC Agreement (see here). General opinion was that the UK would ratify in March or April 2017 but with the announcement of the UK general election (held on 8 June 2017), ratification legislation was delayed. Preparations were made for ratification via the following:
- The Intellectual Property Act 2014 provided for a new section 88A to be inserted into the Patents Act 1977 giving the Secretary of State power to make an order, giving effect to the UPCA. This will require a Statutory Instrument.
- The UK Government announced that it had completed its consultation on the secondary legislation implementing the UPC and UP arrangements and published The Patents (European Patent with Unitary Effect and Unified Patent Court) Order 2016 – made on 12 March 2016, which will come into force when the UPCA does
- 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) was passed by both House of Parliament and was approved by the Privy Council on 8 February 2017.
- Ratification notice was deposited on 26 April 2018.
Germany: German ratification has been delayed by a private challenge has been launched before the German Federal Constitutional Courts (FCC) concerning the UPC, in light of which the Court has requested that the approved bills are not signed, such that ratification by Germany cannot be completed. The length of delay this challenge may cause is currently unclear but the case has recently been included in a list of cases for the FCC which may suggest that it may be heard in 2018.
Ireland has announced that it will have a referendum on whether to ratify the UPCA.
UPC start date?
Even prior to the German constitutional challenge, on 7 June 2017, the UPC Preparatory Committee had already announced that the original December 2017 start date for the UPC could no longer be maintained. As yet they have been unable to confirm any further dates. The UPC 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.
Note: Countries which have not taken part in the enhanced cooperation procedure to establish the UP are Croatia and Spain; and which have not signed the UPCA are Spain, Croatia and Poland. Poland supported the enhanced procedure for the UP but has decided not to take part in the UPC and so UPs will not be valid/enforceable in Poland.
The contents of this publication, current at the date of publication set out above, are for reference purposes only. They do not constitute legal advice and should not be relied upon as such. Specific legal advice about your specific circumstances should always be sought separately before taking any action based on this publication.
© Herbert Smith Freehills 2020