An inquiry into the effect of Brexit on the UPC and UP:

The British government has announced at the Tory Party Conference on Sunday 02nd October that article 50 will be triggered by the end of March 2017. The government also gave details of a “Great Repeal Bill“, which would repeal the 1972 European Communities Act – the law that binds EU law to the British statute book – and  transpose EU legislation into British law in its entirety.

Among the legal issues that the British government will have to handle in the coming months, the UK’s participation to the UPC is of course a major concern for UK and EU IP lawyers.

The UPC Blog has already looked at this issue and its versatile political environment in different posts here.

This post however focuses specifically on the unequivocal -though not definite- legal answers on the UK’s participation to the UPC and UP brought by two barristers from Brick Court Chambers, Richard Gordon QC and Tom Pascoe, in their opinion on the legal consequences  of Brexit “on the Unitary Patent Regulation and the Unified Patent Court Agreement”. This opinion was commissioned by the IP Federation, the Chartered Institute of Patent Attorneys and the Intellectual Property Lawyers Association who have all expressed their support for the UK’s participation to the UPC after Brexit.  20 UK law firms  (among who Simmons & Simmons, Linklaters, Herbert Smith Freehills, CMS UK, Gowling WLG, Bird & Bird, Collyer Bristow, Browne Jacobson and European IP firms Carpmaels & Ransford and EIP) have also backed this inquiry into UK’s post-Brexit UPC membership.

 

Télécharger (PDF, 264KB)

 

Richard Gordon and Tom Pascoe’s opinion answers six questions:

1a. Can the UK continue to be part of the UP?

“The UK may only continue to participate in the unitary patent by entering into a new international agreement with the participating EU Member States. The permissibility of such an agreement under EU law would turn upon essentially the same matters as the legality of the UK’s continuing participation in the UPCA.”

1b. Can the UK continue to participate in the UPCA?

“It is legally possible for the UK to continue to participate in the UPCA after ‘Brexit’ (although the CJEU’s reasoning in Opinion 1/09 is opaque and there is therefore a risk that the CJEU would find otherwise).”

1c. Can the UK continue to host the Life Sciences/Chemistry section of the central division?

“Provided that it is legally possible for the UK to continue to participate in the UPCA, there is no reason why it cannot continue to host a section of the central division.”

2. What changes would have to be made to the UPCA?

“A number of amendments would have to be made to the Agreement” by way of amendments to the UPCA and separate international agreements. Pascoe and Gordon consider that five amendments need to be made in the UPCA at article 1, 2(c), 21, 29, 84 and 88. An international agreement would also need to be entered into between the UK and the Union for the CJEU to accept preliminary references. Finally the UK will need to consider its options for replacing the Brussels Regulation, with notably the Lugano Convention.

3. What would the UK have to sign up to?

“The UK’s continued participation in the UPCA would require it to submit to EU law in its entirety as regards proceedings before the UPC. It would also need to sign up to an appropriate jurisdiction and enforcement regime (such as the Lugano Convention).”

4. Does it matter whether the UK joins the EEA?

“Our advice does not depend upon whether the UK joins the EEA.”

5. Is it possible or desirable to obtain an opinion from the CJEU?

“It would only be possible to obtain a pre-emptive opinion from the CJEU on the legality of the UPCA if the Union became a party to the Agreement.”

6.What would be the consequences of Brexit if the UK ratifies the UPCA without amendment?

“If the UK ratified the UPCA, without amendment, and subsequently left the EU, any divisions of the UPC in the UK would have to cease operating. The transitional consequences of this are matters of detail to be negotiated as part of the UK’s exit negotiations.”

 

Gordon and Pascoe conclude that after Brexit: the UK may only continue to participate in the unitary patent by entering into an international agreement with the EU and its Member States, and in the UPC so long as it signs the UPCA. On the other hand if the UK ratified the UPCA without amendment while still a member of the EU, the UK divisions of the UPC would have to cease operating once the UK leaves the EU. The authors also highlight the role of the CJEU who might reach different conclusions. However, according to Gordon and Pascoe, it would only be possible to obtain a pre-emptive opinion from the CJEU on the legality of the UPC if the Union became a party to the Agreement.

 

Finally, it is important to point out that the British government’s decision to trigger article 50 is being challenged by the People Challenge group, a group of “concerned British Citizens” (You can read the story behind this case here). A hearing will take place next week to decide whether the government can rely on the royal prerogative or whether an act of Parliament must be passed to allow the government to trigger article 50.

Last week, the People Challenge group were granted the right to publish the Government’s defense documents. The People Challenge group’s skeleton arguments as well as UK Government’s detailed grounds of resistance can be found below.

It is however impossible to say whether, were the Court to decide that only Parliament can invoke article 50, this would have any impact on Brexit and let alone on the UK’s participation to the UPC.

 

  •  The People Challenge group’s skeleton argument:

Télécharger (PDF, Unknown)

 

  • The UK Government’s detailed grounds of resistance :

Télécharger (PDF, 1015KB)