To align or not to align? The example of the UK Patent (European Patent with Unitary effect and Unified Patent Court) Order 2016:

Brexit and the German constitutional challenge

The ratification process of the UPCA and the entry into force of the UPC have to a certain extent eclipsed the issue of alignment of national laws on the UPCA. Some countries, such as the Netherlands, have already declared that they will fully align by adopting the UPCA as their new national patent law. Others who have already ratified the UPCA, such as Denmark do not plan to change their national law at all.

Arguably, alignment of all national laws on the UPCA would allow for a more efficient use of the system by guaranteeing fairness and predictability. Alignment would in fact stop any “system shopping” whereby users could choose to opt-out from the UPC in order to benefit from the differences in the scope of protection under national patent law. On the other hand it can be argued that aligning all national legislations on the UPCA would go considerably beyond the initial project of the Unified Patent Court and the Unitary Patent. The debate as to the necessity or suitability of alignment will therefore remain open for the next few years until the effects of non alignment become obvious.

The position of the United Kingdom reversely, reflects a middle ground position, with a partial adoption of the UPCA within national legislation.  The publication last week of the fourth report of the Secondary Legislation Scrutiny Committee along with “The Patents (European Patent with Unitary Effect and Unified Patent Court) Order 2016”  and an address to the House of Lords detailing the position of the Committee on two specific points, gives us a clear idea of the way the UK intends to partially align its national legislation with the UPCA. In January 2016, the Government had already published its response to the public consultation on the secondary legislation implementing the Unitary patent and the UPCA, which indicated that the UK Government strongly supported alignment with the UPCA.

The Explanatory Memorandum prepared by the Intellectual Property Office and the Department for Business, Innovation and Skills clearly explains the extent of the alignment now considered:

Before the UK can ratify, the Government needs to ensure that its obligations under the UPC Agreement are met in national law. It is also necessary to ensure national law is in compliance with the provisions of the Unitary Patent and Translation Regulations. In particular, this means that the new Unitary Patent should be reflected in the Patents Act as a patent valid in the UK, and that the Unified Patent Court must be given the proper degree of jurisdiction over the appropriate patents. These goals can only be achieved through legislation.”

The IPO however considers that the rights given to owners of Unitary Patents and European Patents to prevent the use of their invention and the exceptions to those rights “are the same as currently provided under UK law, so require only minimal changes to be made“, except in two areas that were highlighted by the government in its public consultation that took place in 2015 and were the object of  given specific attention by the Secondary Legislation Committee and Department of Business Innovation and Skills:

  • The first exception relates to the ability of plant breeders to use patented biological material to create a new plant variety without infringing a patent for that material.  This exception already exists in the patent law of Germany, France and the Netherlands, which are the major countries for plant breeding in Europe. The Department for BIS therefore notes that “the industry in which this exception will operate is therefore familiar with how it works, and the effect it will have on their research and development. Indeed, the industry has urged its introduction and emphasised its importance in allowing UK companies to remain competitive in the field“. The introduction of this change therefore intends to put the UK industry on a level footing with major competitors in other parts of Europe, and will apply to all patents valid in the UK.


  • The second exception allows someone to use a lawfully-acquired computer program for certain purposes without the permission of the patent owner, and without that use being an infringement of any patent covering that program. This is a narrow exception, intended to assist in the development of independently created programs so they can work correctly with other programs, and which will not be applied to GB national patents, but only to European Patents (UK) and Unitary Patents. This software exception does not currently exist in the patent law of any of the participating Member States, the Department for Business Innovation and Skills therefore considers that “as such, its scope and effect have not been tested in litigation, so the extent of use it may permit is not known. In addition, the exception is unusual because it uses an EU Directive on copyright to define its effect, and it is not clear how that will interact with patent law“. The IT and telecoms sectors having expressed strong concerns and with great uncertainty as to how many patents could be affected,  a cautious approach is recommended for this exception.

It is now to the UK Parliament to vote the Patent (European Patent with Unitary Effect and Unified Patent Court) Order 2016 which will ensure the partial alignment of the UK patent legislation on the provisions set in the UPCA, before it ratifies the latter. The UK’s partial alignment is not of course a position common to all contracting member states but it illustrates the careful balance that contracting member states will need to achieve in order for national laws and the UPCA to create a coherent and fruitful environment for patents.

UK Government’s response to its consultation on secondary legislation implementing the UPCA: How will the UK legislation be amended to be aligned on the UPCA?

In  June 2014, the UK Government through the Intellectual Property Office opened a consultation to seek views “on the drafting, structure and effect of the draft legislation which will allow for the implementation of the Unified Patent Court Agreement and the associated EU Regulations which introduce the Unitary Patent“.

This week, the UK Government published its response to the consultation and  the draft statutory instrument (SI) which will accommodate the UPC. It has to be noted that, although very short, this statutory instrument is particularly difficult to read as it amends certain sections of the Patents Act 1977, specifies which sections of the Patents Act will apply to Unitary Patents and which ones will not, and incorporates by reference in the Patents Acts some Articles of the UPC Agreement.

The questions listed for the public were:

Questions on changes relating to Jurisdiction

1. The aim of the proposed changes to UK law is to ensure the correct division of competence between UK courts and the UPC, in accordance with the UPC Agreement:a. Do you think these changes achieve this aim? b. Why do you think this?

2. The draft legislation aims to reflect the transitional period set out in the UPC Agreement. a. Does the draft legislation clearly implement the transitional period provisions of the UPC Agreement? b. What, if any, improvements would you suggest?

3. What is your view on the provision of an opinions service for a Unitary Patent? If possible, please provide evidence in support of your views.

4. The proposed changes will mean that UK courts will not have jurisdiction for certain disputes related to EP(UK)s, Unitary Patents or related SPCs. a. What, if any, impact do you think the changes to jurisdiction introduced by the legislation will have on your business? b. What, if any, impact would there be on you as a patent owner, a person wishing to challenge the validity of another’s patents, a patent attorney, lawyer, a translation service provider, or other (please define)? If possible, please provide evidence in support of your views.

5. There will be a section of the central division in London which will deal with revocation cases on life sciences. a. How will the presence of the central division in London affect you? b. Do you anticipate using it? c. If possible, please provide evidence in support of your views.

6. The UK can have a local division which will deal with infringement cases. a. How important is it to your business to have access to a local division of the UPC within the UK and why? b. Is the location within the UK important to you? If possible, please provide evidence in support of your views.

7. Patent owners and applicants will be able to register an opt out of the UPC during the transition period, which will apply for the lifetime of the patent. What factors will influence you in choosing to opt-out or not of the UPC’s jurisdiction?

Questions on changes relating to the Unitary Patent

8. The aim is that UK law is compliant with the Unitary Patent Regulation. a. Are the proposed changes sufficient to ensure compliance of UK law with the Unitary Patent Regulation? b. If not, why not?

9. We propose that all the provisions of the Patents Act 1977 which apply to Unitary Patents should apply in the same way as they apply to EP(UK)s, except where they are expressly modified. What is your view of this approach?

10. What is your view on whether double patenting should be allowed for Unitary Patents?

11. What is your view on extending the groundless threats provisions to threats made in the UK in relation to Unitary Patents?

12. a. What, if any, impacts on your business do you foresee of the proposal to extend the restriction on double patenting to Unitary Patents? b. How might this affect your likelihood of seeking unitary patent protection?

Questions on changes relating to Infringement

13. The proposed changes to infringement include the modification of some provisions to account for the territory of the Unitary Patent and the introduction of two new exceptions. Are the proposed changes sufficient to give effect in UK law to the infringement provisions of the UPC Agreement?

14. We have taken an approach of making only minimal changes to implementing the infringement provisions. This means that the exact wording of the infringement provisions found in the UPC Agreement is not replicated in section 60 of the Patents Act. What do you think the consequences are of this approach?

15. At this stage we have taken two different approaches to the way the two new exceptions to infringement are drafted. For the plant breeders exception, we have copied out the wording as found in the UPC Agreement; whereas the software exception makes a direct reference to the UPC provisions. a. What is your view on which form of words works best? b. Should the same approach be adopted for the two new exceptions or is it preferable to adopt different approaches?

16. a. What is your view of the proposed changes to align the exceptions to infringement in the Patents Act with those of the UPC Agreement? b. Would you be affected by these changes, if so, what impact might this have? 17. When should the new provisions on infringement apply and why?

18. We propose changing section 60(5) of the Patents Act to include an exception from infringement for the use of biological material for the purposes of breeding, or discovering and developing another plant variety. What, if any, would be the impact on your business of doing this?

19. We propose changing section 60(5) of the Patents Act to include an exception from infringement for an act permitted under Articles 5 and 6 of Directive (EC) No 2009/24 on the legal protection of computer programs and the use of information obtained by such an act. What, if any, would be the impact on your business of doing this?

20. a. How might the proposed new exceptions affect your business in terms of licensing of patents relating to biological material or computer programs? b. What evidence can you provide in support of your view?

The UK Government in its response to the consultation clarifies the following points:

  • Comptroller: where actions are under the exclusive competence of the UPC, the Comptroller cannot retain jurisdiction as a tribunal. The Comptroller will provide a non-binding opinions service. The Comptroller’s power to revoke a patent on the basis of an opinion finding a lack of novelty or inventive step will however not apply to Unitary Patents or EP(UK)s which have not been opted out, because the revocation of those patents will be part of the exclusive jurisdiction of the UPC.

  • Enforcement of UPC court orders:  a new section on enforcement will be included in Schedule A4 of the SI to provide for the enforcement of UPC orders and decisions in primary legislation, and therefore make it clear that such orders and decisions are enforceable in the UK.

  • Consequential changes to the Patent Act:  section 130(1) of the Patents Act (Interpretation) adds the UPC to the definition of “court”. It is therefore no longer necessary to amend section 27(2) (General power to amend specification after grant) to make specific reference to the UPC.

  • Double patenting: The government is unchanged in its view that, on balance, the best policy is to prohibit double patenting. The law will be consistent for all European Patents valid in the UK whether they benefit from unitary effect or not.

  • Groundless threats:  The government has considered a number of options to ensure that there is a sufficient link to the UK for any groundless threats action and is considering primary legislation to take forward the Law Commission’s recommendations for reform of the law on groundless threats across patent, trade mark and design law.  The Law Commission specifically recommended that the law on unjustified threats applies to the Unitary Patent and that a new test for a threat of infringement proceedings be provided, to ensure that it only covers alleged threats relating to an act done or which, if done, would be done in the UK.

  • General approach on infringement:  Changes to the Patents Act are only proposed where there are material differences between the Act and the UPCA, this means that for many existing provisions there are no changes to the wording if it is not deemed essential.

  • Proposed alignment of new infringement exceptions :  the new exceptions to infringement were of interest to many of those that responded to the consultation. The UK government is still however of the view that minimal changes are required to implement Articles 25-27 of the UPC Agreement (Art 25: Right to prevent the direct use of the Invention; Art 26: Right to prevent the indirect use of the invention; Art 27: Limitations of the effects of a patent). Consequently, the government intends to only amend section 60 of the Patents Act 1977 (Meaning of Infringement) to the extent that it is necessary to introduce the exceptions to infringement which do not currently exist in UK law.

  • Plant breeding exception: The government believes that the plant breeding exception may bring benefits to the plant breeding industry in the UK. Introducing a new exception to infringement for plant breeding which implements Article 27(c) of the UPC Agreement will produce the most benefits for users and also ensure consistency as it will apply to all patents whether European or national.

  • Computer programs exceptions: Much consideration has been given to this issue and on balance the government finds that in this instance it may be best to treat the implementation of the exception in two stages. Initially implementation will be for European patents only (encompassing Unitary Patents, as well as bundle patents – whether or not they are opted out of the UPC), with a view to extending the exception to domestic GB patents following a review of its performance in practice.

  • Changes to UK Law to define infringement of the Unitary Patent: sections 60(1) and 60(5)(d)-(f) (Meaning of Infringement) of the draft legislation will need to be amended so that references to the United Kingdom would be taken as referring to the Member States who are party to the UPC Agreement instead. This will ensure that all of the infringement provisions apply correctly for the entire territory covered by the Unitary Patent. The previous approach, which referred only to the UK could in fact have resulted in infringement only being found if the act occurred in the UK.

  • Transitional arrangements: The government has now included provisions in the legislation which take into consideration the transitional arrangement.

The Statutory Instrument will now need to be approved by both Houses in Parliament before the UK can ratify the UPCA; it will however not come into force before the UPCA itself does.