Milan officially named as third seat of the Unified Patent Court, but what will be competent to hear?
Milan replaces London after the UK withdrew from the UPC in 2020.
On World IP day (26 April) 2018, the ratification of the Unified Patent Court Agreement (UPCA) took place and was announced by the IP Minister, Sam Gyimah MP.
Ratification of the UPCA is needed to realise the Unitary Patent and Unified Patent Court (UPC). Under these new systems, businesses will be able to protect and enforce their patent rights across the EU in a more streamlined way – with a single, pan-EU patent enforced through a single, pan-EU patent court (although not all EU countries are party to both strands of the UPCA).
This contrasts to the current European patent process, in which inventors must maintain individual national patents in each EU country, after grant of a European patent, and then enforce their patents in each country’s national patent court.
Sixteen countries have now ratified the agreement, which requires a minimum of 13 countries including UK, Germany and France, in order to take effect (in those countries which have ratified). France has also ratified, so we are now only waiting for Germany.
There is, at present, a constitutional challenge to ratification by Germany, on grounds including that adoption of the legislation amounts to a transfer of sovereign powers to European institutions and must therefore be decided by a qualified majority of two thirds of the members of the Bundestag (National Parliament) and the Bundesrat (Federal Council).
Some may consider it ironic that a decision has been taken after Brexit, that is considered by some in Germany to be a transfer of sovereign power to European institutions and will involve the possibility of appeals to the Court of Justice of the European Union (CJEU). In light of this, there is speculation about whether, despite ratification, it may prove impossible for the UK to remain part of the Unified Patent Court Agreement and to host a central division of the Unified Patent Court once the terms of Brexit are finalised.
Nonetheless, legal opinions have been published which indicate that the UK can remain part of the UPCA after Brexit and at present plans remain in place for one of the three central branches of the Unified Patent Court to be located in London. The London branch will be responsible for on patent disputes in chemistry, materials, pharmaceuticals and life sciences. Clients in many areas of our sector expertise such as food and drink, advanced materials, biotech and healthcare, should welcome this news.
Announcing the ratification, Intellectual Property Minister, Sam Gyimah MP said:
The UK is overflowing with innovative businesses, with pockets of this innovation spread up and down the country. These businesses are the lifeblood of local economies by boosting income and creating jobs.
Ratification of this important Agreement demonstrates that internationally, as well as at home, the UK is committed to strong intellectual property protections. This will help to foster innovation and creativity, bringing our modern and ambitious Industrial Strategy to life.
We will continue to monitor the situation in Germany and will issue another alert in due course. In the meantime, if you have any questions in relation to the Unitary Patent or Unified Patent Court, or indeed in relation to the likely effect of Brexit on IP in general, please do not hesitate to contact us.