The Preparatory Committee latest update:
The Preparatory Committee published a short update on the UPC’s latest developments and the good ratification progress.
The update highlights the consequences of the German constitutional court review of Germany’s legislation allowing the ratification of the UPC Agreement. This action has in fact led to the postponement of Germany’s ratification until further notice by the German constitutional court. In turn, this new uncertainty has seriously jeopardised the timetable for the start of operations of the UPC and made it difficult to predict a new timeline.
The Preparatory Committee on the other hand underlines the good progress made by participating Member States with the ratification of the UPC Agreement. In fact, 14 countries have so far deposited their instruments of ratification. Hence, according to the Preparatory Committee, it is likely that 20 countries will have ratified the UPC Agreement by the time the UPC starts operating.
Why is “good ratification progress” good news for patent users?
The number of countries that will have ratified the UPC Agreement will be higher than the original estimations . This is good news for patent owners.
The EU Directive 1257/2012 and the UPC Agreement in fact both state that the territorial scope of the unitary patent and the UPC’s decisions will correspond to the territory of the Member States participating to the unitary patent package and having ratified the UPC Agreement. Article 3 of EU Directive 1257/2012 more specifically states that “(a) European patent with unitary effect (…) shall provide uniform protection and shall have equal effect in all the participating Member States. It may only be limited, transferred or revoked, or lapse, in respect of all the participating Member States.” Similarly, article 54 of the UPC Agreement, provides that the territorial scope of the UPC’s decisions covers “the territory of those Contracting Member States for which the European patent has effect“.
This means that the more Member States ratify the UPC Agreement the larger the territorial scope of the Unitary Patent and the UPC is. Hence, from 2018, an inventor applying for a unitary patent or the owner of a non-opted out European patent will benefit from a protection extending to 20 countries . Likewise, a patent owner initiating an infringement action may be able to obtain a declaration of infringement in those 20 countries. The alleged infringer of that patent on the other hand may obtain its revocation in all those participating Member States.
Beyond the minimum required number of countries that must ratify the UPC Agreement for it to enter into force, the number of ratifications of the UPC Agreement will also importantly determine the territorial jurisdiction of the court and the territorial scope of the Unitary Patent.
So, which are the 14 countries that have ratified so far the UPC Agreement ?
Austria (2013), France (2014), Sweden (2014), Belgium (2014), Denmark (2014), Malta (2014), Luxembourg (2015), Portugal (2015), Finland (2016), Bulgaria (2016), Netherlands (2016), Italy (2017), Estonia (2017), Lithuania (2017).
The territorial scope of the UPC and the unitary Patent therefore looks like that:
(Green: Countries that have ratified / Pink: Countries that have not ratified yet / Brown: Countries not participating to the UPC)
Despite their ratification of the UPC Agreement, some of these countries however have not signed the protocols necessary for the entry into force of the UPC:
- Austria, Malta, Portugal, and Lithuania have not signed the Protocol to the Agreement on a Unified Patent Court on provisional application;
- Austria, Estonia, and Lithuania have not Protocol on Privileges and Immunities of the Unified Patent Court.
What about the 11 countries that still have not ratified the UPC Agreement?
The following countries have not ratified yet the UPC Agreement, however, most have made progress towards their participation to the UPC.
The UK: In October 2015 the UK signed the Protocol to the Agreement on a Unified Patent Court on provisional application. Since (on 26th October 2017) the Scottish Parliament debated and approved the draft International Organisations (Immunities and Privileges) (Scotland) Amendment (N°2) Order 2017 which will give effect to the Protocol on Privileges and Immunities of the Unified Patent Court. This Order amends the Scottish International Organisations (Immunities and Privileges) (Scotland) Order 2009 .
This is however only the first out of the two orders required for the UK to sign the Protocol on Privileges and Immunities. In fact both the UK and the Scottish Parliaments must review and amend their respective legislation. The UK Unitary patent Court (Immunities and Privileges) Order 2017 was laid before the UK Parliament on 26th June 2017 and is now awaiting debate before the UK Parliament.
The UK Parliament is on recess until 9th October 2017 and will thus only consider this statutory instrument from this date. As to ratification of the UPC Agreement the UK government undertook to ratify it before it leaves the European Union and reaffirmed its commitment to the UPC (see here). The UK Government has not however disclosed any date for ratification .
Germany: In March 2017 Germany passed a law to ratify the UPC Agreement. In April 2017 a challenge was brought before the German constitutional court arguing that the legislation passed by the German Parliament was unconstitutional. (See our posts on this issue here) This complaint has put a stop to Germany’s ratification process. The German constitutional court has not yet made public when it will consider the complaint. However, the court has extended (last week) its deadline for third parties comments on the issue to 31st December 2017. Germany has nonetheless signed the Protocol to the Agreement on a Unified Patent Court on provisional application in October 2015 and the Protocol on Privileges and Immunities of the Unified Patent Court in June 2016.
Ireland: In Ireland, although the Irish Prime Minister has announced seven referenda in September 2017, none will be on the ratification of the UPC Agreement. Ireland ratification of the UPC Agreement demands however that the Constitution be modified which can only be made through a referendum. The decision of the Irish Prime Minister to delay the organisation of this referendum therefore postpone Ireland’s ratification to an unknown date. Ireland has also neither signed the Protocol on Privileges and Immunities of the Unified Patent Court nor the Protocol to the Agreement on a Unified Patent Court on provisional application.
Greece: In June 2016, Greece altogether with 11 other Member States signed the Protocol on Privileges and Immunities. Since, the Ministry of Justice consulted in March 2017 the public on the draft legislation to ratify the UPC Agreement (see the consultation here). The same month Greece signed the Protocol to the Agreement on a Unified Patent Court on provisional application.
Hungary: It was reported that in July 2017, the Hungarian Minister of Justice, acting on behalf of the government, filed a motion with the Constitutional Court of Hungary (No. X / 01514/2017) requesting the Court’s opinion on the compatibility of the UPC Agreement with the Hungarian Constitution “and on the appropriate mechanism that must be used for its ratification“. The Hungarian government in fact wishes the Constitutional Court to determine whether the ratification of the UPC Agreement can be operated under the mechanism of transfer of sovereignty that must be used in relation with the EU and international agreements that Hungary sign as an EU member state. The nature of the UPC Agreement is in fact debated since the Brexit. Indeed if the UPC Agreement is an EU agreement, the UK’s participation to the UPC will be subject to amendments made to the UPC Agreement. If on the other hand the UPC Agreement is an international agreement the participation of the UK will be subject to, notably, its acceptance of the authority of the CJEU. Although for reasons related to the Hungarian constitutional order, the Hungarian constitutional court may thus determine this issue before the CJEU or Brexit negotiators reach a their own conclusion.
Slovenia: In October 2015 Slovenia signed the Protocol to the Agreement on a Unified Patent Court on provisional application, followed in July 2017 by the Protocol on Privileges and Immunities in July 2017. It also passed a law ratifying the UPC Agreement in October 2016. Slovenia however has still not deposited its ratification instrument to the Council of the European Union. This renders it ineffective. Finally, Slovenia will be hosting the Patent Arbitration and Mediation centre in Ljubljana. In that respect Slovenia has registered a declaration by the Council of the European Union stating that “(t)he Republic of Slovenia considers that the Patent Mediation and Arbitration Centre as established by the Agreement on a Unified Patent Court, done at Brussels on 19 February 2013, is part of the Unified Patent Court, and that consequently the provisions of the Protocol on Privileges and Immunities of the Unified Patent Court, done at Brussels on 29 June 2016, apply mutatis mutandis to the Centre.“
Latvia: Latvia has passed a law ratifying the UPC Agreement in April 2017. This law however will only come into force on 1st January 2018. Latvia is planning to take part in the Nordic-Baltic regional division of the UPC with Sweden, Lithuania and Estonia but must first pass a law allowing its participation to this regional division.
The Czech Republic, Cyprus, Slovakia and Romania have not initiated any development towards their participation to the UPC.