A Unitary Patent is to be a single patent applying uniformly across the territories of up to 26 EU Member States. The Unified Patent Court (UPC) will have exclusive jurisdiction to determine disputes relating to Unitary Patents, and eventually all European Patents (Agreement on a Unified Patent Court (UPCA), Article 1, available here).
An overview of some of the practical and legal difficulties arising from the UK’s planned withdrawal from the European Union are considered below:
Last week the UK Government pressed ahead with the process of ratifying the UPCA by laying the Unified Patent Court (Immunities and Privileges) Order 2017 before Parliament. This secondary legislation will allow the UK to ratify the UPCA and it will confer legal status on the UPC.
However, practical difficulties remain. In particular, the wording of the UPCA presents problems. It applies to “Contracting Member States”, which are defined as Member States of the European Union (UPCA, Article 2). Hence the language of the UPCA would have to be changed to include the UK once it is no longer an EU Member State. This is not necessarily straightforward as it would acquire agreement by the other 24 Contracting Member States.
The legal position
There is an important distinction between the legal bases of the Unitary Patent and the UPC. The former was created by two EU Regulations and is therefore part of EU law. The latter was created through the UPCA, which is an international agreement between states, albeit EU Member States.
Therefore, upon withdrawal from the EU, the Regulations creating the Unitary Patent would cease to apply to the UK. In order for the Unitary Patent to cover the UK after that time, an international agreement with the EU would be required, as is identified by Richard Gordon QC and Tom Pascoe in their Opinion to the IP Federation, the Chartered Institute of Patent Attorneys and the Intellectual Property Lawyers Association (available here), para 43.
In contrast, the UPC would be an international court, although required by Article 20 UPCA to apply EU law and respect its primacy. Opinion 1/2009 of the CJEU (available here) concluded that the agreement proposed at that time for an international patent court was not compliant with EU law. This was on the basis that it did not have the mechanisms capable of ensuring the full effectiveness of the rules of the European Union (paras 83-5). Opinion 1/2009 has been interpreted by the Council Legal Service, to mean that an agreement should be between EU Member States only to help ensure compliance with EU law (see Opinion 2011 here, para 31).
Changes have been made to the UPCA following the CJEU Opinion in an effort to make it compliant. Assuming that the UPCA is otherwise compliant with EU law, it is not clear that the UK’s withdrawal from the EU would alter this position, with one caveat addressed below. As an international court, the UPC would not form part of the national court system. This means that UK national courts could cease to apply EU law without impacting on the functioning of the UPC.
The caveat: the separation of the UPC and national courts will not be strict during the transitional period provided for under Article 83 UPCA, during which time European Patents can be litigated in national courts or the UPC.
In light of both the practical and legal challenges identified, it seems particularly likely that the Unitary Patent and UPC frameworks will be drawn into the wider Brexit negotiations.