The UK will not be part of the UPC. The Office of Prime Minister Boris Johnson has confirmed this to IAM-Media.

According to the website, spokesperson Baylee Turner stated: “I can confirm that the UK will not be seeking involvement in the UP/UPC system. Participating in a court that applies EU law and bound by the CJEU is inconsistent with our aims of becoming an independent self-governing nation.”

The possibility for the UK to participate in the UP system post-Brexit has been a topic of lengthy debate. Also, it has long been questioned whether the UK would want to stay in the Unitary Patent project. During the Brexit debate, it has repeatedly been said that Brexit would end the jurisdiction of European Courts in the UK.

The decision of the UK government not to participate in the Unitary Patent system means, among others, that the central division of the UPC which would be based in London, will have to be moved, possibly to Italy or the Netherlands.

 

 


_____________________________

To make sure you do not miss out on regular updates from the Kluwer Patent Blog, please subscribe here.


Kluwer IP Law
image_pdfimage_print

20 comments

  1. The decision of the UK government does not come as surprise for those who were realistic enough to not take any utterance of the proponents of the continued participation of post-Brexit UK in the UPC for anything else than wishful thinking. What have Mr Pors, Mooney, Tillman and co to say now?

    As London is mentioned expressis verbis in the UPCA there is no other way than to open the negotiations for transferring the London section to another location.

    It should be the opportunity to change the stupid decision locating the “Central Division” in three different places. The EPO being in Munich, the Central Division should logically be in Paris. But logic and politics are not really compatible.

    We have not heard the end of the UPC saga, but it’s future looks bleak.

    In any case it means reopening the negotiations and re ratifying the whole agreement. I therefore take bets that, should it ever come into force, it will not be before 2031 at best. The FCC can happily wait until there is a new UPCA. No need to hurry a decision.

    The irony is that the UPC has been strongly inspired by the UK procedure, and now UK will not participate!

    It is now time to rethink the whole system and to come up with a better one! There are too many approximations and problems in the UPCA so that it is high time to come up with something really helping European industry and European SMES and not just companies, mainly extra European, and having very deep pockets.

    Where there is will there might be way, but now we know there is no will.

    De profundis UPC. Rest in peace!

    Techrights and zoobab: FINGERS OFF!!! No need to explain!

    1. Strange, then, that it was Boris Johnson who sanctioned ratification of the UPC by the UK when Foreign Secretary in 2018. And this came after similar jingoisitic comments about the CJEU by May and Davies (remember them) to the Tory Party Conference in 2017 (I think). I’d like to say this isn’t the end of the road for the UPC and UP, but I fear it is. Perhaps it’s time to go back to the drawing board and devise a system all EPC contracting states can participate in.

      1. Not strange at all. That was a political act to not stymie the whole of the UPC for the remaining EU states.

  2. “It is now time to rethink the whole system and to come up with a better one!”

    The patent system is not designed for small companies, if it would be, then it would probably be abolished.

    There is still the danger that the UPC will evolve in its own bubble, in the silence and isolation of trappist monastry:

    https://books.google.be/books?id=2nnKAwAAQBAJ&pg=PA124&lpg=PA124&dq=Rifkind+1951+trappist+patent+law&source=bl&ots=bKIv2nu6t0&sig=ACfU3U3iZ5PfMsDlzCCF6cMvvmz0rlZTRA&hl=fr&sa=X&ved=2ahUKEwi07uvc7vPnAhVN_KQKHRpeBZoQ6AEwAHoECAUQAQ#v=onepage&q=Rifkind%201951%20trappist%20patent%20law&f=false

    “The patent law does not live in the seclusion and silence of a trappist monastery. It is part and parcel within a larger competitive system. This monopoly system is seperated from the rest of the law not by a steel barrier but by a permeable membrane constantly bathed in the general substantive and procedural law.”

  3. Can anyone explain to me how the CURRENT agreement can be amended to move the central division away from London?

    Revision of the UPC Agreement (to “improve the functioning of the court”) will not be possible under Article 87(1) until AFTER the later of: (i) seven years after entry into force of the UPCA; and (ii) the point in time when 2000 infringement cases have been decided by the UPC.

    Thus, the only remaining option would be revision of the UPC Agreement under Article 87(2). However, it seems that there would be no legal basis to amend the UPCA under that option. This is because, as far as I am aware, there is no “international treaty relating to patents” or “Union law” that the AC could cite as basis for any amendments. Whilst the UK’s Withdrawal Agreement may be many things, it is most certainly NOT a treaty “relating to patents”. It is also NOT “Union law”.

    Then there is the problem that no revision can take place before the UPCA enters into force. This creates a “cart before the horse” problem. That is, with no legal basis to set up, and to recruit judges and staff for, a location not mentioned in the current UPCA, how can the location of the central division be moved before the UPCA enters into force? If it cannot, then are we really to believe that there would be sufficient time remaining (during 2020) to effect the transfer after a theoretical entry into force of the UPCA?

    Finally, can we really be 100% confident that the AETR case law mentioned by Jan Van Hoey would not preclude any further ratifications of the current UPCA?

    With all of the above in mind, would it not now be sensible to concede that it is time to give up on the current UPCA and to think about what else can be done instead?

  4. If UPC dies, Battistelli and his EPO minions will be impacted since they all hoped to step into the Paris Court to then be created. Not a major issue for Battistelli (the guy is old anyway and Macron has other ones to place into influential positions) but that the other two are staying at EPO this is really bad news for the EPO and its staff.

  5. To those eager to uncork the campagne after the PM statement: be patient !

    Giving a statement by the UK PM is one thing, international law (e.g. art 18 Vienna Convention of Law of Treaties) en general principles of law (pacta sunt servanda) is another. And then there are negotiations, across the table or behind the scenes, in the past (sure), present (perhaps) and future (may be). To me, the statement and the announcement by IAM is only the tip of the UPC-iceberg. The rest of it (ninety percent !) is invisible.

    My advice is to keep the champagne corked until the (good or bad) news comes from Karlsruhe. This judgement will have much more impact on the UPC construction works, than Mr Johnson’s words. Larry the Cat (the chief mouser to the Cabinet Office and living also at 10 Downing Street) knows that PMs come and go. Just like hot air by the way.

    1. So what obligations under Article 18 VCLT do you think the UK might need to honour in connection with the UPCA? Would that be an obligation not to withdraw its instrument of ratification? If so, then I think that the sub-clause at the end of part (a) of Article 18 indicates that there would be no such obligation, as the UK has now made it clear that it no longer wishes to become a party to the UPCA.

      As for pacta sunt servanda, I would firstly point out that Article 26 VCLT makes it clear that this applies to “Every treaty IN FORCE”… and so presumably NOT to treaties that are not yet in force.

      Secondly, what sense can be made of Article 7(2) (which refers to London) or Article 89(1) (which indirectly refers to the UK as being one of the three Member States whose ratification is mandatory) once the UK withdraws from the UPCA? If those provisions are rendered inoperative by the UK’s withdrawal, then they surely cannot survive… and neither can an Agreement that would be rendered inoperative by the loss of those provisions.

      I agree that things are a little more complicated than they might appear at first sight. However, it will now surely take a miracle to somehow revive the current UPCA.

      1. as to art 18 VCLT: difficult to give a serious example, as the standard is quite high (it really has to go against the core of the not-yet-in-force-treaty) and historical examples are scarce (essentially related to human rights treaties). The only idea that comes up to my mind is the situation where the UK would start serious negotiations with EPC Contracting States (some being EU Member States) to establish an international IP court. That would have the potential to defeat the object and purpose of the UPCA.

        as to pacta sunt servanda: it refers traditionally to agreements that are in force (as ilustrated by art 26 VCLT). In some jurisdictions and in some circumstances, however, the obligations of the parties go further, i.e. have an impact to prior to the entry into force (see art 18 VCLT). The principle of pacta sunt servanda (whatever its precise content is) is part of customary international law and thus applies to any treaty, agreement, convention concluded.

        My two arguments overlap to a certain extent and are complementary to a certain extent. That being said, in the international scene, law is important, but politics and economics are perhaps more powerful to resolve disputes…

  6. Makes sense, but can this, by itself, be deemed an official statement of withdrawal of UK’s deposited instrument of ratification?
    Is it even possible to withdraw the deposited instrument of ratification?
    Art.89 UPCA requires as one of the conditions for entry into force, “deposit of the thirteenth instrument of ratification … including the three Member States in which the highest number of European patents had effect in the year preceding the year in which the signature of the Agreement takes place”.
    But should UK’s ratification be deemed to be effectively withdrawn, then UPC cannot enter into force, even if ratified by Germany, because the requirement of ratification by the three Member States in which the highest number of European patents had effect in 2012 (which were DE, FR, and UK), is no longer met.

    1. Yes, States can (but rarely do) withdraw their instruments of ratification before the entry into force of the treaty. Rather than speaking to IAM, Mr Johnson will have to contact the General Secretariat of the Council of the EU to update the ratification status of the UPC.

      Assuming that the UK withdraws officially from the UPCA, what would this change ?

      First of all, as NM correctly points out Art. 89 UPCA mentions “the three Member States” and not UK, FR and DE as we all tend to read into it. After withdrawal, the UK will be deemed never to be have been part of the subgroup of Member States engaged in enhanced cooperation. Once DE has ratified, you replace UK by the next Member State (Italy ??) on the 2012 statistics list and the conditions of Art. 89 UPCA are still fulfilled. A good example of clever treaty drafting.

      Second, you may think that it’s more than logic that the UK withdraws in the post Brexit era. This does not exclude that there may be other reasons as well. Why do States ratify and then change their minds by withdrawing their instrument of ratification ? To improve their position ! How ? By changing the reservations. Currently, the UK’s reservation is limited to NOT applying provisionally art. 4 UPCA. You may wonder how a host country (UK) could possibly sign a Seat Agreement with the UPC before opening the premises if the host country does not recognise the legal personality of the international organisation. A mystery to me !

      Third, withdrawal (or even the thread of it) serves the UK to improve its bargain position vis-à- vis the EU. The EU and the EPOrg are keen on establishing the UPC and the UK may wish to use this to obtain something valuable in the post-Brexit negotiations. Buying time through withdrawal and re-ratification (with improved reservations of course) may be of value for the UK government.

      Finally, what do we do with the London section of art. 7(2) UPCA and annex II if the UK is no longer part of the game ? No worries, in Burgundy there is a hamlet called London in the municipality of Savigny-sur-Seille. Plenty of space and only 423 inhabitants….

      1. “First of all, as NM correctly points out Art. 89 UPCA mentions “the three Member States” and not UK, FR and DE as we all tend to read into it. After withdrawal, the UK will be deemed never to be have been part of the subgroup of Member States engaged in enhanced cooperation. Once DE has ratified, you replace UK by the next Member State (Italy ??) on the 2012 statistics list and the conditions of Art. 89 UPCA are still fulfilled. A good example of clever treaty drafting.”

        Art.2(b) UPCA: “‘Member State’ means a Member State of the European Union.”

        Art.2(c) UPCA: “‘Contracting Member State’ means a Member State party to this Agreement.”

        Art. 89 UPCA uses the term “Member States” and not “Contracting Member States”.

      2. “Once DE has ratified, you replace UK by the next Member State (Italy ??) on the 2012 statistics list and the conditions of Art. 89 UPCA are still fulfilled. A good example of clever treaty drafting.”

        You forgot the PPI, which has the UK hard written in its article 18.1:

        https://www.unified-patent-court.org/sites/default/files/ppi_final_ii_en_clean.pdf

        “Article 18
        Entry into force
        1. This Protocol shall enter into force 30 days after the date on which the last of the four
        State Parties – France, Germany, Luxemburg and the United Kingdom – has deposited its
        instrument of ratification, acceptance approval or accession. “

  7. Prompted my “MN” I post here a Link to the CIPA website which gives more authority to the news that HMG will not participate in the UPC.

    As to withdrawing from ratification, who would want to hold the UK to its signature. Compare a patent attorney firm with 28 partners. One of them says he is minded to step back from the obligations of partnership. Would the remaining partners refuse to let him resign or retire? What would be the point? Would it not be self-defeating?

    With the UK out of the EU, the way ahead is clearer, when it comes to development of EU law. It was always the presence of practitioners of English law that so irritated the lawyers everywhere else within the EU.

    https://www.cipa.org.uk/policy-and-news/latest-news/government-tells-cipa-it-will-not-seek-to-be-part-of-the-up-upc-system/

  8. The problem is not the ratification. Even if UK withdraws from the UPC, as it does not want to be submitted to the jurisdiction of the CJEU, there will still be three member states with the highest number of validations in 2012. It is either Italy or the Netherlands, more probably Italy.

    There is something more. It is the mention of London in the Agreement itself which is a problem. Art 87(1) can only be applied once the UPCA has entered into force, but it cannot enter into force before the minimum number of ratifications has been reached. It does not appear possible or reasonable to have a part of the Central Division located in a non-member state of the UPCA and of the EU. Art 87(2) does not apply to this situation either.

    Introducing London, Munich and Paris in the UPCA was the result of one of those compromises a la EU, which after night long negotiations any solution appears acceptable, but the consequences of which have not been correctly assessed. Now we have the mess.

    There is a catch 22 situation. London is in the agreement and Art 87(1) cannot be applied. The only way out is to reopen the discussion on the location of the third part of the “Central” (sic) Division. But then Pandora’s Box will be opened and nobody knows what the result will be.

    Why should Germany hurry up the ratification if the problem created by the mention of London is not solved? It only makes sense to ratify once the situation of London has been clarified. It is difficult to ratify an agreement in which part of a court is sitting in a non-member state. It might even bring about a further constitutional complaint.

    The most reasonable way would be to request an opinion of the CJEU to see whether the UPCA is at all in agreement with EU law. With London mentioned in it, certainly not. But it would be wise to see if the rest is in agreement with EU law. EPLA did not resist the scrutiny by the CJEU, the UPCA will probably not either.

    It is certainly not the moment to uncork the champagne, but the future of the UPC is at best bleak. Now most of the drawbacks of the UPC have been revealed, it might be much more difficult to push something as badly drafted down the throat of Europe.

    It is clear that SMEs were no more fig leaves which were pushed in front, as the whole system has never been conceived for them, but for big international acting firms helped by big international lawyer firms. Nothing a SME can afford.

    Enough is enough. We have been living quite well since the Luxembourg convention was signed in 1975(!), and the very few cases in which a supranational jurisdiction is really necessary do not warrant a monster like the UPC. Through the concept of exhaustion of patent rights, patents cannot be used to fraction the internal market. If some decisions differ in some member states, it is just life’s rich tapestry. Who cares?

    Techrights and zoobab: FINGERS OFF!!! No need to explain!

  9. “The problem is not the ratification. Even if UK withdraws from the UPC, as it does not want to be submitted to the jurisdiction of the CJEU, there will still be three member states with the highest number of validations in 2012.”

    The three member states with the highest number of European patents in effect (i.e. validated) in 2012 were DE, FR, and UK.
    That the UK exited the EU in early 2020 will not change this fact.
    IMO, it was a political decision to have, and hence, to require that the “big three” EU member states – DE, FR, and UK – to be on board of the UP/UPC ship in order for such to leave the port (i.e. enter into force).

    1. However, a sensible argument can be made that such determination as who is a “member state” is to be made when an event arises that might have the effect that the conditions for entry into force are satisfied. Say, DE ratifies this summer, it can be argued that determination who is a member state is to be made at that instant, and that only member states that are EU member states at that moment in time are to be regarded as member states for the purposes of Art.89 UPCA.

  10. However, a sensible argument can be made that such determination as who is a “member state” is to be made when an event arises that might have the effect that the conditions for entry into force are satisfied. Say, DE ratifies this summer, it can be argued that determination who is a member state is to be made at that instant, and that only member states that are EU member states at that moment in time are to be regarded as member states for the purposes of Art.89 UPCA.

    1. Applying the same logic, if (when?) DE pull out due to the constitutional complaint then their spot in the top three goes to NL or IT. They’ve both already ratified, so does the UPC then come into being retroactively?

Comments are closed.