Posted on 23/2/2017

Unified Patent Court – Getting the green light

An update on the latest developments in establishing the Unified Patent Court.

As Italy becomes the 12th country to ratify the Unified Patent Court Agreement (UPCA), we take a look at the latest developments since the UK signalled the ‘green light’ for ratifying the agreement.

In November 2016, we reported that the UK would “proceed with preparations” to ratify the UPCA.

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, whereby 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.

Part of the agreement also includes plans for a London branch of the UPC which will rule on patent disputes in chemistry, materials, pharmaceuticals and life sciences.

This announcement went against the expectations of many in the IP profession, who anticipated that the UK would pull out of the agreement following the UK’s vote to leave the European Union in June 2016.

In January 2017, the UPC Preparatory Committee announced that they were working ‘under the assumption’ that the Court will become operational in December 2017. However the Committee noted that the timetable is reliant on a number of factors, most significantly the ‘necessary ratifications of the UPCA’.

On 10 February 2017, Italy became the 12th country to ratify the agreement, following legislation in November last year that gave the President authorisation to do so. The UPCA requires 13 countries – including France, Germany and the UK – to ratify the agreement before it can come into force. France has already ratified the agreement whilst Germany and the UK are yet to do so.

For the moment, the UPC still appears to be on track. However the question remains as to whether the UK government can balance continued inclusion in this agreement with the UK’s decision to leave the European Union.

The initial UK government statement in November last year claimed that: “The UPC itself is not an EU institution, it is an international patent court. The judiciary appointed include UK judges.” Whether this statement is correct remains to be seen; Art. 20 of the UPC Agreement explicitly says that the UPC shall apply European Union law in its entirety and shall respect its primacy, and Art. 21 adds that decisions of the Court of Justice of the European Union shall be binding on the UPC.

The new UK IP minister Jo Johnson, speaking before the UK Science and Technology Committee on 11 January, reaffirmed the country’s commitment to the UPC although when questioned as to the provision for non-EU members to participate in the scheme, he stated that questions like these “will form part of a bigger discussion around the Brexit negotiations”.

We will continue to keep you updated with any further announcements. If you have any questions, please get in touch.

Wilson Gunn