What future for the UPC now that the UK has voted to leave the EU?

Encouraging steps by participating member states towards the entry into force of the UPC Agreement

On Wednesday (06/07/16) the Union pour la Juridiction Unifiée des Brevets (Union for the Unified Patent Jurisdiction) organised in Paris a conference on the consequences of the Brexit for the UPC. (See the recorded video below)  The participants,  Thierry Sueur, chairman of the IP Committee of the MEDEF -the French business federation- representing the European industry, Professor Winfried Tilmann from Hogan Lovells, Rowan Freeland from Simmons&Simmons, and Alexander Ramsay, chairman of the UPC Preparatory Committee, outlined  the legal and political consequences of the Brexit on the UPC and the immediate next steps for the Preparatory and Advisory Committee in this regard.

After an opening by Pierre Véron who reflected on the shock of the Brexit news (shared by the audience), Thierry Sueur highlighted the position of the European Industry which is demanding that the ratification process continues in order for the UPC to come live, and he thus pleaded for the UK to ratify the UPCA and its protocol. According to him, ratification by the UK would in fact allow the UPC to meet its opening deadline in Spring 2017 and would leave the door open for the UK to take part in the UPC and the Unitary Patent package.

Professor Winfried Tilmann then addressed the question of whether the UK can still take part in the UPC. First Professor Tilmann argued that there were strong political arguments to justify the UK’s ratification. In fact, the UK is still and until the end of the two-year period after its notification of withdrawal under article 50 of the Lisbon Treaty, a member of the EU and, as both houses of British parliament have already started working on ratifying the UPCA, the ratification could therefore be quite straightforward.  He also noted that the UPCA is an international treaty that does not derive from EU law, and that although the UPC shall be a court common to the Contracting Member States -and thus subject to the same obligations under Union law as any national court of the Contracting Member States- it is not a court of the EU -contrary to the ECJ. This would thus mean that the UK local and central divisions could remain in London, and that UK practitioners and judges could take part in the UPC.

Regarding the legal factors involved in considering whether the UK could leave the EU but still be a contracting member state under the UPCA, article 84 of the UPCA appears to be an obstacle. In fact it provides that only EU member states may ratify the UPCA. According to Professor Tilmann, this condition implies, that countries which ratify the UPCA remain EU member states. Therefore if the UK leaves the EU pursuant to article 62, 65, and 67 of the Vienna Convention on the Law of Treaties, both the UK and the other signatories of the UPCA, would have the right to cancel the contractual relationship between the UK and themselves.  Article 84 would thus need to be amended to allow the UK to be a signatory to the UPCA even after leaving the EU. Such a change is possible for Contracting Member States on the basis of article 149a(1)(a) of the European Patent Convention and would not require them to re-ratify an amended UPCA. The amendments to the UPCA could in fact be included in the Brexit agreement which would in turn  have the quality of Union law and “pursuant to article 87(2) UPCA, the Administrative Committee has the power to change the UPCA in order to bring it in line with Union law”.

However it is important to note that, were the UK to leave the EU after ratifying the amended UPCA,  it would be bound by the ECJ’s decisions and by its interpretation of EU law as the UPC has the obligation to refer questions on EU law to the ECJ. The UK would also be jointly and severally liable for damages with other contracting member states as provided by the UPCA. Finally, during the transitional period, national UK courts would also be bound by the UPCA within the same remit as stated above.

The legal consequences of the UK leaving the EU would nonetheless be wider than those faced for the UK’s participation to the UPC. In fact the unitary effect would also need to be extended to the UK by agreement under article 142 (1) EPC. This would result into a Unitary patent deriving its effects from EU law when applying within the territory of the EU, and a Unitary patent deriving its effects from international law when applying to the UK.

Rowan Freeland then explored what would happen were the Contracting Member States to “exclude the UK of the UPCA” before it leaving the EU, in order to pursue the implementation of the UPC and Unitary Patent. According to him, re-negotiations of the UPCA to exclude the UK would be possible, but would require a new ratification of the newly amended UPCA. This would in turn require Denmark to organise a new referendum for the ratification of the new UPCA. Rowan Freeland however highlighted that 50% of all European Patents are validated in the UK, France and Germany. Therefore if the UK were not to take part in the UPC and the Unitary patent, a smaller number of users than expected might potentially be interested in the UPC and the Unitary patent. This reasoning would extend to the unitary patent “top 4” renewal fees which is based on the cost of renewal in the four EU countries that have registered the most patents. Indeed, if the Unitary patent effect is not extended to the UK, and if the latter is not part of the UPC the savings achieved by opting for the Unitary patent would decrease.

Finally, despite the general uncertainty, Alexander Ramsay tried to be reassuring and explained that for the moment the Preparatory Committee was working as normal and that the recruitment process was still ongoing. As the chairman of the Preparatory Committee, he emphasized that member states are encouraged to actively pursue their efforts for ratification in order not to delay the coming live of the court, whenever that may be. Alexander Ramsay explained that no contingency plan had yet been drafted as the political situation is very unclear. The Preparatory Committee will therefore need to have more elements of information on the position of the UK and on how the other contracting member states wish to proceed, before devising new options for the UPC and Unitary patent. Alexander Ramsay however was positive and seemed to believe that the project of the UPC and Unitary patent will survive Brexit and come live anyway.

Although the atmosphere cannot be described as joyful, the participants (including the UPC Blog) expressed their hopes to see the UPC and the Unitary Patent becoming a reality in the near future and for EU countries to seize this opportunity to bring the union closer through IP.

Below the recorded video of the conference available on YouTube:


The documents (presentation slides) of the conference can be found here.

A Code of Conduct for the representatives before the UPC: The recommendations of the Council of Bars and Law Societies of Europe

Last week, the Council of Bars and Law Societies of Europe (CCBE) published its comments  on the Code of Conduct for the representatives before the UPC, drafted by the EPLAW, EPLIT and epi .

The CCBE  thereby responds to the Preparatory Committee’s declaration, after its last meeting on 14th April 2016, that the Code of Conduct would be agreed at the end of May, for it to be ready for the UPC’s entry into force in February 2017.

Rule 290 and 291 of the UPC Draft Rules of Procedure in fact respectively provide that representatives before the UPC must comply with the Code of Conduct and if in breach may be excluded from the proceedings by the Court.

The UPC draft Code of Conduct has not however been made public yet, and the CCBE has not had access to it. The CCBE’s general comments therefore provide a helpful insight into the core principles that should govern the UPC Code of Conduct, and, raise important questions about issues such as independence, impartiality and interpretation.

The CCBE focuses on seven points:

  • “A minimum standard”: The CCBE, fearing that it would be difficult to design “a single Code of Conduct for all representatives covering all matters”,  invites the Preparatory Committee to clearly identify the basic legal principles applying to all representatives irrespective of their nationality or position (lawyer, patent attorney, solicitor, etc) to ensure a minimum standard for all appearing before the Court.
  • “Enforcement of the code”: The CCBE recommends that complaints from the Court about the representatives’ behaviour be “adjudicated  by a relevant body rather than the judges themselves or the Court”.  The CCBE in fact highlight, that the UPC judges may not have been trained to handle complaints, and, that an independent body would be a guarantee for impartiality .
  • “Complaints procedure”: The CCBE warns that “(n)either the Rules of Procedure nor the Code appears to explain how a complaint of a breach of the Code is to be made, whether anyone is free to make such a complaint, to whom they should complain, nor whether there is any time limit”.
  • “Possible conflicting obligations”: The CCBE has identified areas where the UPC Code of Conduct and national codes of conduct may conflict, resulting in impossible ethical dilemmas for representatives who would not be able to comply with both codes. The CCBE therefore calls for a careful review of compatibility of all codes of conduct.
  • “Appeals”: Neither the Rules of Procedure nor the Draft Code of Conduct explain the appeal procedure allowing the representatives to challenge a sanction. The CCBE alerts the Preparatory Committee of this oversight and advises against designating the UPC Court of Appeal as the appropriate appeal mechanism, which might lack the required independence.
  • “Sanctions”: The Rules of Procedure appear to indicate that there is only one sanction available to the UPC judges under Rule 291, namely exclusion from the proceedings. The CCBE however points up that “Regulators and Ethics Committees enforcing Codes of Conduct normally have available to them a wide range of sanctions so that they can deal proportionately with each complaint”. In fact, as explained by the CCBE, the consequences of an exclusion  can be very severe and significantly affect both parties.
  • “Interpretation of the code”: The CCBE advises the Preparatory Committee to clarify whether the  Code is to be interpreted strictly or liberally, i.e. whether the code of Conduct contains general principles or “detailed and unambiguous regulations”.

The CCBE concludes it letter by regretting not to have more time and more opportunities to contribute to the UPC Code of Conduct, a view shared by the UPC Blog. In fact, a consultation of the future UPC representatives on the Code of Conduct that will regulate their behaviour before the Court would certainly have been very fruitful.

The CCBE’s letter of comments can be found below. 

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The recruitment of Judges for the UPC has started

UPC Judges recruitment 2019

The Unified Patent Court announced on its website the start of the recruitment of the legally and technically qualified  judges  for the UPC Court of First of Instance and Court of Appeal.

The vacancy notices have been published in French, English and German and the application deadline is 04 July 2016. The announcement can also be found here.

The appointment procedure will then be finalized after the entry into force of the Protocol on Provisional Application and subsequently the Agreement on the Unified Patent Court.


Are you a Unified Patent Court neophyte? Here are a few videos for a quick catch up:

The European Patent Office (EPO) announced shortly before Christmas that the Unitary Patent (UP) was legally and technically ready while the date for the entry into force of the Unified Patent Court was officially set for early February 2017. 

The Court and Patent fee structures have been finalised, the creation of the IT system administering the electronic filing is soon to be completed, the Rules of Procedure have been through 18 drafts, and the UPCA Agreement has already been ratified by 9 countries, to name but a few steps towards the entry into force of the UPC.

The Unified Patent Court (UPC) and the Unitary Patent are thus nearly ready and time is running low before we all need to be UPC-fluent!

Indeed, some of us are already working on mastering the rules of procedure, case management system, and UPCA, while others are designing their new IP strategy in light of the coming harmonisation of patents in the European Union. In this UPC frenzy however it is difficult for UPC neophytes to know where to start…The UPC Blog would therefore like to dedicate them this page.

Here UPC novices will find short videos introducing the UP and UPC. Our posts can then easily be accessed through the main categories at the top of the page or through tags (for specific topics) for in-depth analysis and “fresh” news. You can also use the “reply” section (at the bottom of most posts) for your questions or comments. 

ABC of the UPC:

  • The European Patent Organisation has published a short video in which Benoit Batistelli, its president,  “reflects on the advantages of the Unitary patent” and explains the main characteristics of the Unitary Patent and the changes that will appear with the Unified Patent Court.

This video does not address issues related to the UP and UPC in-depth, but is a good tool for those who want to  understand quickly the impact the Unitary Patent and Unified Patent will have on the present patent environment.

  • Three videos from the 2014 European Patent Forum published on youtube by Managing IP will also give  a better understanding of the stakes behind the UP and UPC to newbies:

In the first one, Luke McDonagh, an academic from City University London analyses the issues he uncovered in his report produced for the UK Intellectual Property Office on attitudes towards the UP.

The second and the third videos, are example of what companies expect from the UP and UPC.

Watch this space: More videos from the UPC Blog will soon complete this sample…


Will the UK ratify the UPCA before its referendum on the EU membership?

Brexit and the German constitutional challenge

In a statement sent to the magazine Managing IP the UK IPO declared that “the UK’s EU referendum will have no effect on UK ratification of the Unified Patent Court Agreement by the middle of 2016. This is in line with the timescale identified for the conclusion of the preparatory work necessary for the UPC to become operational.  Ratification will happen before the Court is expected to open, in early 2017.”

Similarly the UK’s Chartered  Institute of Patent Attorneys confirms that “the Government is proceeding on the basis that the UK will remain in the European Union. The UK Intellectual Property Office is working actively to establish the Unified Patent Court (UPC) and is preparing for ratification of the UPC Agreement.” It also published a table which highlights the major consequences on the intellectual property system the UK will face if choosing to leave the EU.

This issue was also raised in UK Parliament before the Fourth Delegated Legislation Committee on Monday 01/03/16 when Mr Edward Vaizey,  the UK Minister for Culture and the Digital Economy, introduced the Draft Patents (European Patent with Unitary Effect and Unified Patent Court) Order 2016 to the committee, meeting which is reported  in the hansard published by Parliament.

Mr Vaizey therefore explains to the Committee that it would  be “clearly, were we to leave the European Union, we would no longer be members of the unified patent court. It would then be a matter for  the UK Government to ask the European Union whether we could be a member, if we thought that was a good thing. I suspect the European Union would have something to say about that. For people whose lives are dominated by thoughts of having a European patent, it would be a bad thing if we were not a member of the European Union. I hope that that is clear.” The Minister reminded the Committee at this occasion that the aim of the creation of the UPC and Unitary Patent was to “boost competitiveness and drive growth, and for a target to cut the burden on business.

Scale of ceilings for recoverable costs:

The Preparatory Committee agreed last week on the ceilings applicable to recoverable costs together with Court Fees (see our post here on this topic). In this post we look at the specification of the costs deemed recoverable and the determination of the ceilings for the recoverable costs.

So which cost can be recovered?

  • Only reasonable and proportionate legal costs and other expenses incurred by the successful party may be recovered from the unsuccessful party.
  • The ceilings of recoverable costs shall apply to representation costs.


And how much can be recovered? 

These ceilings are a compromise to accommodate the different approaches already existing in the Member States:

  • The ceiling shall be applied to each instance of the Court proceedings regardless of the number of parties, claims or patents concerned
  • In case of partial success the ceiling applicable in the case shall correspond to the proportion of success of the party seeking cost recovery.
  • Unnecessary costs caused to the Court or the other party shall be borne by the party incurring them, which means that even the successful party has to reimburse costs caused that are deemed unnecessary by the Court.

The ceilings are only to be regarded as a safety net, i.e. an absolute cap on recoverable representation costs applicable in every case. The Court has therefore a large margin of appreciation when applying the safeguarding principles before making a cost decision, and the table of ceilings is designed to cater to most situations:

  • In limited situations, such as the particular complexity of the case or multiple languages used in the proceeding, the Court may upon request by one party, having regard to the financial capability of all the parties in the light of the principle of fair access to justice, raise the ceiling by up to 50%. The increase will be limited to up to 25% where the value is more that EUR 1 million and up to and including EUR 50 million. The top ceiling however retains an absolute maximum of EUR 5 million.
  • There is no limit to the level the ceilings may be reduced.
  •  Upon request of one of the parties, the Court may lower the ceiling with regard to that party if, in the event that the requesting party is unsuccessful, the applicable level of recoverable costs of representation to be awarded to the successful party would threaten the economic existence of the requesting party, especially if the latter is a micro-enterprise, SME, non-profit organisation, university, public research organisation or natural person. All types of organisation may make this request, but those from micro-enterprises, SMEs, non-profit organisations, universities, public research organisations or natural persons are given particular emphasis in the wording.


The Table of ceilings for recoverable costs:

Value of the proceedingCeiling for recoverable costs
Up to and including 250.000 €Up to 38.000 €
Up to and including 500.000 €Up to 56.000 €
Up to and including 1.000.000 €Up to 112.000 €
Up to and including 2.000.000 €Up to 200.000 €
Up to and including 4.000.000 €Up to 400.000 €
Up to and including 8.000.000 €Up to 600.000 €
Up to and including 16.000.000 €Up to 800.000 €
Up to and including 30.000.000 € €Up to 1.200.000 €
Up to and including 50.000.000 €Up to 1.500.000 €
More than 50.000.000 €Up to 2.000.000 €

The UPC Mediation Rules have been published by the Preparatory Committee:


The UPC Preparatory Committee published the Mediation Rules of the UPC on 15th February, after it agreed on this first draft at its last meeting in December 2015. The Preparatory Committee however warns that these rules will need “legal scrubbing and further work (…) to align them with other rules”.

The Mediation Rules will be applied at the Patent Mediation and Arbitration Centre, which will provide facilities and support for the settlement of disputes relating to Unitary patents and European patents for which the Unified Patent Court is exclusively competent.

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Rights and Obligations of representatives before the UPC:

The rights and obligations of representatives before the UPC are defined at article 48 of the UPCA and listed in Chapter 3 of the Rules of Procedure.

Article 48(5) UPCA states that:

(1) Parties shall be represented by lawyers authorised to practise before a court of a Contracting Member State.

(2) Parties may alternatively be represented by European Patent Attorneys who are entitled to act

as professional representatives before the European Patent Office pursuant to Article 134 of the

EPC and who have appropriate qualifications such as a European Patent Litigation Certificate

the Administrative Committee. A list of European Patent Attorneys entitled to represent parties

before the Court shall be kept by the Registrar.

(4) Representatives of the parties may be assisted by patent attorneys, who shall be allowed to

speak at hearings of the Court in accordance with the Rules of Procedure.

(5) Representatives of the parties shall enjoy the rights and immunities necessary for

the independent exercise of their duties, including the privilege from disclosure in proceedings

before the Court in respect of communications between a representative and the party or any other

person, under the conditions laid down in the Rules of Procedure, unless such privilege is expressly

waived by the party concerned.

(6) Representatives of the parties shall be obliged not to misrepresent cases or facts before

the Court either knowingly or with good reasons to know.

(7) Representation in accordance with paragraphs 1 and 2 of this Article shall not be required in

proceedings under Article 32(1)(i).”

Following Rule 285 of Procedure, the rights and obligations can be broadly divided into three categories:

  • Privileges (Attorney-client privilege; Litigation privilege; Privileges Immunities and Facilities)
  • Powers (Powers of Attorney; Powers of the Court as regards representatives; Exclusion from the proceedings)
  • Duties (Duty of representatives not to misrepresent facts or cases; Certificate that a representative is authorised to practice before the Court; Change of Representative)

I. Privileges:

Rule 287. Attorney-client privilege:

The confidentiality between the representative and their client is subject to Rule 287 (1) (2) (3), which states that before the UPC and before the Arbitration Centre, the followings are privileged from disclosure:

  • Advice sought by a client for a procedure before the Court or for any other reason;
  • Confidential communication (written or oral) in relation to the seeking or provision of that advice;
  • Communication which would not be related to proceedings before the UPC;
  • Any work produced by the representative;
  • Communication between representatives employed in the same firm or entity or employed by the same client.

This privilege prevents the representatives and his client from being questioned or examined about the content or nature of their communications; it may however be waived by the client (R 287.5).

Rule 288. Litigation privilege: 

The followings communications shall be privileged from disclosure:

  • Any communication between the representative and third parties for the purpose of, or, for use in any proceedings, including proceedings before the EPO

These communications shall be protected from disclosure in the same way and to the same extent as provided for in Rule 287.

Rule 289. Privileges, Immunities and Facilities:

Representatives appearing before the Court shall enjoy immunity in the interests of the proper conduct of proceedings, in respect of:

  • Words spoken or written by them concerning the action or the parties
  • Papers and documents relating to the proceedings which shall be exempt from search and seizure
  • Alleged infringing product or device relating to the proceedings, which shall be exempt from search and seizure

Representatives shall also be entitled to travel in the course of their duty without hindrance.

Finally, the UPC may waive the representative’s immunity where it considers that representatives are guilty of conduct which is contrary to the proper conduct of proceedings. It is however important to note that the Rules of procedure do not define what is contrary to the proper conduct of proceedings, nor state what the consequences will be for the client.


II. Powers:

Rule 285. Powers of Attorney:

A representative will be accepted as representing a party without them having to justify of their capacity to do so, unless their representative powers are challenged and the UPC orders them to produce a written authority.

Rule 290 & 291. Powers of the Court as regards representatives and Exclusion from the proceedings: 

Representatives shall comply with any code of conduct adopted by the Administrative Committee.

The UPC shall have the powers normally accorded to a court of law, and will be able to take sanctions against:

  • Behaviours incompatible with the dignity of the Court;
  • Behaviours incompatible with the proper administration of justice;
  • Any representative who uses their rights for purposes other than those for which they were granted;
  • Any representative who is in breach of the code of conduct.

The court may therefore at any time after giving the representative concerned an opportunity to be heard, exclude that person from the proceedings by way of order with immediate effect.

After the exclusion of the representative, the proceedings shall be stayed for a period fixed by the presiding judge in order to enable the party concerned to appoint a new representative.

III. Duties:

Rule 284. Duty of representatives not to misrepresent facts or cases:

Representatives have the duty not to misrepresent facts or cases as mentioned in article 48(6)  of the UPCA and in Rule 284 of Procedure, which states that “a representative of a party shall not misrepresent cases or facts before the Court either knowingly or with good reasons to know”.

Rule 286 & 292. Certificate that a representative is authorised to practice before the Court:

Article 48(1) & (2) of the UPCA respectively state that parties shall be represented by lawyers authorised to practice before a Court of a Member State or alternatively by European Patent Attorneys who have appropriate qualifications. (See our post here for more details on the representation before the UPC).

Rule 286 of Procedure, read in conjunction with EU Directive 98/5, gives more details as to who can qualify as a representative before the UPC, and specifies that representatives shall lodge at the Registry:

  • a certificate confirming that there are lawyers authorised before a court of a Member State of the European Union; or
  • the European Patent litigation Certificate; or
  • justify otherwise that they have the appropriate qualifications to represent a party before the Court.

Rule 292 also makes clear that patent attorneys assisting  a representative as defined by article 48(1) and 48(2) shall be allowed to speak at hearings of the Court at the discretion of the UPC.

The UPC Case Management System has been updated and it is possible from today to discover and test the application for registering as a UPC representative. This form requires two sorts of information, first the representation entitlement, and then the applicant’s contact details. In conformity with article 48 of the UPCA,  five entitlements are listed: “Lawyers authorised to practise in Contracting member States, Patent Attorneys with EPLC, Patent Attorney with Law Diploma, Patent Attorney with other qualifications, Patent Attorney having represented a party on his own.”

Rule 293 – Change of Representative:

Rule 293 declares that parties are allowed to change representative by notifying the Registry that a new representative shall in future be representing the party concerned. The former representative however remains responsible for the conduct of the proceedings and the communication between the Court and the party concerned until the receipt by the Registry of the aforementioned notification.

The training of the UPC Technical Judges has started in Strasbourg.

UPC Judges recruitment 2019

The training of the UPC technical judges started last week (on 24th September 2015) at the CEIPI in Strasbourg. The programme will be taught over a period of three weeks between September and November 2015, and  from Thursday to Saturday, in order to facilitate the attendance of the participants.

Designed specifically for the UPC technical judges, the training “addresses the specific legal skills that judges must have, and includes as well the training on the fundamentals of fair trial and due process in the context of patent law. The program encompasses a range of intensive thematic and specialized modules, particularly crafted to respond to the needs of technically qualified judges.” It thus aims at ensuring that the participants have a sufficient knowledge of the law while offering specialised trainings on a range of key technical issues of tailored to the Unified Patent Court context.

It is divided between three modules and eight topics. Module 1 looks at “Judicial Ethics“, “The UPC fundamental principles and fair trial“, “Competition law and the UPC” and “Legal Skills“. Module 2 focuses on “Applicable substantive law and patent holder rights” and “The UPC and its rules of procedure“. Finally, Module 3 is concerned with “Enforcement” and “Expertise and Witnesses“.  In order to meet the challenges of training these new technical judges on a theoretical and practical level the training will be structured around lectures “combined with a intense analysis of jurisprudence and practical exercises, including workshops with case studies and two moot court exercises“.