What does the Brexit deal, which was reached by UK Prime Minister Theresa May with the EU earlier today, mean for (the British membership of) the Unitary Patent system? How important for instance is paragraph 38 of the Joint Paper, which establishes the continued involvement of the CJEU in the UK? Kluwer IP Law contacted Bristows partner Alan Johnson, who wrote this guest post. He thinks paragraph 91 on cooperation in civil and commercial matters is at least as important.

By Alan Johnson

When the UK committed to ratification in November 2016, it did so knowing very well that the CJEU had a limited role in the UPC.  It rationalised correctly, however, that the UPC was an international court and that accordingly the CJEU would not have a role to play in a domestic UK court.  This acceptance has meant that unless a very hard line was taken later on regarding the role of the CJEU more generally, the UK would probably be able to continue to accept the small role of union law and the CJEU in the UPC.

Since November 2016, the UK has proceeded toward ratification as it promised.  Whilst some have been critical of the slow progress, there has been a consistent series of steps forward, and nothing has indicated any change of UK policy. Also, it should not be forgotten that the UK parliament approved ratification of the UPC long before the 23 June 2016 referendum, but the UK constitution requires the UK to have passed all necessary legislation before it actually ratifies, so the hold up has been in the passage of that legislation.  This is in contrast to countries such as France where the constitution is different and allows ratification before sorting out the required legislation.  France ratified early on, but has still not put in place legislation concerning the P&I Protocol.  Likewise, in July 2017 the UK approved the Provisional Application Protocol (PAP), which is more than can be said for some states who have ratified, such as Austria and Malta.  The fact that the UK has to do things in a different order than other countries has given a false and unfair perception of delay.

The UK’s commitment toward ratification has continued even in the last two weeks (before the Joint Report published today) with significant steps being taken in signing off on the last piece of legislation, the UK Statutory Instrument enacting the Privileges & Immunities Protocol.  The House of Commons signed off a few days ago and the last parliamentary part of the process will be completed on Tuesday in the House of Lords with a Motion to approve the SI.  The legislation then has to be formally be approved by the Privy Council.  Exactly when this will happen is unclear, but only because it meets only once a month, but probably this will happen at its first meeting of 2018 in January.  So the UK looks like being ready to ratify in about mid-January and could well have deposited its instrument of ratification by the end of February – before the German BVerfG is likely to give its opinion on the Stjerna challenge.

So whilst it maybe does not really affect all of this, the way I would put it is that the agreement today to accept the CJEU jurisdiction for a post-Brexit period gives increased comfort that the UK will continue its acceptance of the CJEU’s limited role in the UPC and be very happy to be a part of the UPC post-Brexit.

Another thing which may not grab immediate attention, but is really significant, is the statement in paragraph 91 of the Joint Report on cooperation in civil and commercial matters. The report says: ‘There was also agreement to provide legal certainty as to the circumstances under which Union law on jurisdiction, recognition and enforcement of judgements will continue to apply, and that judicial cooperation procedures should be finalised.’

This was one of the things the UK wanted:  there was a statement to that effect in the Brexit White Paper (paragraph 8.19 said: ‘We recognise that an effective system of civil judicial cooperation will provide certainty and protection for citizens and businesses of a stronger global UK.’). But cooperation requires agreement, so the fact that the Joint Report says what it does is important.  Whilst this is not stated explicitly, it sounds as if the UK and EU agreed that the UK should continue to be bound by the Brussels Regulation, probably by something akin to the Danish model.  This is critical for UPC participation since the Brussels regime is an integral part of the UPC system.

So all of this bodes well for the continued participation of the UK in the UPC.  If so, London can continue as planned to host its local division and its part of the central division. These branches of the international court will be able to make references to the CJEU if necessary, just like any other part of the UPC without any difficulties. Personally I think it will be rather a rarity as I don’t think the need for references will arise very often at all, but if necessary they can be made.

So the main remaining problem is one of timing. This brings us to the BVerfG. It would be really helpful if it could make its decision in early 2018 and the system could start before Brexit – at least to the extent of the PAP starting. If so, the agreement could be brought into line with the UK’s new status as a non-EU country.  But even if these timings do not quite work out, the main question will be one of political will.  It seems that there is a will to make the UPC work with the UK inside it, not outside.  So I am not too worried if there is a further delay in Germany: it would simply be frustrating that there is delay – but then we are all too used to delay in this dossier.

Finally there is the question of the Unitary Patent.  This is a slightly different matter than the UPC because the UP is an EU instrument.  It is not so much the extra (but still limited) role of the CJEU in the UP system which concerns me as the legal mechanism which has to be found to enable the UK to be a part of that system.  This is complicated and little work seems to have been done on it.  Could the UK be a part of it post-Brexit? I do not know. But even if it cannot be a part of it, that should have no effect on the UPC system.  The only issue would be that the UP would provide less value for money as patentees would have to apply separately for an EP(UK) as well as a Unitary Patent and pay separate renewal fees.  But the patents would still be litigated together in the UPC.

So whilst some may regard Brexit as a problem for the UPC, ever since November last year I have seen it as just a complication, and we now have greater certainty than before that the UK will be in the system at the outset and post-Brexit too.

For regular updates on the Unitary Patent and the Unified Patent Court, subscribe to this blog and the free Kluwer IP Law Newsletter.

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5 comments

  1. Dear blogger,

    I do not know in which land you are living, but it seems that your land is not called reality.

    How can you say on the one hand, that post-Brexit participation is not a problem, but continuation in the UP could be one. I have never read anything making so little sense!

    The UPC is there to decide upon UP and on EP. The UPC without UP is as good as a bicycle without wheels. One of the wheels being a UP, the other one being a EP. The latter can be opted out at least for while, hence there is no wheel left.

    Furthermore the UPCA is full of references to unitary law, and is clearly set up for EU member States. This is the hard reality.

    That the UPC is an international court is one of the problems, as this court is not a court embedded in the legal system of a member state or of the EU. It has not been tested whether the CJEU is even willing to take a role in an agreement of this kind. Certainly not if non EU states participate in it.

    Even if post Brexit the competence of the CJEU is retained for EU citizen residing in U.K., this is for a maximum of 8 years.

    To say it sounds that the UK should continue to be bound by the Brussels regulation is far from being a fact. At best it is a wish, but no more. There are too many provisos in this statement.

    Contrary to what you may think, it does by no means bode well for the continued participation of the UK in the UPC. I would go as far as to say, that it is a new form of auto suggestion for proponents of the post-Brexit participation in the UPC.

    Suggesting that the German Constitutional Court should decide in early 2018, is another form of denial of reality. Even if the GCC would dismiss the complaint, one can but bank on a quick decision. The time limit to file amicus curie briefs is at the end of this month.

    Do you really think that the GCC will look at them immediatelly so that in March or April adecision on admissibility will be issued? The GCC has not only this case in front of it. If the GCC decides to admit the complaint we are in for another year or two. As the GCC asked the president of Germany not to sign the ratification decision, it must at least have considered that prima facile there is some merit in the case. The political consequences are too obvious than to allow a summary decision in this matter.

    And there other complaints against EPO waiting to be decided by the GCC. All those complaints are different to the last one, but every sound reader would somehow think that there are linked, as a UP is a patent granted by the EPO.

    I understand your frustration, but I think that this frustration has more to do with the potential loss of earnings yourself and the UK legal profession would have to endure should indeed the U.K. not be in a position to participate in the UPC after Brexit. This is however a possibility you have to face! The sooner you accept it, the better it will be.

    Stop bothering the readers of this blog with, to be kind, such not very thought trough considerations.

    Techrights finger off! Directly or indirectly.

  2. When the UPCA was drafted and signed, the UK’s involvement and the establishment of part of the central division in London were key feature. That the agreement could be open to non-EU members had never been envisaged.
    Brexit radically undermines these fundamental elements and, at best, the terms of the agreement need to be changed in a yet undefined way.
    So how can it be that the ratification of an agreement that has become obsolete and no longer reflects the will of its authors is still a topic in those countries that have fortunately not yet done so?
    And why on earth should the GCC submit such an outdated agreement to the CJEU in the circumstances?

  3. Dear proponents of the UPC and the post Brexit membership of UK,

    When I see the problems which have led to an enquiry of of the Justice Sub-Committee of the House of Lords’ EU Committee, see

    http://ipkitten.blogspot.fr/2017/12/role-of-cjeu-post-brexit-to-be.html

    with respect of UK courts, I would like to hear why there are no problems with the UPC, which first, does not exist yet, and, secondly does not seem concerned by the enquiry, as it is not a UK court.

    Please abstain from the standard reply: because it is an international court. If difficulties are foreseen in respect of enforcement for UK courts, it is hard to understand why an international would not be exposed to the same difficulties post Brexit.

    The Lords seem to be concerned by legal certainty. Where is the legal certainty for the UPC?

    It does not seem that the UPC was mentioned in Phase 1 negotiations, so it is unlikely to be mentioned in Phase 2 negotiations, which should start soon. Quo vadis UPC?

  4. Alan,

    I am interested in your comment that “It rationalised correctly, however, that the UPC was an international court”. Am I correct to interpret this as meaning that you agree with Gordon & Pascoe’s characterisation of the nature of the UPC (as an “international court”, as opposed to a Benelux-style “court common to the (EU) Member States”)?

    If so, could you please explain to me how the UPC can possibly refer preliminary questions to the CJEU? As I understand it, a court is only able to access the procedure under Article 267 TFEU if it is “a court or tribunal of a Member State”. If the UPC is an international court, then this would appear to take it out of the ambit of Art. 267… which would then appear make the UPC non-compliant with EU law.

    I may be missing something here, and so any clarity that you can help to bring to this situation would be much appreciated.

  5. only a side remark:
    even if the UK parliment ratifies the UPCA in the very near future,
    is it possible that some lawyer would/could also file a complaint against such ratification before the UK’s hightest court (i.e., a judicial review)?

Comments are closed.