Unified Patent Court
Find out about the latest developments relating to Europe's new patent regime.
The UK government has made it clear that it no longer intends to participate in the UPC. There has been no formal announcement yet but IP stakeholders were notified of the revised position on 27 February 2020. This reversed the previous government’s stance that UPC membership would be “explored”, on the basis of which the UK ratified the UPC Agreement.
The driving force behind the decision appears to be the new government’s desire to avoid the jurisdiction of the CJEU at all costs, even as part of an international court. According to the UK’s negotiating objectives “we will not agree to any obligations for our laws to be aligned with the EU's, or for the EU's institutions, including the Court of Justice, to have any jurisdiction in the UK." That is in direct conflict with the UPC Agreement’s recitals, which note “that the Court of Justice of the European Union is to ensure the uniformity of the Union legal order and the primacy of European Union law.”
The future of the UPC project now faces a number of hurdles, even putting to one side the outcome of the German Constitutional Court complaint which currently prevents Germany from ratifying the UPC Agreement. Mechanistically the UK was a key jurisdiction and one of the gatekeepers to commencement of the system; it was the planned home to one third of the Central Division; and the rules of procedure have been agreed based on a unique hybridisation of civil/common law. There is much to be re-negotiated if the UPC is to continue without the UK.
In a July 2018 White Paper setting out its position on Brexit, the UK government said: ‘the UK … intends to explore staying in the [Unified Patent] Court and unitary patent system after the UK leaves the EU. The Unified Patent Court has a unique structure as an international court that is a dispute forum for the EU’s unitary patent and for European patents, both of which will be administered by the European Patent Office. The UK will therefore work with other contracting states to make sure the Unified Patent Court Agreement can continue on a firm legal basis’.
The UK Government has ratified the UPC Agreement. This brings the Agreement one step closer to coming into force with the remaining hurdle being ratification by Germany.
However, there remains uncertainty as to Germany’s status with the claim challenging its ratification yet to be decided by the German Constitutional Court (see 2nd Senate, Judge-rapporteur Prof. Dr. Huber Nr. 11, docket number 2 BvR 739/17).
There also remains uncertainty regarding the UK’s position in the UPC system following Brexit, which will be further complicated if the German Constitutional Court’s decision is delayed beyond the UK’s leaving date.
The Government’s press release is here.
The German Constitutional Court put the constitutional complaint against the UPCA on the list of cases to be decided (see 2nd Senate, Judge-rapporteur Prof. Dr. Huber Nr. 11, docket number 2 BvR 739/17). There are no further details published but this step indicates that we will see a decision on the complaint handed down soon (in terms of the pace of proceedings before the Constitutional Court that likely means summer). The one time extended deadline for amicus curiae filings lapsed without further briefs received. You can find the brief filed by Deutscher Anwaltverein here; the brief filed by BRAK here; the brief filed by GRUR here; the brief filed by EPLIT here.
The UPC CMS is now hosted in a pre-final beta version providing all functions needed for the sunrise period (preliminary application phase of UPCA). While still not the live system, you may make familiar with the CMS now in order to be prepared for opting-out your patents when the sunrise period starts. With the decision on the German constitutional complaint expected in summer, we may see a start of the sunrise period soon. Registering is open for public.
The IP Federation (which represents IP-intensive UK industry) has reported on a summary of requests to the UK government made by the main UK IP organisations (the Law Society as the representative of IP solicitors, the IP Bar Association, the Chartered Institute of Patent Attorneys, the Chartered Institute of Trade Mark Attorneys and the IP Federation) which asks the UK government: (i) to confirm that it is the UK’s intention to stay in the UPC following Brexit; (ii) to work towards the coming into effect of the UPC along with other EU member states; and (iii) to work with other member states and EU institutions to ensure there are no legal or practical obstacles to UK participation in the UPC following Brexit.
In particular, these organisations are keen to ensure that the life sciences and chemistry division of the UPC central court remains in London, and that UK legal professionals continue to be able to participate in the UPC.
The Chair of the UPC Preparatory Committee has issued an update on preparations for the UPC. While recognising that because of the German constitutional court challenge the timetable to opening of the UPC is now uncertain, he expresses hope that 2018 will see the UPC become a reality.
The UK House of Lords has approved the draft UPC (Immunities and Privileges) Order 2017 following consideration by the House of Lords Grand Committee and approval by the UK House of Commons. Once the Order has received the approval of the Privy Counsel (likely to be in early 2018), the UK government will be able to formally ratify the UPC Agreement.
The German Constitutional Court has extended the deadline for comments on the constitutional complaint against the UPC, from 31 October to 31 December 2017. The parties entitled to submit statements have requested this extension. Currently 27 parties are invited to comment on the complaint. The constitutional complaint was reportedly filed by a Düsseldorf-based attorney called Ingve Stjerna.
The German Federal Constitutional Court has disclosed details on the recent complaint filed against the UPC (see our news item of 20 June 2017). The complainant argues that there have been breaches of the German Constitution, which restricts any surrender of German sovereignty. Those restrictions are derived from the right to democracy (Art. 38 Sec. 1 German Constitution). The claimant has put forward four lines of argument:
- the German UPC ratification legislation required at least a two-thirds majority of the German parliament (Bundestag), because it expressly amends or supplements German constitutional law – but the legislation was in fact passed by only a simple majority;
- there are democratic problems, and deficits in the rule of law, relating to the regulatory powers of the UPC bodies;
- the UPC judges lack independence and democratic legitimacy; and
- the UPC breaches EU law and thereby the German Constitution's commitment to EU law.
The court has not yet announced a date for its decision.
If the complainant succeeds on the first point, the Bundestag will need to hold another vote. This would probably be after the German elections in September 2017. The second and third points have been raised before in relation to the EPO system. The fourth argument might trigger the German Constitutional Court to make a reference to the Court of Justice of the European Union. If so, it’s unlikely that the CJEU will decide before the end of the Brexit negotiations. As the issues at stake here are complex, it now looks rather unlikely that the UPC will start in early 2018, as previously thought.
Alexander Ramsay, Chairman of the UPC Preparatory committee, has announced that, in light of the challenge to ratification of the UPC Agreement brought in the German Constitutional Court, the previously announced timetable for the start of the UPC (opening in December 2017) will be delayed. No definitive new start date has been given, but the President expects the sunrise period for opt out from the UPC to begin in early 2018, meaning the UPC would be unlikely to open before late spring 2018. A new timetable will be published once the situation becomes clearer.
The UK IPO has announced that the Order on Privileges and Immunities for the UPC has been laid before Parliament. Once this Order passes the parliamentary scrutiny process, the UK government will be able to deposit the UK’s instrument of ratification. However, there will be no progress in the scrutiny process until Parliament sits again in September 2017.
Germany’s ratification of the UPC has been put on ice. An unknown private person has filed a constitutional complaint against the German UPC implementation law and the UPC itself, and has applied for a temporary injunction. At the request of the German Constitutional Court, Federal President Frank-Walter Steinmeier has agreed not to sign the ratification law until the court decides the complaint.
The German Constitutional Court hasn’t given any further information about the details of the case – in particular, the claimant’s reasoning or the expected time-scale. The German patent community suspects that the claim asserts structural problems with the European Patent Office and/or an incorrect legislative procedure by the German Parliament (Bundestag). A statement by the Constitutional Court is not expected before October 2017.
(Case: docket no. 2 BvR 739/17)
The UK government’s announcement of a general election on 8 June 2017 could delay the UK’s ratification of the UPC Agreement. The UK is one of three EU member states required to ratify the UPC Agreement for it to come into force, meaning that any delay could impact the timetable for implementation of the UPC. Some of those involved with the implementation have suggested a start date of early 2018, rather than late 2017, may be more realistic.
The UPC Preparatory Committee has published an updated version of the 18th draft of the UPC Rules of Procedure adopted on 19 October 2015, including a few minor amendments. This draft is now subject to formal adoption by the UPC Administrative Committee during the Provisional Application Phase.
The latest draft of the Rules of Procedure can be found here.
At its meeting in The Hague on 15 March 2017, the Preparatory Committee signalled its readiness for the next stage of the UPC, known as the ‘Provisional Application Phase’, in which parts of the UPC Agreement will come into force early to allow the necessary preparations for the UPC to commence. The ‘Provisional Application Phase’ will include a sunrise period in which patent owners can opt out of the new regime.
In order for this period to start, a few more states that have signed the UPC Agreement must accede to the Protocol on Provisional Application. The Preparatory Committee expect this to happen by the end of May 2017.
The update from the Preparatory Committee can be found here.
The UPC Preparatory Committee has announced that it is working to a timetable that would bring the Court into operation in December 2017. On this timetable, patentees would be able to opt out any European Patents from early September 2017. The Committee’s press announcement goes on to add that the timetable is conditional on a number of factors, not least the completion of ratifications of the UPC Agreement.
The decision on whether to opt patents out of the UPC system can be complex and require substantial analysis; patent owners may wish to ensure that they have planned for completing this task by the end of November 2017.
The press announcement, made on 16 January 2017, is here.
Yesterday, the UK signed the Protocol on Privileges and Immunities of the UPC. This is required for the UPC to operate in the UK – London will host the branch of the central division focussing on life sciences, as well as a local division. The UK was the last of the compulsory signatories to sign the Protocol. This puts the UK on course to ratify the UPC Agreement, as announced on 28 November.
The UK government confirmed yesterday that it will proceed to ratify the UPC Agreement, despite Britain’s vote to leave the EU.
Because of the high degree of uncertainty, most UK stakeholders were, at least until the last week, pressing the UK government not to ratify unless there were firm guarantees of the UK’s continued membership of the UPC post-Brexit. UK stakeholders were almost unanimous that the UPC without the UK would be a poor option – and a UPC with the UK in at the start and then dropping out would be worse still. This was based on the importance of the UPC system covering major markets, benefitting from the best of a diverse range of legal experience, and needing the legal certainty to get off to a successful start.
However, over the last week, the UK government appears to have formed the view that the other UPC members would rapidly sign a protocol allowing the UPC to proceed quickly, and without the UK. This seems to have prompted the rapid move to ratify. The UK government’s press release suggests that no negotiations have taken place on the question of the UK’s post-Brexit future in the UPC; that would be consistent with the general position that Brexit negotiations should not start until Article 50 is triggered. According to Baroness Neville-Rolfe, the minister responsible for intellectual property:
“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”.
Many businesses delayed planning their UPC strategy in light of the referendum result. Yesterday’s announcement means businesses must rapidly restart their planning, but it leaves many questions unanswered.
The UK government’s press release is here.
The recruitment of UPC judges has been put on hold as a result of the uncertainty following the UK’s vote to leave the EU. The Preparatory Committee announced today that the interview and selection phase has been postponed. Further updates about the timetable will be provided in due course. The UPC cannot enter into force without ratification of the UPC Agreement by the UK. However, following the referendum result, it is uncertain whether the UK is willing to ratify.
The update from the Preparatory Committee can be found here.
Following the UK’s vote to leave the EU, the UPC and unitary patent are likely to go on hold.
The UK is one of three EU member states required to ratify the UPC Agreement for it to come into force; the UK is also specified in the UPC Agreement as the seat of a section of the court’s central division. The UK is now unlikely to deposit its instrument of ratification and consequently the UPC Agreement cannot come into force. It is not clear whether remaining UPC states will start re-negotiating a new UPC agreement minus the UK, or whether the UK will continue funding the existing preparations. Removing the UK will affect the economics of the UPC system, its logistics and key appointments.
One of the two statutory instruments required to allow the UK to ratify the UPC Agreement, the draft ‘The Patents (European Patent with Unitary Effect and Unified Patent Court) Order 2016’ has been approved by both Houses of Parliament. This statutory instrument when it comes into force will amend aspects of The Patents Act 1977 to give effect to the UPC Agreement. The UK plans to fully ratify the UPC Agreement by mid-2016 and the Intellectual Property Office (IPO) has stated that the EU referendum will not impact this timetable. However, during the House of Commons debate on the approved statutory instrument, it was noted that if the UK left the EU it would not be able to be part of the UPC.
Following a meeting of the UPC Preparatory Committee, the Rules on Court fees and recoverable costs have been announced. There will be no fee to opt out of the UPC or to withdraw an opt-out, despite previous indications to the contrary. The Preparatory Committee has confirmed infringement claims will cost €11,000 plus a value-based fee for all claims worth more than €500,000 (which starts at €2,500 and rises incrementally up to €325,000 for claims over €50 million). Revocation claims will be subject to a fixed fee of €20,000 and counterclaims will cost no more than €20,000. For multi-party, multi-patent actions only one fixed and one value-based fee shall apply.
The Rules on Court fees and recoverable costs can be found here.
On 8 January, Finland became the ninth country to ratify the UPC Agreement by signing a law on its ratification. The ratification came after the Finnish parliament’s approval in December 2015. This development means that only four more states must ratify the UPC Agreement for it to become effective. However, it is a pre-requisite of the agreement that France, the UK and Germany sign up to the agreement before the system is implemented – France has ratified the Agreement, but the UK and Germany are yet to do so.
Following a proposal by the European Patent Office (EPO), the Select Committee (representing EU member states participating in the Unitary Patent or UP), has formalised a secondary legal framework for the implementation and operation of the UP. The agreed framework sets out implementing rules, budgetary and financial rules and the level and distributions of renewal fees between the EPO and the member states. EPO President Benoìt Battistelli commented:
"This is a hugely significant occasion for the European patent system. With the adoption of these rules today, the preparations for the unitary patent are complete. We are now legally, technically and operationally ready to deliver the unitary patent. The only remaining step is the opening of the Unified Patent Court and the finalisation of the ratification process at national level. We hope this will happen in 2016 and we are convinced that it will boost innovation in Europe and will be beneficial for the European economy, especially for European SMEs."
This is a step forward in the functioning of the new UP system. In order for the UP system to ‘go live’ thirteen states must ratify the UPC Agreement (including France, the UK and Germany) and the Unified Patent Court (UPC) must be in existence. Currently eight member states have ratified the UPC Agreement including France.
In the build up to the UPC going live, the online case management system has been opened for user testing. In order to test the system, users need to create an account and register on the Beta Test Site. It will be possible to test the system by simulating starting an infringement action. Users will also be able to test the application by applying for a patent opt-out. During the test period users will be able to submit feedback on the system.