News on the unified Patent Court and the Unitary Patent

22 July 202228 July 2022

“Long time no see, long time no say”: UPC is back on (fast) track!

Glanmire Road Station in the 1890s in Cork, Ireland. Photo by National Library of Ireland.

Photo via <a href=”https://www.goodfreephotos.com/”>Good Free Photos</a>

As the title of this post paraphrases lyrics of a song from the French band Phoenix, the legendary bird is what comes to mind when speaking about the UPC.

Indeed, since our last article reporting German constitutional court referral which (almost) killed the UPC, many things happened in order to agree with the well-known proverb “where there’s a will there’s way”.

Here is a catch-up post with the latest news on the UPC and its upcoming implementation (official start should occur during the first half of 2023):

8/07/2022 | “Early 2023” horizon: As a results of many “significant steps” taken during its second meeting, the UPC Administrative Committee indicated that “the timing of the start of operations of the Court can reasonably be expected to occur in early 2023”. The Committee took the opportunity of this meeting to confirm the setting-up of local and regional divisions of the Court of First Instance and to adopt the Court’s Rules of Procedure and its Table of Fees which will both enter into force on September 1^st, 2022.

More information on this meeting can be found in a statement on the UPC website and all non-confidential adopted documents are made available.

Inter alia, the Committee lifted the restrictions once contemplated for the access to the decisions and orders issued by the Court, as wished by many professional bodies, in particular for transparency and public trust reasons. Such restriction (no automatic publication) is maintained for written pleadings and evidences, that could be disclosed “upon reasoned request” (see Amendment 24 Rule 262 – “Public access to the register”).

On July 8^th, the Committee were also supposed to designate the UPC’s full and part-time judges. We will keep you posted as soon as more information will become available. As to where these judges will actually be located in Paris, it has recently been indicated that there will be two entities : one located quai de la Mégisserie and the other located on the Ile de la Cité (within the Court of Appeal and the international chamber of the Commercial Court).

28/06/2022 | Referendum in Ireland regarding the UPC in 2023/2024. As reported by the national Department of Enterprise, Trade and Employment, “The Government today reaffirmed its commitment to participate in the European Unitary Patent system and Unified Patent Court (UPC) and to hold a referendum to enable Ireland to do so”. The announcement also indicates that “Ireland has committed to the establishment of a local division of the Court to operate the terms of the agreement subject to the successful passage of a Constitutional Referendum. The Tánaiste will return to Government to outline the resources required to establish the same.”

19/01/2022 | Entry into force of the Provisional Application Protocol (PAP): General Secretariat of the Council of the European Union, in its role as Depository, declared that the Protocol on Provisional Application (PPA) of the UPC Agreement entered into force on January the 19^th, 2022. This announcement followed the ratification of the PPA by Austria (and the subsequent deposition) which thus triggered the start of the PAP allowing the conduct of the last part of the preparatory work in establishing the Court.

As a recall, in order to establish the UPC, 13 countries needed to ratify the UPC Agreement, including (post Brexit) France, Italy and Germany. Regarding the latter, Germany ratified the PPA but decided to delay final ratification of the UPC Agreement until a time at which the Court could be operational. Such final ratification by Germany will automatically trigger the entry into existence of the UPC on the first day of the fourth month thereafter.

6 April 202026 July 2022

The UPC is dead (thanks to Germany’s constit. court), long live the UPC!

The German constitutional decision:

In March 2017 a lawyer asked Germany’s constitutional court to decide whether the German Parliament had passed the legislation ratifying the UPC Agreement with the appropriate quorum .

In March of this year the court, finally, ruled that the Bundestag should have passed the ratification bill with a two-thirds majority of all the German MPs. This quorum is in fact required whenever a piece of legislation substantially amends the German constitution. Instead, only 35 out of 709 MPs approved it.

The German constitutional court however considered that the UPC Agreement allowed the transfer of sovereign rights to a supranational court, the UPC. This therefore amounted to a constitutional amendment and required the legislation enabling the ratification of the UPC Agreement to be passed by the German parliament with a two-third majority of MPs.

This means that Germany must now pass, with the specified quorum, a new law allowing the ratification of the UPC Agreement. With the current worldwide health crisis this may not however be a priority for the German government.

So what now?

Germany’s ratification is necessary for the UPC to go ahead. According to JUVE Patents, the German Federal justice minister Christine Lambrecht announced soon after the German constitutional court published its decision that she “will continue (her) efforts to ensure that we can provide European innovative industry with a unitary European patent with a European Patent Court. The Federal Government will carefully evaluate the decision of the Federal Constitutional Court and examine possibilities to remedy the identified lack of form before the end of this legislative period.”

Although the direction that will take the UPC is uncertain it seems that Germany’s political will still exists at the moment. However, the longer the ratification procees takes the harder it will be for the Court to overcome the rise of euro-scepticism and the growing reluctance of some member states to integrate further legal and economic areas.

4 March 202026 July 2022

The UK will not take part in the UPC

Brexit deal and UK participation to the UPC

The suspens is over:

The UK will not be a member of the UPC and will not deliver Unitary Patents.

The UK’s negotiating objectives, i.e its overall goals for the next phase of Brexit, published last week in fact declares:

“It is a vision of a relationship based on friendly cooperation between sovereign equals, with both parties respecting one another’s legal autonomy and right to manage their own resources as they see fit. Whatever happens, the Government will not negotiate any arrangement in which the UK does not have control of its own laws and political life. That means that 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.“

Moreover, as reported by JUVE Patent « A press office for the Cabinet Office confirmed (…) « I can confirm that the UK will not be seeking involvement in the UP/UPC system. Participating in a court that applies EU law and bound by the CJEU is inconsistent with our aims of becoming an independent self-governing nation.”

Surprise..!

Although this does not come entirely as a surprise, the UK government had nonetheless sent encouraging messages regarding the country’s participation to the UPC system after Brexit.

Its successive IP ministers had issued statements reiterating their commitment to the court; surveys had showed an overwhelming support across all industries for the UK’s participation; and the UPC’s Central division in London had already been arranged. Last but not least, the UK gouvernement had ratified in 2018 the UPC Agreement as well as the Protocol on Privileges and Immunities. These were interpreted as strong signals of the UK’s continuing participation to the UPC.

On the other hand, the raison d’être of Brexit seemed to go directly against Opinion 1/09 of the CJEU, which makes clear that the UPC Agreement requires member states to respect the primacy of EU law as well as the jurisdiction of the CJEU.

Politics thus prevailed.

Reacting to the news Alexander Ramsay, head of the UPC Preparatory Committee declared « (e)ver since the Brexit referendum in 2016 we were aware that something like this could happen, so the decision of the UK government does not come as a total surprise.”

What about the UK’s ratification of the UPC Agreement?

The next step for the UK government is now to seek to rescind its ratification of the Unified Patent Court Agreement. However, as Ramsay explains, “(t)here are no provisions in the UPC agreement for the case of a member state that has ratified the agreement to drop out. It’s therefore very likely that the UK will have to launch a procedure under the Vienna Convention on the law of treaties.”

It will be interesting to see how the UK government intends to proceed.

What is the UPC next challenge?

The next challenge for the UPC is to move forward without the UK.

To be continued…

4 December 20192 December 2019

A new Christmas tale by the German constitutional court?

In Spring 2017 the German constitutional court was asked to assess the constitutionality of the German legislation allowing the country’s ratification of the UPCA. The court backlog has so far meant that the decision is still pending.

However, on 20th November, Peter Huber, the judge rapporteur in charge of the challenge before the German constitutional court declared that the Court will hand its decision in early 2020.

In his interview with Managing IP, Huber stated that it was his “intention to issue a decision on the complaint made against the legislation enabling Germany to ratify the UPC Agreement early next year”.

The final time frame however still depends on “the time it takes for him (the judge rapporteur) and other judges at the Constitutional Court to deliberate on and amend the judgement“.

Although this declaration is not an official communication from the German constitutional court itself, whose spokesman did not actually confirm the content of the interview, it still gives hope as to the coming into action of the UPC.

Last week, Alexander Ramsay -Head of the UPC Preparatory Committee- reacted to this declaration and said that the UPC could be operational by early 2021. This assumes that Germany ratifies the UPCA very soon after its constitutional court’s decision. The UPC will then need 8 months from Germany’s ratification to be ready.

Indeed once this ratification takes place the provisional phase can start, and in turn the three governing bodies (the administrative, budgetary and advisory committees) of the court can be set up. The end of the provisional government period will then be decided by the member states.

However, Alexander Ramsay was keen to emphasise that the UPC is putting the extra time, given by the German constitutional challenge, to good use.

The IT system for example is now ready and has benefited from the ratification delay with IT teams checking that the “IT system can actually work together“. The Registry Rules are also tested to check that they are functional. Similarly the recruitment of judges is under way with around 1000 candidates to choose from for around 50 qualified judges positions and 50 legally qualified judges positions.

All is needed now is for the German constitutional court to issue its decision…

6 September 20196 September 2019

Brexit and the German constitutional challenge

Brexit is getting closer everyday and its consequences for the UPC have become tangible: it is now unlikely that the UK will still be a member of the UPC after 31st October 2019. It also is unlikely that the UK will become a member state of the UPC before Brexit; Germany’s ratification before the end of next month being highly improbable.

So what has been happening in the UK with regard to the UPC?

In August, Jo Johnson was reappointed as IP Minister. He had already held the position from July 2016 to January 2018. It is under his tenure that the UK ratified the UPC Agreement and declared it intended to participate to the UPC after Brexit.

Some had interpreted this re-appointment as a strong signal of the government support for the UK’s involment in the UPC. However Jo Johnson resigned as MP and minister on 05th September, citing “unresolvable tension between family loyalty and the national interest’.

Thus, now that the UK Government seems to be aiming for a no-deal Brexit the possibility of the UK remaining a member of the UPC is very slim. Indeed, had the UK agreed to the EU withdrawal agreement, the UK and the EU would have had until 31 december 2020 to negotiate the UK’s continued participation to the UPC.

Hence, although the UKIPO declared the following to Managing IP:

it is difficult to see how the UK government could, after Brexit, justify to be subjected to the decisions of the Court of Justice of the European Union.

Moreover, commentators agree on the fact that there is still a strong incentive for the UPC to exist even without the UK’s participation. The UPC member states will thus probably push for its entry into force despite the fact that the UK is not participating.

Managing IP has actually launched this week a survey for in-houses “to find out whether a European harmonised patent system would still be attractive to patent-focused businesses without the UK as a participant” . It asks 2 questions:

“1. Would the UPC and unitary patent system still be attractive to you and your business without the UK as a participant? 2. Why do you think the UPC and unitary patent project is still attractive OR unattractive without the UK? “

And what about Germany?

Despite passing the legislation enabling the ratification of the UPC Agreement, Germany has yet to ratify it. The ratification is stalled by the constitutional challenge of the very legislation allowing the ratification of the UPC Agreement . The German constitutional court has however schedulled the challenge for a hearing this year.

In August, the German Federal Government has had also to answer questions from the German Free Democratic Party about the UPC. The questions concerned the impact of Brexit and Germany’s annual budget for the UPC. The German Federal Government was asked about the money it has spent to contribute to support the development of the UPC. With regard to the impact of Brexit, the German Federal Government responded the following:

“The issue of the withdrawal of the United Kingdom from the European Union (so-called Brexit) and its implications for European patent reform play an important role in the further implementation process of the Unified Patent Court. The real and legal implications of withdrawing from the Treaty must be examined and agreed at European level. This opinion is currently not finalized, not least because significant factors of the expected exit are not yet known.” (p.2 response to questions 1 & 2, )

Regarding future budgets, the Federal Government confirmed its ongoing commitment to the creation of a unified patent system in Europe. It declared:

“The Federal Government has always insisted on the creation of a unified patent system in Europe and thus also on the Unified Patent Court. This commitment will continue. The Federal Government therefore takes the necessary budgetary measures to fulfill the financial obligations arising from ratification” (p.4, response to questions 7 & 8)

The UPC into action before Brexit no longer possible?

The coming into existence of the UPC before Brexit does not seem probable. It is in fact, on the one hand, unlikely the German constitutional court decide upon the constitutionality of the ratification legislation before Brexit and, on the other hand, one can doubt that Germany would sign the UPC Agreement without knowing the overall impact of Brexit on the UPC.

The coming into action of the UPC will thus depend on the Member states’ ability to commit, notably financially, to the project once the UK will have left the EU. Indeed, the UPC Agreement does not require the UK to be a participating member state for it to come into force; but only provides that “this Agreement should enter into force on 1 January 2014 or on the first day of the fourth month after the 13th deposit, provided that the Contracting Member States that will have deposited their instruments of ratification or accession include the three States in which the highest number of European patents was in force in the year preceding the year in which the signature of the Agreement takes place, or on the first day of the fourth month after the date of entry into force of the amendments to Regulation (EU) No 1215/20121 concerning its relationship with this Agreement, whichever is the latest”.

8 July 20196 September 2019

The Italian government to ask for London UPC Central Division to be transferred to Milan?

Italian Foreign Affairs confirm Milan candidacy for UPC Central Division

The Italian Foreign Ministry confirmed that the city of Milan and the Lombardy region wish to host the UPC Central Division for human necessities, chemistry and metallurgy that is -for now- located in London, were the UK not be a participating member after Brexit.

The Italian Foreign Minister indicates that the city of Milan and the Lombardy region will thus to that effect submit their candidacy to the Italian government.

13 June 20196 September 2019

Preparatory Committee re-opens judges recruitment campaign

The Unified Patent Court published on 3rd June has announced that “the Preparatory Committee has agreed to re-open recruitment for judicial positions to new applications“. This will be the second recruitment campaign after the first in 2016.

The 2019 campaign is a “‘top-up’ exercise to complement the recruitment held three years ago” . As in 2016, this campaign aims at finding legally and technically qualified judges.

This new campaign should also” allow those that were not eligible, or decided not to apply three years ago, to submit an application provided they now meet the correct criteria. “

The job adverts for legally and technically qualified judges read :

“Legally qualified judges to serve at the Court of First Instance or at the Court of Appeal – several full-time and part-time posts –
– 6-year terms –

The successful candidates will be part of a new supranational court and contribute decisively by their judicial work and highest standards of competence to ensure that the UPC becomes a widely respected forum for settling patent disputes in the Contracting Member States of the European Union.

Candidates shall be nationals of one of the Member States having signed the UPCA. To be appointed, the successful candidates shall be nationals of Member States having ratified the UPCA. They shall have a good command of at least one official language of the European Patent Office (English, French or German), shall ensure the highest standards of competence and shall have proven experience in the field of patent litigation. Specific training in patent litigation according to Art. 2(3) of UPCA Statute will also be accepted.

Candidates shall possess the qualifications required for appointment to judicial offices in the Member State of which they are nationals. Reference is made to the official information provided in the Information on the selection process of UPC judges.

In addition, the ideal candidate will have:
–      extensive experience in the field of patent litigation,
–      initiative, high degree of commitment and self-motivation and a proactive approach to ensure efficiency and high quality of proceedings at the UPC,
–      the ability to work both independently and as part of a judicial panel or specialist team, and to meet tight deadlines,
–      well-developed written, verbal and interpersonal communication skills,
–      strong analytical skills,
–      the capacity to work in a multinational and multilingual environment.

Salary and benefits: The UPC offers attractive salaries, allowances, social benefits and a pension scheme comparable to that offered at other intarnational courts. The net monthly salary for this vacancy is of EUR 11 000 for full-time judges at the Court of First Instance and of 12 000 for full-time judges at the Court of Appeal.

Technically qualified judges to serve at the Court of First Instance and at the Court of Appeal – several part-time posts –
– 6-year terms –

Qualifications: Candidates shall be nationals of one of the Member States having signed the UPCA. To be appointed, the successful candidates shall be nationals of Member States having ratified the UPCA. They shall have a good command of at least one official language of the European Patent Office (English, French or German), shall ensure the highest standards of competence and shall have proven experience in the field of patent litigation.

Candidates shall have

a university degree,
proven expertise in a field of technology and
proven knowledge of civil law and procedure relevant in patent litigation.

Specific training in patent litigation according to art 2(3) of UPCA Statute will also be accepted. In addition, the ideal candidate will have

extensive experience in the field of patent litigation
initiative, high degree of commitment and self-motivation and a proactive approach to ensure efficiency and high quality of proceedings at the UPC,
the ability to work both independently and as part of a judicial panel or specialist team, and to meet tight deadlines,
well-developed written, verbal and interpersonal communication skills,
strong analytical skills,
the capacity to work in a multinational and multilingual environment.

Salary and benefits: The UPC offers attractive salaries allowances, social benefits and a pension scheme comparable to that offered at other international courts. The net monthly salary for this vacancy is of EUR 11 000 for Court of First Instance judges (full-time equivalent). ”

As for the process and timeline the ad specifies that “the successful candidates will be selected on the basis of qualifications and relevant experience, supplemented by interviews. Appointments will be made by the UPC’s Administrative Committee. ” Both dealines for application are midnight CET 29.07.2019

24 May 20196 September 2019

UPC location confirmed for Paris central division

Paris central division location: Quai de la Mégisserie

The location of the Paris central division has been confirmed this week. It will seat Quai de la Mégisserie.

The court will hear physics, electricity, performing operations, transporting, fixed constructions, textile and paper patent cases (See Annex II of the UPC Agreement) in “functional” offices. Hence, although not in a justice-dedicated building the Paris central division will be very close to the historical Palais de Justice and the île de la Cité.

You can see pictures here

We now know all three locations of the central divisions, with the central division in Munich in the city courthouse in the Fasangarten neighbourhood and the London central division in an office building in Aldgate.

Other locations have also been made public:

Munich local division: Schleißheimerstr. 141, 80097 Munich(link is external)
Mannheim local division : Schubertstr. 11, 68165 Mannheim(link is external)
Dusseldorf local division : Cecilienallee 3, 40474 Dusseldorf(link is external)
Hamburg local division : Sievekingplatz 1, 20355 Hamburg(link is external) Milano local division: Via S. Barnaba 50, 20122 Milano Nordic-Baltic Regional Division: Scheelegatan 7, 112 28 Stockholm

As for the Court of Appeal, it will indeed be in Luxembourg as provided by article 9 of the UPC Agreement:

Court of Appeal: Nouvel Hémicycle, 1, rue du Fort Thüngen, L-1499 Luxembourg

9 May 20196 September 2019

Latest news: a few milestones have been reached

Where did the UPC stand at the end of 2018?

In December 2018 the Unified Patent Court Preparatory Committee published a statement summarizing last year’s major events for the Court. It listed notably Latvia and the UK’s ratifications of the UPC Agreement, as well as the progress of the technical and operational preparations.

On a less positive note, the statement also mentioned the fact that the German constitutional case was still pending.

Since the begining of 2019, a few milestones have since been reached:

Milestone 1: In January, Austria signed the UPC Protocol on Provisional Application (PPA). The PPA allows some provisions of the UPC Agreement to come into force early. This protocol will allow final preparations to take place, such as the recruitment of judges, and ensure that the UPC can start smoothly. Under Article 3, the PPA will come into force the day after France, Germany, the UK and 10 other countries ratify, or inform the depositary that they have parliamentary approval to ratify the Agreement and have consented to be bound by the PPA. So far France, the UK and nine other countries (Belgium, Bulgaria, Denmark, Estonia, Finland, Italy, Luxembourg, the Netherlands and Sweden) have already done so. Germany signed the PPA on 1 October 2015 but must now ratify it. However, Germany’s ratifications of the PPA and UPC Agreement, is on hold due to the constitutional complaint pending before the German Constitutional Court.

Milestone 2: In February, in Italy, the Parliament has amended its legislation (legislative decree n°18 dated 19th February 2019) to make it compatible with the Unitary Patent Regulation (EU 1257/2012) and the UPC Agreement. The Italian Industrial Property Code now recognises the unitary patent and introduces new exceptions to infringement (Article 27(c), (f), (g), (h) and (k) UPC Agreement), such as the “plant breeders’ exemption” (“The rights conferred by a patent shall not extend to any of the following: (…) c) the use of biological material for the purpose of breeding, or discovering and developing other plant varieties and the “interoperability exemption”) and the interoperability exemption (” The rights conferred by a patent shall not extend to any of the following: (…) k) the acts and the use of the obtained information as allowed under Articles 5 and 6 of Directive 2009/24/EC1 , in particular, by its provisions on decompilation and interoperability“) .

Milestone 3: In Germany, the constitutional review of the law enabling the country to take part in the UPC is still ongoing. The German Federal Constitutional Court has however listed the constitutional Complaint with the cases it will rule on in 2019. Moreover, in February 2019 the four committees of the German Parliament voted against a motion to repeal the UPC legislation. The motion will now return to the Bundestag for a definitive vote, which should a priori reject it.

Milestone 4: In March, the EPLIT published a short survey regarding the dress code for representatives before the UPC. The survey asked three questions: ” Should representatives wear uniform robes in oral proceedings before the UPC?” “Why should or shouldn’t they wear uniform robes in oral proceedings before the UPC?” and “If they should, which colour should the robe be?” Indeed, the draft Code of Conduct adopted by the Preparatory Committee mentions a dress code (“Finally, we note that once decided for the judges, some provision on the dress code for Representatives should be added to avoid possible discrimination.”). This is because in some participating member states, representatives already wear a robe, such as in France, Germany the Netherlands or the UK. The EPLIT states that apparently a blue robe has been proposed, and annouced the results of the survey at the EPLIT’s annual meeting. The results have not yet been published.

Despite some progress, the UPC’s start of operation is still very uncertain.

Indeed, although the UPC’s entry into force was announced for 2019, the uncertainty created by Brexit as well as by the German constitutional challenge has considerably slowed down the process. One can now hope that there is a better visibility over the UPC’s future once the EU and the UK agree on a Brexit deal.

2 January 20193 January 2019

Is the UK’s participation to the UPC any more certain after the Brexit deal?

The UK government and the European Union signed the Brexit deal on 25th November 2018. Although the UK parliament still needs to approve the deal, the “Political Declaration setting out the Framework for the Future Relationship between the European Union and the United Kingdom” calls regarding intellectual property for “the protection and enforcement of intellectual property rights to stimulate innovation, creativity and economic activity“. It also urges the parties to “establish a mechanism for cooperation and exchange of information on intellectual property issues of mutual interest, such as respective approaches and processes regarding trademarks, designs and patents“.

However, the agreement itself does not contain any provision regarding patents. This means that although the UK has ratified the UPC agreement and published statements confirming its commitment to the UPC, the UK’s participation to the UPC after Brexit is still very uncertain. This uncertainty has indeed been hotly debated (see Brexit IP Guidance, An Inquiry onto the effect of Brexit on the UPC, More on Brexit from the AIPPI , UK IPO update on Brexit, The Patents Order 2016) since the Brexit vote, but recently the debate has reached a peak with the publication of a long study (182 pages) published by the Max Planck Institute, which has attracted many criticisms.

What does the Max Planck Institute article say about the UK participation to the UPC?

The article published by the Max Planck Institute argues strongly against the UK’s participation to the UPC. Its authors, Hanns Ullrich and Matthias Lamping, declare that:

“Opening the UPCA to accession by third countries would render the Agreement incompatible with the Treaties.
It would entail a threat to the autonomy and effectiveness of EU law and, ultimately, to the EU’s control over the conditions of innovation and its legal protection within the Internal Market.
(…) it is not the safeguards incorporated into the UPCA in the aftermath of Opinion 1/09301 that ensure the compatibility of the UPC’s judicial system with the Treaties but rather the limitation of contracting parties to EU Member States, because that is what makes those safeguards applicable as a matter of Union law, regardless of whether they are incorporated into the UPCA or not.
(…) what is needed is the development of a flexible arrangement on the protection and enforcement of patents that properly fits into the framework of the future UK–EU relationship, adequately caters to both sides’ interests in a patent policy and practice of their own and is well balanced so as to be generally acceptable rather than primarily desirable for some particular stakeholders. As regards the European Union’s own system of patent protection, every effort should be undertaken to complete it in respect of both its substance and adhesion by all Member States with a view to make it a true success of genuine economic and sociopolitical integration. The authors argue therefore that the UK’s participation to the UPC could geopardize this new dynamic.
While the UK intends to explore staying on board, the EU might draw a different conclusion from Brexit. As it stands, opening the UPCA to accession by third countries would render the Agreement incompatible with the Treaties.

The researchers also question what the UK would gain by participating to the UPC as the UK would have “to delegate jurisdiction over its patents to the UPC” and “accept that all cases brought before the court are decided in the light of the “letter and spirit of the Treaties””. Indeed, acording to Ulrich and Lamping, for it to participate the UK would have to agree with the fact that “the EU could amend the UPCA anytime through the “backdoor”of secondary Union law” and that the “UK would have to accept that the EU is in full control of post-grant patent law”. The UK had however adopted a very different position throughout the Brexit negotiations. This may thus compromise the UK’s participation to the UPC.

How was the article received?

The Max Planck Institute article was widely criticised, most notably by the fictional lawyer from How to Kill a Mocking Bird, Atticus Finch. The anonymous writer behind that pseudonym formulated the following remonstrances :

“(T)he studies overlook some important precedents in EU law and policy which results in parts of the studies being based on wrong assumptions. In fact “extension of EU instruments to third countries is something quite frequent ” and “the problems the authors see with such an extension can easily be solved as other examples of extensions of EU instruments to third countries show”.
The authors also do not seem to fully recognize the economic needs of European and of UK companies as “(w)hen stating that the mere loss of an option for business to get patent protection in the UK (by means of a Unitary Patent) does not negatively affect businesses they do not seem to fully acknowledge that this will render patent protection more complex and costly for all companies who need patent protection in the UK”
It is further somewhat astonishing that the authors argue an extension of the Unitary Patent to the UK is not in the UK’s own interest since the UK allegedly needs policy space with respect to framing its patent law.
(T)he authors do not put forward any new arguments regarding the alleged incompatibility of the UK’s participation with Union law and with Opinion 1/09 of the CJEU.” Moreover, “(p)arts of the arguments against the UK participation are based on the wrong assumption that the UK could block any alignment of the UPC Agreement with Union law, which is not the case”.

Other professionals defended a similar position, such as A. Ohly and R. Streinz (“Can the UK stay in the UPC system after Brexit?”, GRUR Intl. 2017, 1) R. Gordon and T. Pascoe (“Re The effect of “Brexit” on the Unitary Patent Regulation and the Unified Patent Court Agreement”) and M. Leistner and P. Simon (“Auswirkungen des Brexit auf das europäische Patentsystem”, GRUR Intl. 2017, 825).

W. Tilmann, for example, in the German Association for the Protection of Intellectual Property magazine rebunks the Max Planck study in terms similar to those of Atticus Finch:

He highlights the fact that although the authors argue against the UK’s participation to the UPCA they do not “give more details on possible improvements of the unitary patent and the UPCA which would be possible to realise without the UK participating” to support their views. Tilmann notes for example that while the UPC is often said to be missing “prior use right, protection of published patent applications, novelty depriving prior rights and compulsory licences“, it is doubtful that their provisions by Member States “liberated from the UK’s participation” would “offset the loss of UK’s participation and make the horizon for inventors and industry on the continent look brighter”.
Tilmann also criticises the lack of information regarding the legal effect of a Brexit agreement that would not contain “any rule on the UK remaining as a contracting State of the UPCA” and argues that the authors’ answer that “the UPCA would automatically change from a common court of Member States to an “ordinary” international court” is not satisfying.
In the second part of its article Tilmann looks at the question of the entitlement of the UPC to refer question to the CJEU after the Transition Period. He notes that the end of the Transition Period will give rise to a special situation “characterized by the UPC being supported by 24 CMS, fully integrated into the relationship between the CJEU and the national courts, and one contracting State having been a CMS when it pledged to respect Union law (…) and all obligations out of the Agreement as if it were a CMS.” This for him shows that the UPC is well integrated in the “CJEU-national courts system” and contradicts the Max Plank Institute research fellows’ theory that “the UPC will not be able to refer Union law questions to the CJEU once the UK has left the Union by Brexit.“
Finally, in the third part of the article, Tilmann rebutes the “second major argument of the authors against the UK’s participation in the UPCA” according to which“the UK would have a veto power against further amendments (…) of the UPCA (...) The Brexit would put the UK in a stronger position than at present.” Tilmann however notes that the UK will have no power regarding Union law as “with the exception of horizontal effect of not implemented all Union law is immediately to be applied by the UPC without a change of the UPCA being necessary“. Tilmann also rebates the argument put forward by Ullrich and Lamping regarding the fact the “UK could have a veto power against a change of the UPCA following a change of Union law, not only from the position of the UK (after Brexit) as a contracting State but also from Art.87(3) UPCA (declaration not to be bound by a change of the UPCA law by the Administrative Committee)” as “this provision does not apply in the case of a change of Union law” which therefore leaves the UK without any veto power regarding Union law.

Has the UPC commented yet on the UK’s participation?

On 19th December 2018 the UPC published a short statement which reads: “2018 has been a year of mixed highs and lows. This year has seen two more Signatory States ratify the Unified Patent Court Agreement, namely Latvia and the UK which means there are now 16 ratifications in total of the Agreement, well over the number required. We still await the outcome of the complaint pending before the Constitutional Court in Germany before the project can move into the next phase, the period of provisional application.”

The UPC also highlighted its progress regarding the technical and operational preparations which are “allowing for the project to move at pace in the event of a positive outcome from the German Constitutional Court”. In addition, the UPC Chairman holds regular meetings with the Executive Group and the operational team to review the status of the project. Similarly the recruitment of judges is going on and “(t)hose that have applied for judicial positions in the Unified Patent Court are being contacted separately”.

Therefore, although the UPC is silent on the UK’s participation it seems nevertheless to put all its focus on its coming into function and on the growing number of ratifications.