The guidance states that only a few areas of UK patent law rely on EU legislation. Therefore “(t)he relevant EU legislation (or its domestic implementation) will be retained in UK law under the EU Withdrawal Act 2018.” The existing system will thus remain in place but will operate independently from the EU regime.
Regarding the Unified Patent Court and the Unitary Patent:
After March 2019, the UK government IP Guidance lists three possible scenarii:
- The UPC has not yet come into force:
The UK legislation “to bring (the UPC) into force will never take effect in the UK“. After Brexit, patent holders and patent users will thus only be able to rely on the UK patent legislation.
- The UPC has come into force and the UK withdraws from it as well as from the unitary patent:
With regard to the protection of inventions within the territories of the UPC contracting states:
Patent owners, irrelevantly of their nationality, will be able to benefit from the Unified Patent Court and unitary patent within the contracting EU member states . The unitary patent will not however include the territory of the UK. Patent users, irrelevantly of their nationality, will also be open to litigation before the UPC if they infringe existing rights within the contracting EU member states. However, the question of the enforcement of the UPC decision in the UK still needs to be clarified. Finally, as confirmed by the EPO, “Brexit will have no consequence on UK membership of the European Patent Organisation, nor on the effect of European patents in the UK” .
With regard to the protection of inventions within the UK:
Patent owners, irrelevantly of their nationality, will no longer benefit from either the UPC or the unitary patent within the UK. They will nonetheless have the options of applying for a national patent before the UK Intellectual Property Office and for a European Patent before the EPO. UK courts will then have jurisdiction.
- The UPC has come into force and the UK remains part of the UPC and the Unitary patent:
Patent users and owners, irrelevantly of their nationalities, will benefit from the unitary patent as well as from the jurisdiction of the UPC, both extending to the territory of the UK.
But could the UK actually remain part of the UPC and the Unitary Patent? Any guidance?
The question is important. Indeed, the UPC Agreement has no provision enabling a non EU member state to participate in the UPC system.
No it cannot…
A paper published this month by the Max Planck Institute makes a strong argument against its participation. It lists three reasons:
“– (1) there is no legal basis in primary Union law for courts situated outside the judicial system of the Member States and, consequently, that of the EU, to cooperate with the CJEU by making references for a preliminary ruling within the scope of Art. 267 TFEU.
– (2) as contracting parties, third countries would have a say in all matters that concern the UPC’s polity and policy, including its reception of Union law and policies, and in particular with regard to the transposition of secondary Union law into the UPCA;
– (3) the fact that the UPCA’s provisions may have to be interpreted in the light of different principles and policies depending on the institution by which, and the context within which, they are applied may compromise the uniformity of the law embodied therein.“
Yes it can!
Other contributors to the debate have expressed the opposite view. Kevin Mooney, a member of the UPC advisory group, has for example always be a proponent of UK’s participation to the UPC.
In an article to the magazine Juve Mooney declares that he believes that the UK “leaving the EU would not be fatal” to its participation to the UPC. According to Mooney this should be possible for at least the transitional period. In fact, if the UK and the EU enter a withdrawal agreement that provides for such participation no amendment of the UPCA will be required. This means that “the UK will be in the project for at least two years from March 2019 and will fully participate“. This would also mean that the Central Division entity dealing with chemicals, pharmaeuticals and life sciences will remain in London.
However, there is still uncertainty as to the possibility for English judges and lawyers to fully participate to the UPC. Finally, the UK and the EU will need to agree on the UK’s long-term participation to the UPC.
