The UK ratifies the UPC Agreement and the Protocol on Privileges and Immunities

UK ratifies the UPC Agreement

The UK government announced on 26th April 2018 that the UK had ratified the UPC Agreement.

This ratification is particularly significant. Indeed, the UK is one of the three member states, with France and Germany, whose ratification is mandatory for the Agreement to come into force.

However, the UK’s ratification comes after the Brexit referendum in June 2016, which jeopardised the UK’s participation to the UPC. Indeed, before the UK leaves the EU, it must secure its participation to the UPC  by way of international agreements and amendments of the UPC Agreement.

The UK’s ratification of the UPC also raises the question of the UK’s respect of EU law. Article 20 of the UPC Agreement in fact states that ” (t)he Court shall apply Union law in its entirety and shall respect its primacy“.

Regarding these issues, the UK government declares laconically  that “(t)he unique nature of the proposed court means that the UK’s future relationship with the Unified Patent Court will be subject to negotiation with European partners as we leave the EU. 

The UK also ratified the Protocol on Privileges and Immunities

On 26th April 2018 the UK also ratified the Protocol on Privileges and Immunities. This protocol will entitle the Unified Patent Court to benefit from privileges and immunities necessary for the Court to exercise its functions. So far 5 countries have ratified it.

What does these ratifications mean for the UPC?

The UK’s ratifications are strong indicators of its long term commitment to the UPC. The UK’s participation to the UPC is good news as it will ensure the atractivity of the Court. This ratification may also speed up the entry into operation of the Court, regularly postponed since the signature of the UPC Agreement.

Therefore, the entry into force of the UPC Agreement now only requires Germany’s ratification. The latter however is on hold.  In fact, the German constitutional court must decide whether the German law passed to allow ratification is constitutional.


See here for more posts on Bexit and the UPC.

See here for more posts on Germany’s ratification.





What does “good ratification progress” mean?

Brexit and the German constitutional challenge

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:

Ratification progress map

(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:

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 AgreementIn 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. 

Is the EU Considering the Relocation of the London UPC Central Division?

The EU is considering the relocation of the London UPC Central Division.

Could Michel Barnier push for relocation of the UPC Division based in London? 

It is reported that in a meeting about the Brexit negotiations, Michel Barnier, current chief negotiator for the EU, mentioned that Brussels is reviewing whether London can keep its Central Division of the Unified Patent Court after Brexit.

This relocation could be motivated by the fact that the European Medicine Agency (as well as the European Banking Authority), whose mission is to evaluate European medicinal products  will be relocated on the territory of the EU, as indicated by the European Council decision on the “Procedure leading up to a decision on the relocation of the European Medicines Agency and the European Banking Authority“.

As the third UPC central division will be competent for pharmaceuticals, chemistry and metallurgy, this potential relocation seems to indicate that the EU is trying to achieve a coherent EU framework for those industries.

However, if it actually takes place, this relocation will be particularly significant. Indeed, the United Kingdom accounts for 11% of extra-EU exports of medicinal and pharmaceutical products and is thus considered as one of the European leaders in this industry. Furthermore, it should be considered against the fact that the UK is currently taking the final steps towards the ratification of the UPC Agreement and has notified its approval to the Protocol to the Agreement on the Unified Patent Court on provisional application a few days ago. This potential relocation project therefore begs the question of whether it could jeopardise the UK’s participation to the Unitary patent package and its ability to contribute to the UPC case law on issues of particular interests for its economy.

Update on the Opt-out Process and the Case Management System: a Letter from the UPC Chairman

UK ratifies the UPC Agreement

The UPC Chairman answers the questions of the British IP Federation about the opt-out proceedings.

On June 13th, the British IP Federation, which represents the view of UK industry in IP policy and practice, wrote an open letter to the Chairman of the Preparatory Committee of the Unified Patent Court (UPC) Mr Alexander Ramsay asking him to clarify the opt-out process during the sunrise period (3 months before the entry into force of the UPC Agreement).

Six days ago, the IP Federation published on its website the reply from the chairman. In his response, Mr Ramsay addressed the following points:

  1. The Chairman clarified the meaning of rule 12 of the Draft Rules on the European Patent Litigation Certificate. This rule does not prevent a European Patent Attorney (EPA) with an existing alternative qualification to register during the sunrise period as a UPC Representative.
  1. The IP Federation had concerns that the massive influx of registrations as UPC representatives at the start of the sunrise period could create delay. But, the chairman stated that arrangements had been made to manage the expected large number of applications.
  1. All users, including staff members, will have to register on the Case Management System (CMS) if they want to make applications to opt out. There will be a two-stage authentication procedure to register, first as a user, then as a UPC representative on the CMS. The details of this procedure will be published in the near future on the UPC Website.
  1. The formalities staff will be able to prepare the opt-out applications for EPAs or representatives to file. However, the formalities staff will have to use their own user ID if they want to register the opt-out on behalf of the EPA or representative. Any user that lodges the application will be responsible for its content and must provide her user identity. Besides, a mandate will be required for any user that is not a qualifying EPA or a UPC representative.
  1. The proprietor of a patent will not need a mandate to opt it out. If the proprietor is a company, any member of the staff who is not a UPC representative will need to file a mandate. This is why the Preparatory Committee is considering the creation of a general mandate to authorize multiple opt-out applications by a particular user over a period.
  1. Application Programming Interfaces (APIs) are provided by the UPC IT team in the developer section of the UPC website to enable companies to integrate the CMS to their IT systems. Also, a user-friendly guidance through the APIs and a list of third-party companies specialized in services for integration with the CMS will be published on the UPC website as soon as possible.

The Chairman did not specify any date for the start of the sunrise period.

Changes coming to the Case Management System.

On a side note, on July 5th the UPC IT team released an update to the CMS. The goal is to fine-tune different processes on the site like the opt-out application process or the procedure of patent selection. A new API was also made public on the UPC website.

A few days later, the UPC IT Working Group Coordinator Dario Pizzolante announced in a statement that a new version of the CMS specifically designed for the opt-out procedure during the sunrise period will be released in August. He also added that in the future the changes made to the CMS will not be released continuously but instead in larger updates. The IT team is currently working on the adaptation of the CMS to the rules of procedure and on the authentication mechanism. Besides, the team has been receiving feedbacks from multiple workshops since the creation of the temporary website.

Update on the UPC timetable: a message from UPC Preparatory Committee Chairman

Brexit and the German constitutional challenge

On 7th June 2017 the Preparatory Committee announced through a statement a delay in the start of the Period of provisional application and in the entry into force of the UPC Agreement. No new timetable was announced, but the committee expressed its will to publish one in the foreseeable future.

Yesterday the chairman of the Preparatory Committee Alexander Ramsay released a message on the UPC website.

The Preparatory Committee is still waiting on two different national procedures:

  • The ratification of the UPC Agreement, which requires the deposit of 13 instruments of ratification, including Germany, France and the United Kingdom.
  • The approval of the Protocol on Provisional Application (PPA) by 13 Member States that have already signed the UPC Agreement and whose Governments have received Parliamentary approval to ratify the UPC Agreement.

On one hand, the chairman noted that the ratification process has progressed in both Estonia and the United Kingdom. Estonia indeed passed the necessary legislation to ratify the UPC Agreement and the UPC Order on Privileges and Immunities was placed before the British Parliament on 26th June.

But on the other hand, three  Member States, including Germany and the UK, still need to approve the PPA to start the provisional application period.

The chairman insisted on the recent delay of the German ratification bill by the Federal Constitutional Court due to a recently complaint. In fact, the German Constitutional Court received a complaint in April 2017 challenging the constitutionality of the legislation enabling the ratification of the UPC Agreement. The grounds and the source of the complaint remain unknown to the public. However, the Court considered this complaint justified enough to request the Federal President not to sign the bill and examine the complaint before ratification.

Considering the above, the chairman concluded it is currently difficult to maintain a definitive starting date for the period of provisional application. According to him, the provisional application period should start during the autumn 2017 followed by the sunrise period for the opt-out procedure in early 2018. Around three months later, the UPC Agreement should enter into force and the UPC should become operational.

This announcement is consistent with the timetable that was expected by most experts. The UPCBlog team will follow any update on a more detailed timetable.


No ratification of the UPC Agreement by the UK before the general elections

The EU is considering the relocation of the London UPC Central Division.

There will be no ratification of the UPC Agreement by the UK before the general elections:

The UK’s ratification of the UPC Agreement will have to wait for after the election of the next government. In fact, the UK parliament was dissolved at the end of April, 25 working days before the general elections. It was also dissolved before ratifying the UPC Agreement. This is likely to have a major impact on the starting date of the UPC. Indeed, it was initially announced that all necessary instruments of ratification would need to be deposited by the end of May. This was in order for the UPC to become operational in December 2017.

The Patent (European Patent with Unitary Effect and unified Patent Court) Order 2016 N°.388:

The UK has already amended the Patent Act 1977 through secondary legislation. The Patents (European Patent with Unitary Effect and Unified Patent Court) Order 2016 N°388, passed in March 2016, implements the UPC Agreement. It also defines its jurisdiction, the transitional provisions, necessary modifications, and conditions of enforcement of the Agreement.

Therefore the UK only needs to pass an order to implement the Privileges and Immunities Protocol, which it signed in December 2016:

  • The UK and Scottish parliaments must first approve this order.
  • The Privy Council will then give its the final assent.
  • Once this legislation has been passed, the UK will be able to formally ratify the UPC Agreement.

It is however uncertain when the UK parliament will examine the ratification bill. Indeed, depending on the Government’s priorities, it will present the bill to the Parliament either before or after the summer recess. This means that the UK’s ratification of the UPC Agreement could either take place between June and July or after September.

What consequences will a late ratification by the UK have on when the UPC will become operational? 

This new postponement of the UK’s ratification also raises questions as to Germany’s ratification. German parliament has in fact recently approved the ratification and amendment bills. Germany was thus expected to trigger the start of the UPC by depositing its instrument of ratification in August, after the UK had done so. However if the UK does not ratify the UPC Agreement by this date, Germany may postpone the submission of its instrument of ratification. This could potentially slow down again the start of operation of the UPC; not to mention the German general elections on 24 September 2017 which might also delay it further.

Therefore, this would mean that if -at best- the UK and Germany deposit their instruments of ratification respectively in July and August 2017, the UPC would become operational in February 2018, after the  6 months necessary to the provisional application.

The UK Supreme court, IP Federation and Protocol on Privileges and Immunities

The UK Supreme Court announced last week that the UK Government could not trigger article 50 without Parliamentary approval. The ruling was followed by the publication by the UK government of the Brexit bill , for a vote in Parliament next week, while the actual trigger of article 50 is planned for the end of March. However, Theresa May’s speech which preceded the Supreme Court’s ruling has left many wondering about the actual possibility for the UK to remain a member of the UPC once it has left the EU.

In fact, although the UK government expressed its support for the ratification of the UPCA  many questions remain. Indeed, neither Baroness Neville Rolfe’s announcement  nor the intervention of the new Minister of State for Universities, Science, Research and Innovation (Jo Johnson),  clarify whether it is possible for a state which is a Member of the European Union when the UPCA comes into force, to remain a contracting state after it leaves the European Union, whether the UPCA could be amended to allow  for any non-EU members to become UPC members, or what will happen to the London central division if the UK cannot remain a member of the UPC. Mr Johnson only stated that the UK’s decision to proceed with ratification  “should not be seen as pre-empting the UK’s objectives or position in the forthcoming negotiations with the EU”.  Overall he highlighted that the aforementioned questions will only be answered by the Brexit negotiations.

However, with the UPC planned to become operational in December 2017,  the question of the continuity of UK’s participation to the UPC once it has left the EU is central for all users of the court and future unitary patent applicants.

In this regard, the UK IP Federation issued two statements . In its first statement dated December 2016, it urges contracting states to “work together to enable the UK to stay in the system after Brexit and to prepare transitional provisions in case this is not possible“. It further calls for  “legal instruments to be developed that enable the UK to remain part of the system or for appropriate reassurances to be provided if this is not thought necessary” and “upon the UK and the other contracting states to work together urgently to provide a legally secure route by which the UK can remain in the UPC after Brexit.”  In case the UK cannot remain part of the UPC after Brexit the IP Federation asks the UK government to “provide assurances that any Unitary Patents will be recognised as UK national patents. The UK and other contracting states will also need to produce transitional arrangements to govern what will happen to ongoing litigation at the UPC and to ensure the continued functioning of the court.”

In its second statement dated January 2017, the signatories which describe themselves as “IP intensive companies in the United Kingdom”  list 7 specific demands and notably that “all accrued and pending intellectual property rights (…) be preserved in the UK post-Brexit;” that “(t)he UK (…) provide(s) for the ability to obtain equivalent UK rights in the UK post-Brexit”, and that once the UPC is established “the involvement of non-EU, European Patent Convention Contracting States (e.g. Switzerland, Norway) in the UPC (…) (is) explored”. 

To the best of our knowledge, these statements have not been publicly answered by the UK government. This is not to say however that the UK is not making progress on the ratification of the UPCA, as showed by the fact that the Protocol on Priviledges and Immunities was laid in Parliament on 20th January 2017 in the form of a Command Paper (government publications presented to parliament) and an explanatory memorandum. This protocol will ensure that the UPC judges benefit from the privileges and immunities necessary to their function and to the operation of the UPC.



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.