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 The UPC Preparatory Committee have withdrawn their 1 December 2017 start date and are as yet unable to confirm any further dates.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
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).
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.
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 2017