Different countries have different constitutional requirements before they can ratify an international agreement like the UPCA. Some, like France, can ratify first, and sort out the legislation required to comply with the Treaty later, whilst other countries like the UK and Germany, do it the other way around, passing relevant legislation first, with formal ratification following as the very last step.

Many commentators have forgotten that as long ago as May 2014 the UK Parliament passed a new Intellectual Property Act, which authorised ratification and implementation of the UPCA.  Of course the Brexit referendum raised huge doubts about UK commitment to the project, but these were swept aside on 29 November 2016 with the announcement that Brexit notwithstanding, the UK would still be ratifying the UPC Agreement. At that time it was expected that this ratification would be completed within about six months.

The calling of a General Election (announced April 2017) stalled that, and by the time the election had been held, the German constitutional complaint had become public. Inevitably this meant that the urgency went out of the process. To many, progress since then has seemed painfully slow.  Brexit does mean, however, that the UK Government has been more than a little busy, and it is not surprising that with complete deadlock caused by the German problem, the UK did not prioritise rapid completion of the process.

It did nonetheless very soon after the new Government was formed take the important step, in July 2017 (i.e. before the summer Parliamentary recess), of signing off on the Protocol on Provisional Application, and after the recess resumed the legislative  process. This process was not quite finished before Christmas 2017 simply because of the final formality required, namely approval for an item of secondary legislation (referred to as The Unified Patent Court (Immunities and Privileges) Order) by the Privy Council – or to give it its full name, Her Majesty’s Most Honourable Privy Council.  This body (as its full name suggests) actually involves the Queen, and therefore meets only intermittently.

The first meeting after Christmas took place on 8 February at Buckingham Palace, and, unsurprisingly, Her Majesty and her Privy Councillors signed off on the Order (together, perhaps less significantly, but more entertainingly, with such matters as a proclamation concerning the introduction of a new 50p coin featuring the literary character, Paddington Bear) – see these minutes.  Hence, the final piece of legislation has been formally passed, and is available here together with this explanatory memorandum.

Hence, the UK is at last, in a position to ratify the UPCA. Why then, some may ask, did that not follow on 9 February? The short answer is again a procedural one. Constitutional requirements mean that the UK IPO needs to collect together the relevant evidence that all legislative steps have been taken to enable ratification, and provide this to the Foreign and Commonwealth Office, which is the Government ministry responsible for this sort of thing. That ministry then has to check the evidence, prepare the formal instrument, have it signed by the Minister (Boris Johnson MP) and finally lodge it in Brussels.

If given priority, this process would normally take a very few weeks. With the continuing silence from the BVerfG in Germany, there remains no urgency. Hopefully, however, the wheels are beginning to turn on this and we may see formal ratification around Easter. At the same time, the UK will also formally ratify the Privileges and Immunities Protocol, and will actually likely be the first of the four countries required to take this step essential to the start-up of the UPC.

The others are Germany, France and Luxembourg. These last two are, it is believed, ready to do so, but have not yet taken the step, whilst Germany, of course, cannot do so unless and until the constitutional challenge is resolved in favour of the German Government.

Hence, we may very well end up in a position that the UK is the first mandatory ratifying country to complete all its processes, and be waiting for everyone else to do the same. Perhaps then the doubters will finally accept that the UK is committed to the new regime – as it has been all along – and we can get on with the important task of making sure the UK can continue in the system post-Brexit.  After all, this is what the vast majority of users throughout Europe want to see.

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11 comments

  1. Alan,

    It is of course possible that Boris Johnson will hesitate to ratify an agreement that includes the following Recital:
    “RECALLING the obligations of the Contracting Member States under the Treaty on European Union (TEU) and the Treaty on the Functioning of the European Union (TFEU), including the obligation of sincere cooperation as set out in Article 4(3) TEU and the obligation to ensure through the Unified Patent Court the full application of, and respect for, Union law in their respective territories and the judicial protection of an individual’s rights under that law”.

    There is also the matter of whether Boris will be happy to bring into effect a court that will have jurisdiction over disputes involving UK (patent and SPC) rights but that, under Article 20 UPCA, is obliged to “apply Union law in its entirety” and “respect its primacy”.

    To my knowledge, no one has yet demonstrated a plausible (and workable) way in which the UK can leave the single market, the customs union and the jurisdiction of the CJEU but yet: (1) agree to be bound by the CJEU’s rulings on patent and SPC matters; and (2) adopt, in a manner sufficiently binding to satisfy the CJEU, the numerous current (and potential future) EU laws that could have any bearing on cases before the UPC.

    Therefore, before ratifying the UPCA, do you think that Boris is likely to want to satisfy himself that doing so will not give rise to obligations that are incompatible with the government’s current plans for Brexit?

  2. What an enthusiastic prose when one considers that the UPC has not yet been ratified! It is interesting to see that the PPI has been approved, but we are not yet at the end of the way. Ratification is not yet achieved, and entry into force of the UPC before the Brexit is anything but certain.

    Even if UK ratifies the UPC before the actual Brexit, and even if the German Federal Constitutional Court (GFCC) gives it go-ahead for the ratification and Germany ratifies before then, the stay of UK in the UPC after the Brexit is still not guaranteed. There are a lot of ifs, but barely a word about them in the long blog.

    Even if “the vast majority of users throughout Europe want to see” continued participation of UK in the UPC, this hurdle is by no way taken. At the moment post- Brexit UK participation in the UPC is anything but certain.

    It seems clear that the UPC is not a court within the judiciary system of the EU member states. How a court, even residing in a member state of the UPC, but not in a member state of the EU will be allowed to bring prejudicial questions to the CJEU.

    How is post-Brexit participation of the UK in the UPC possible?
    What about post-Brexit liability for damage caused by infringements of Union law by the UK?
    What about post-Brexit enforcement in UK of decisions of the UPC taken outside the UK and vice-versa?

    Only once those questions will have been answered in a factual and legally sound as well as convincing manner we will be in a position to agree that post-Brexit participation of the UK in the UPC is more than wishful thinking and auto-suggestion.

    It is nice to be informed of any little straw you might want to hang on, but a bit more seriousness in the presentation of facts would not hurt.

    Techrigts: FINGERS OFF! You are intelligent enough to know what it means: directly and indirectly, even by a mere link (as recently done).

  3. I do not think that Boris or Jo Johnson have a mandate to examine whether the UPCA legislation is compatible with their personal views after the proposed legislation went through the legislative process.

    1. @Peter Parker,

      To be clear, the issue is NOT whether BoJo “has a mandate” to prevent ratification of the UPCA. Instead, it is that there could well be a (high) political price to pay for ratifying an Agreement that is incompatible with the government’s current line on Brexit… and the government may well not be prepared to pay that price, especially if the “hard-line Brexiteers” make it plain that they will not take the issue lying down.

    1. Joff,

      You may be right. But, then again, you may not.

      There is a big, practical difference between: (1) passing legislation that puts you in a position to ratify an international Agreement; and (2) actually ratifying that Agreement. This is because binding, legal effects only apply once the Agreement has been ratified. Just because step 1 has been completed without any political fall-out, it cannot be assumed that the hard-line Brexiteers will be completely sanguine about step 2. Of course, this assumes that nobody has misled the Brexiteers into believing that completing step 2 will not oblige the UK to keep following (in perpetuity) rules made in Brussels … which is something that Boris only yesterday stated would be “intolerable”.

      In this context, there may well be some significance to particular choice of words that the government has (repeatedly) used in connection with the UPCA. That wording is fully consistent with step 1. However, to my knowledge, at no point has the government used wording that represents an explicit indication (or promise) that they will follow through with step 2.

      We shall just have to wait and see.

      1. “This is because binding, legal effects only apply once the Agreement has been ratified”

        Not quite true. Some sections of the UPCA will have legal effect when the the protocol on provisional application enters into force. See https://www.unified-patent-court.org/sites/default/files/Protocol_to_the_Agreement_on_Unified_Patent_Court_on_provisional_application.pdf

        The UK has already completed the required deposi for the Protocol https://www.unified-patent-court.org/news/update-provisional-application-phase and so if Germany kicks of the provisional application phase parts of the UPCA will take effect in the UK even if UK ratification of the UPCA itself has not happened yet. That provisional application would seem to necessarily include the appointment of UK national judges for the UK local division.

  4. The issue is not if the Brexit hardliners have failed to make the UPC a big issue in the UK. The question is simply whether post Brexit UK can stay in the UPC, even ratification and entry into force is before the end of March 2019.

    When will we obtain more convincing arguments on this? It is not by repeating like a Tibetan windmill that there are no problems, and if any, the Administrative committee of the UPC will make sure that they are overcome.

    I expect a bit more serious arguments and not the drivel usually served.

    In any case as Concerned Observer has noticed there will be a political price to pay. Even the well-known Pascoe report insisted on this aspect. The UPC having not been subject to the Phase 1 Brexit negotiations, it will probably not be part of Phase 2. And then?

    I am however inclined to think with Joff Wild, that UPC’s fate will be decided in Germany. I would however bring a nuance in it. UPC’s fate could also be decided by the CJEU once into force, and with the UK still in it.

    We are ahead of interesting times, and all the well learned lawyers trying to pull wool over our eyes might get an unpleasant surprise, like on the day after the referendum.

    Techrigts: FINGERS OFF! You are intelligent enough to know what it means: directly and indirectly, even by a mere link (as recently done).

  5. This discussion about the UK situation is of the utmost interest and many of the French concerned parties hope that a smart solution will be found to keep UK in the agreement even after Brexit. How this will be possible is of importance and should be cleared very quickly. This only could provide the users of the UPC with clarity and security that a jurisdiction should provide not only for a few months but over the time. As reported in this blog on January the 6th I understand that this is part of what IP organisations in the UK have requested their government.
    As far as France is concerned, I can confirm that the ratifications of UPCA and the two related protocols PPCA and PPI are completed.
    The French government is preparing some amendments to the French patent law. As it is well known, this French national law will apply after the entry in force of UPCA to French national patents and to opted-out European patents designating France. It will be clearer and more efficient to have very near rules applying to European patents whether they are opted out or not (some of these rules being applied by the French national courts and the other by UPC). This is the main reason for these amendments to French law. Some other UCPA countries are taking the same steps.
    In France, an in force international agreement prevails to a French law so that these amendments to the French law have no direct link to the UPCA ratification process and its later application.

    As far as France is concerned, all of the required ratifications for the UPC implementation have already been taken.

    1. Great to hear. FR is ready, UK is ready and in DE apparently all poltical parties (including the opposition) support the UPC (I read the protocol of the Federal Assembly/Bundestag of the relevant session). Also, from what we hear, all amici curiae briefs argued that the consititutional complaint is either inadmissible or unfounded.

      (Disclaimer: The AFD was not in the Bundestag when the UPC legislation was decided, so we do not know their opinion. The AFD is in the current Bundestag with 12% or so of the seats).

      1. Great, so we can conclude that the political will MAY still be there.

        How is this in any way relevant to the main hurdle that the UPC is currently facing, namely demonstrating that it complies with EU and (national) constitutional legal requirements?

        Or are you implying that political will can overcome legal roadblocks, no matter how “solid” those roadblocks are?

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