If a Brexit agreement is reached with the European Union, the UK can stay in the Unitary Patent system during the transitional period and likely be part of the system once this comes into effect. This was argued last week by Kevin Mooney of Simmons & Simmons, who is closely involved in the creation of the Unified Patent Court.

Kevin Mooney and Stephen Jones, president of the Chartered Institute of Patent Attorneys (CIPA), gave evidence to the EU Justice Sub-Committee of the House of Lords into Brexit’s effect on the plans for the Unified Patent Court and Unitary Patent (video).

Mooney: “Under the terms of the withdrawal agreement as it stands, the UK will remain a contracting member state for the whole of the transitional period [probably until the end of 2020, ed]. So our status as a contracting member state of the UPCA hasn’t changed. If the Unified Patent Court comes into effect during the transition period – the likelihood is that it can – then we will participate in the court, our judges will participate, our lawyers will participate.”

The problem will be at the end of the transitional period, Mooney explained. “There has to be mechanism for ensuring that at the end of the transition period we remain as permanent members of the UPC project. And that is what the government has committed to explore. (…)
I understand why they use the word explore because the mechanism for ensuring that, is not entirely clear. But there is the political will to do it.

A hard Brexit would complicate things, according to Mooney. “A different situation arises if there is no withdrawal agreement, because in March we will cease to be a contracting member state. The likelihood is that the UPC will come into force at the end of 2019 after we have left with no withdrawal agreement. So the challenge for the government is a different one, it will be to seek to agree with the Union and other member states a mechanism by which, as a self-contained object, we can remain in the project. I suspect that to be far more difficult.”

CIPA president Stephen Jones added that “deal or no deal, it should be possible – if we want to participate in this international court and other member states and the EU agree – it would be better that we and (…) potentially other countries, such as Switzerland, should participate in the international court. That would be to the greater good of all participants. The legal opinion [Gordon Pascoe] that we obtained, indicates that there is no legal obstacle to that as such. If there’s a political will to do it, it can be done.”

Jones and Mooney acknowledged that there are opposite views as well. Kevin Mooney: “So far as the CJEU is concerned, there are academic views to say that it is impossible for a non EU member state to participate in this project. And I believe that you refer to the opinions from German academics last week [Matthias Lamping and Hanns Ullrich of the Max Planck Institute, paper]. They take the view that it’s not possible. They take 170 pages to express their view. If it were a simple matter that only EU member states can participate, I wouldn’t expect to have to read 170 pages.”

According to both Mooney and Jones, changes to the UP system in order to incorporate a post-Brexit UK, should open the door for participation of other non EU member states as well. Jones: “Now we think that actually it shouldn’t just be the UK. It would be extremely useful and advantageous to everybody, including British businesses, if the UPC also included countries like Switzerland.”

If the UK doesn’t participate, the damage will be very considerable, according to Stephen Jones: “It would lessen the effectiveness of the court and there would be less confidence in the court as a tribunal, because the addition of the UK judges and the expertise they have will actually be beneficial to that institution and the UK gains benefit from that.

Kevin Mooney: “There are people who are really quite angry because there is a severe risk that the UP project will fail if the UK – with its judges and their influence and the economic contribution towards the budget of the court, which is not inconsiderable –  doesn’t participate. My personal view is that there is a real risk it won’t go ahead, and that would be a tragedy.”

Still, Mooney has hope the UK can participate, despite the Brexit and further complications caused by the German Constitutional challenge against the Unitary Patent system. “It has been very disappointing that that has delayed the court coming into effect. The rumours that I heard (…) are that we can…, we hope to expect a decision in December and that it is likely to be favourable. I stress they are rumours, gossip, nothing concrete from the court. But if that were to happen, (…) the timetable for the court coming into effect could begin, and I believe the court could come into existence at the end of next year.”

In this scenario, the UK would be in the Unitary Patent system at its start – at least if there is a Brexit withdrawal agreement. But what will happen next? If no solution is found to keep the UK in the system once it has ceased to become an EU member state?

Mooney: “(…) if we have to come out after the court has come into existence, then we get in a very interesting situation. The court is in existence, we have participated, but we’re no longer a contracting member state. I really don’t know what’s going to happen, the UK could voluntary withdraw, or (…) the Commission could compel the other states to force us out. Neither is a very attractive prospect.”


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6 comments

  1. I find it remarkable that there a rumours circulating regarding not only the timing but the content of the decision of the BVerfG. This is because it can mean only one of two things.

    The first option is that the rumours are well founded. That would be extremely disturbing, as it would mean either that someone from the BVerfG has been leaking information to individuals who are not party to the proceedings or it would mean that the BVerfG has been ordered to reach the “correct” conclusion at a time that is politically suitable (ie immediately after the latest sensible date by which the Withdrawal Agreement with the UK really ought to have been concluded). Both of these explanations would mean that the integrity of the judicial system has been compromised.

    The second option would be that the rumours are all guesswork, based upon nothing of substance whatsoever. But would such groundless rumours really be proffered as an answer to a serious question at a hearing in Parliament? That would be highly unprofessional, would it not?

    Either way, there is an unpleasant smell about all of this.

    On a slightly different note, are there any rumours circulating regarding the constitutional complaints that concern the EPO? One would presume that those complaints would need to be dealt with first.

  2. Mr Mooney’s and Mr Jones‘ performance at the “EU Justice Sub-Committee of the House of Lords into Brexit’s effect on the plans for the Unified Patent Court and Unitary Patent”, looks more like a desperate attempt to lobby the UK authorities to do everything possible to keep the UK in the UPC at any rate and at any costs!

    I hope they made it clear to the subcommittee that they have more than a finger in the pie, and what bothers them is that all the time they invested, through their contribution to the Rules of Procedure, in order to tailor a UPC to their needs, was not in vain. It can be agreed upon that “If the UK doesn’t participate, the damage will be very considerable”, primarily for their hopes of future fees linked with representation before the UPC. Sorry to be blunt, but is necessary in view of the arguments brought forward which cannot be received with all the seriousness required in the circumstances.

    Even if UK would participate the composition of panels of the local London division, a maximum of two UK judges should be participating [Art 8(3) UPCA]. As far as the London section of the central division is concerned the composition would be see maximum of one UK judge [Art 8(6) UPCA], if at all. In the other local divisions, there would as well be a maximum of one UK judge. The benefit brought about UK judges and the expertise they have, would thus more limited than what is claimed by Mr Mooney and Mr Jones.

    With a no deal Brexit, they at least have acknowledged that keeping post Brexit UK is not possible.

    Even if there is a deal, but the chances are getting slimmer and slimmer with time passing by, they concede that it would only be during the transitional period that post Brexit UK could participate.

    If I am not totally mistaken, in a final Brexit deal, only topics which have been discussed in a first basket will be discussed when it comes to the final deal. That EU trade marks, designs etc.., were discussed in the first basket is acquired, and it is necessary to think of those IP rights. I have never heard that the UPC was part of those discussions. I would think that the UK authorities have more important matters to think about than just the interests of a group of lawyers.

    If as they claim, other European countries non EU member like Switzerland should participate in the UPC, they are simply wanting a revival of the defunct EPLA. We all know what the CJEU made of it, cf. Opinion C 1/09, in spite of the various interpretations given over time by learned persons like Mr Tilmann.

    It does not appear correct to state that “The legal opinion [Gordon Pascoe] that we obtained, indicates that there is no legal obstacle to that as such. If there’s a political will to do it, it can be done.”

    According to Point 106 of the Gordon-Pascoe report,”quite a number of articles of the UPCA would need to be amended”. When it comes for instance to Art 2,c) it is even stated that “The precise wording of the amendment would depend upon whether it is intended to open up the UPCA exclusively to the UK, or also other non-Member States such as Switzerland”. If all the points mentioned in this § 106 are not a legal obstacle what should then be understood under this topic? Amending the UPC means a new round of ratification. The trick with Art 87(2) UPCA will not do, as such an amendment would certainly not be “to bring it into line with an international treaty relating to patents or Union law”. The famous Ohly theory to this effect is to be taken with a big pinch, if not a bucket, of salt.

    It is also not correct to belittle the Max Plank document by saying that “They take 170 pages to express their view. If it were a simple matter that only EU member states can participate, I wouldn’t expect to have to read 170 pages”.

    When it comes to this level of argumentation, it can be concluded that the barrel is being scraped. Please let’s come up with sound arguments and not this kind of rhetoric. The argument can be used in exactly the opposite way: by needing 170 pages, the authors wanted to make a waterproof demonstration of their point. I am more inclined towards this way of looking at it, than the one suggested before the subcommittee.

    Furthermore, people of the level Mr Mooney and Mr Jones, if they want to be taken seriously, should absolutely refrain from spreading rumours: “The rumours that I heard (…) are that we can…, we hope to expect a decision in December and that it is likely to be favourable. I stress they are rumours, gossip, nothing concrete from the court.” This is the more so since it is at a double level: decision in December, and likely favourable”. Are we on the rumours market, or attempting to discuss a serious issue?

    Would a representative, be it lawyer or patent attorney, truly having the interests of his clients in mind, honestly advise anything else than an opt-out as long as the situation with respect to the post Brexit UK participation is not cleared? An opt-out seems the only option, certainly for patents which might be of potential great value.

    In the short or the long run, the whole matter will end up before the CJEU. And what if the CJEU considers that the UPC is not according to EU law. The hope is that by having established a fait accompli, the CJEU would refrain from blowing the whole thing up. This is however giving little credit to a judiciary institution.

    It is certainly not with the kind of arguments developed before the subcommittee that the “plea to open up Unitary Patent project for non EU member states” will ever become reality.

    Techrights: FINGERS OFF!!!

  3. Attentive, setting aside whatever agenda Mr Mooney is pursuing, I would go easy on Stephen Jones, President of CIPA.

    Although President Jones had a career as a patent litigator in prominent international patent litigation houses, that is all behind him now. He has retired from all that stuff. I have no doubt that, these days, he is selflessly and assiduously promoting what the UK Chartered Institute of Patent Attorneys perceives to be its interest in the UPC.

    The Institute’s problem is that i) the 52% (voters who voted for BREXIT) do positively want to leave the EU and ii) neither of the two mainstream UK governing political parties (Conservative and Labour) can find within themselves the courage to explain to the angry Leavers that whatever (or whoever) is responsible for their life-long woes, anxieties, frustrations and sheer poverty, it is not the EU.

  4. It may help both sides to take a step back and try to take a look at the full picture. Here is what I see: Is it not peculiar that the complainant, who has remained completely silent on the proceedings for more than 1 1/2 years now is suddenly coming up with a piece with procedural details and certain provocative speculations? For what it’s worth, does the ignited discussion about “illegitimate pre-knowledge” by some circles and possible “leakers” at the court not merely have one major consequence, namely that it excludes the BVerfG from deciding in December and in what to Mr Mooney is a “favourable” manner? At least, of course, if it seeks to avoid discussions about how said “pre-knowledge” came about? Is Mooney, who can be expected to have read said paper, just playing along as to buy time on the “Brexit” front and assure the Lords Committee that everything is fine? Who knows, but there may be a lot more to this than meets the eye.

  5. Dear Max Drei,

    We all know which agenda Mr Mooney is pursuing. It is his good right, but then he should come up with valid arguments and not the kind of arguments he appears to have delivered before the House of Lords. From a lawyer specialised in IP, I expect more serious arguments.

    For me his present arguments are on the same level as those brought forward by Mr Pors in a famous interview where he found that “Opposition against Unitary Patent comes from fearful lawyers and critics who only have a theoretical interest”.

    Mr Mooney presented arguments that were specious to say the least, and without any serious legal reasoning. The fact that Mr Jones attended the said meeting with Mr Mooney gives the direct impression that Mr Jones agrees with Mr Mooney’s comments. If this should not be the case, I am ready to acknowledge it immediately.

    I do not doubt that Mr Jones sees the interest of CIPA and of its members in a post Brexit participation of UK in the UPC. In his position I would probably do the same. But giving the impression of agreeing with Mr Mooney’s stance, puts him in the same bad light as Mr Mooney, whether he likes it or not.

    That Brexit was a shame, is an acquired fact. But the way the British government is handling the matter is not professional either. It is not by trumpeting some advances in the negotiations which are immediately denied in Brussels, which will help the cause he is meant to defend.

    Dear Tony Tomkin,

    I do not consider the fears expressed by Mr Stjerna to be justified. See also my comments on the corresponding Kluwer blog. His attitude seems to a certain extent irrational.

    I doubt the judges of the GFCC are impressed by this kind of fears or the hopes expressed by the opponents to the complaint. Let’s the Court do its job, and accept the decision whatever it might be. It appears to me that both sides are so eager to defend their point of view, and any means to that effect are good enough. I would however be surprised if the FGCC would decide on the UPC before deciding on the EPO complaints.

    I nevertheless hope that the whole situation will be clarified one way or another, preferably by the CJEU, before the UPCA enters into force. There are too many open issues which are in dear need of an answer.

    But I see a post Brexit participation of UK without acceptance of the CJEU as a not viable option. Moreover such a position is politically not gullible for all the leavers.

    Techrights: FINGERS OFF!!

  6. Thanks Attentive. For the Colonel Blimp-ish Leavers of Little England, a big fat red line is “interference” in the sovereignty of the UK Parliament by any “foreign” court. So I agree with you, that in the “real world” of representative democracies, outside the imagination of the self-interested UPC-pushers, participation by the UK in the UPC is “not an option”.

    But the EPO is different of course. No threat there to the supremacy of the UK courts and the UK Parliament. Remember, back in 1973, for its original Signatory States, the EPO was acceptable but the CPC not. Some things will never change!

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