A parliamentary committee in the UK has asked the government to clarify its position on the Unified Patent Court (UPC).

Although late February the office of Prime Minister Boris Johnson confirmed to several media that the UK “will no longer seek to participate in the Unitary Patent project”, an official statement has not been issued.

Yesterday the EU Justice Sub-Committee of the House of Lords in the UK  heard evidence from Julia Florence, past president of the UK Chartered Institute of Patent Attorneys (CIPA) and barrister Daniel Alexander QC to examine what impact this will have both on businesses and inventors in the UK and on the Court.

After the hearing, chairman Lord Morris of Aberavon of the Sub-Committee sent a letter to IP minister Amanda Solloway with a simple question: “Can you confirm recent media reports that the ‘UK will not be seeking involvement’ in the UPC and the associated unitary patent?”

Tuesday’s hearing made clear both Daniel Alexander and Julia Florence hope there will still be a way to keep the UK in the Unitary Patent project. Alexander said: “Is the government paying enough attention, do they understand it, I am convinced they can be made to understand it. I think there is an element of shallowness of thinking that says: ‘Look at this, the EU is involved, right, we strike this out.’ But a discussion of this with reasonable people, I think actually can make genuine progress. (…) I’m prepared to talk to anyone who will listen on this and actually try and not have sort of silly things become obstacles. (…) For kind of pointless things to stand in the way I think that’s just, at this stage in the country’s history, that’s not where we should be.”

German complaint

The UK’s announcement has reinvigorated the debate about changes to and the feasibility of the Unitary Patent project now that this important member state seems on its way to the exit. Last week, the UPC Preparatory Committee announced it will not undertake any initiatives to deal with the UK’s planned withdrawal until another crucial issue is clear: the outcome of the German constitutional complaint against the UPCA.

‘Following the UK government’s decision not to pursue remaining in the Unified Patent Court and in the Unitary Patent, work on the implementation of the Unified Patent Court continues. Once Germany will be in a position to ratify the UPC Agreement and the Protocol on the Provisional Application, arrangements will be made to deal with the practical implications of the UK‘s departure. These will be published in due course’, a message from chairman Alexander Ramsay of the Preparatory Committee read.

The two chambers of German parliament had already ratified the UPCA, when a complaint against the agreement was filed by Düsseldorf lawyer Ingve Stjerna in March 2017 with the Federal Constitutional Court (FCC). Because of this, the Court asked German president Frank-Walter Steinmeier to delay the only remaining step to complete the ratification formalities (apart from the deposit of Germany’s instrument of ratification with the EU Council): signing the UPC legislation into law.

The FCC ruling in the case is expected within the next few months and the PrepCom’s decision to wait for it is a logical choice. If the complaint is (partially) upheld, this will lead to delays or could even mean the end a of the UP system. If the complaint is dismissed, this could open the way for German ratification and the start of the Unitary Patent system later this year although, due to the UK’s decision to withdraw, amendments will have to be made to the Agreement.

The expression ‘be in a position to ratify’ in Ramsey’s message, however, raises the question whether he has taken into account possible political doubts in Germany about proceeding with the UP project without the UK.

In answer to questions of Parliament the German Justice Ministry made clear last year that the government would reconsider the UP project at some point: ‘The issue of the withdrawal of the United Kingdom from the European Union (so-called Brexit) and its implications for European patent reform play an important role in the further implementation process of the Unified Patent Court Agreement. The real and legal implications of withdrawing must be examined with regard to the Agreement and agreed at European level. This opinion forming is currently not finalized, not least because significant factors of the expected exit are not yet known.’ (Drucksache 19/12106)


_____________________________

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

2 comments

  1. I must confess to being a little perplexed by some of the oral evidence given to the EU Justice Sub-Committee on 10 March.

    I can understand that the UK legal profession does not want to lose the influence (and, let’s be honest, the income) that it might gain by the UK’s participation in the UPC. I can also understand that the UK legal profession might not want to lose the opportunity for UK legal traditions to influence the development of case law of a potential UPC. What I struggle to understand, however, are all of the other arguments advanced for the UK’s continued participation in the UPC.

    The suggestion from Mr Alexander that SMEs will somehow lose out is, frankly, not supported by the evidence. To the contrary, the fees and rules of procedure of the UPC appear to be specifically designed NOT to be “SME-friendly”.

    However, more troubling than this is Mr Alexander’s suggestion that the UK’s participation in the UPC would only require the UK to sign up to a tiny amount of EU law. Unless I have missed something, this is pure conjecture that really should not have been presented as if it were an accepted fact.

    Even the superficial (masquerading as “in-depth”) analysis commissioned by the EU parliament’s JURI committee spotted that there is no tried-and-tested legal mechanism that can be invoked to facilitate the UK’s continued participation in the UPC:
    “Maintaining the UK within the UPCA would need innovative legal solutions, as the UPC is an international court applying EU law – and the reason for Brexit was all about not applying EU law any more.”

    In other words, nobody knows what it will take to persuade the CJEU to accept the participation of a non-EU Member State in a court that applies EU law. Indeed, based upon Opinion 1/09, it appears that the CJEU would most likely view such participation as being a total non-starter.

    I must also beg to differ with the suggestion that the CJEU would likely only have a relatively limited role in resolving disputes before the UPC.

    Firstly, the CJEU might need to answer fundamental questions relating to the UPC itself… such as whether the UPC Agreement is compatible with EU law, or whether the set-up of the court means that it is NOT a court common to EU Member States (and so is not able to make preliminary references to the CJEU).

    Secondly, the CJEU would be responsible for interpreting provisions such as Article 5(3) of Regulation 1257/2012. That is, they would need to make sense of a provision that, as confirmed by the CJEU in C-146/13, applies NATIONAL law(s) of infringement to cases involving unitary patents. This will not be straightforward, not least because of difficulties in determining how to resolve apparent conflicts between different (national and/or international) laws in the country whose laws are to be applied.

    Finally, even if and when those fundamental questions are resolved, the CJEU might then need to consider other tricky questions, such as whether the UPC would be competent to handle SPC disputes in respect of the UK … bearing in mind that, from 2021 onwards, laws governing SPCs and marketing authorizations in the UK will diverge from corresponding EU laws.

    I do not exclude the possibility that all of the legal issues outlined above can be resolved in a manner that permits the UK’s (post-2020) participation in the UPC. It is just that I cannot identify, nor have I ever seen or heard, any persuasive legal arguments that would make me confident of such an outcome.

    Against this background, the decision of the UK government not to seek to participate in the UPC appears to me to be perfectly consistent with the UK’s red lines with respect to EU law and the CJEU. I therefore suspect that no amount of lobbying from the legal profession will change that decision. Indeed, it is possible that continuing lobbying efforts on the UPC now could backfire in the long term. Thus, much as the UK legal profession seems to be in the early stages of grief with respect to the UPC (mostly denial, but also anger, bargaining and depression), I think that it is perhaps time to start moving towards acceptance.

  2. Some of the statements of both representatives before the Committee cannot be left without comment

    Both representatives from the profession insisted upon the positive effect of the UPC for SMEs. This is an old story which has one big drawback: it is far from reality and SMEs have always been the fig leave to hide behind. How many SMEs located in EU member states are filing for a European Patent, validate in all member states of the EU and are later involved in transnational litigation over a plurality of EU member states?

    I take bets that it is not more than a handful. If at all. All the upheaval for such a small number of cases, please keep serious. That at a pinch a SME might be able to afford a patent attorney, why not, but how many SMEs can afford a QC? It makes those uttering such statements a laughing stock.

    One should not forget that in spite of what Mr Alexander claims, the UPC has not been conceived for SMEs, but for big industry. And even there one should never that barely a third of applications at the EPO stem from EU member states. European Industry is certainly not the prime beneficiary. Why do you think that US negotiators have expressed the view that UK should stay in the UPC?

    The alleged study of a European Parliament think-tank claiming that UK membership of the UPC post-Brexit was possible is so full of gross legal mistakes, e.g. the BA of the EPO loses their monopoly when it comes to deciding after grant or opposition, that it cannot be taken seriously. Keeping OK in the UPC would mean reviving EPLA. But EPLA is dead as dead can be, think of Monty Pythons’ parrot, and any revival of it is doomed to fail. See Opinion C 1/09 of the CJEU.

    I beg to disagree with Mr Alexander that “Substantial patent law would remain the purview of the EPO, which is already (theoretical) harmonised across EPC member states”. Both the EPO and the UPC are competent to deal with the validity of patents and there starts the problem of clashing case law between the two.

    That the CJEU will limit itself to only deal with questions not linked to substantive patent law is a hope of many UPC proponents, but nothing is less sure. If the CJEU thinks fit to decide differently than the EPO, it will do. See all the present problems with the interpretation of Art 53, b) EPC.

    According to Mr Ramsay “work on the implementation of the Unified Patent Court continues” What else can he say? If he does not believe in it, who else should?

    I would also like to know from where he get the assurance that Germany will “be in a position to ratify the UPC Agreement and the Protocol on the Provisional Application”. It implies for him that the complaint will be dismissed. We all know that the decision has been announced to come every next month, but this does not mean that when it comes it will be the one expected by Mr Ramsay.

    The arrangements to “be made to deal with the practical implications of the UK‘s departure”, mean for a start renegotiating the location of the life science section of the central division. In other words opening Pandora’s Box. And all this should be quickly over. Please do not pull my leg.

    It was a good move for two strong supporters of the UPC to address a House of Lord Committee, and to push it to write to the Minister for IP. One never knows, after intervention of the IP minister the PM might be frightened getting a letter from such a select committee and will give in and accept jurisdiction of the CJEU in patent matters for the sake of the purse strings of a bunch patent attorneys and of IP lawyers.

    Let’s just play “to be or not to be in the UPC”, and may be UK will actually stay in the UPC. The next act is soon to come in what can only be considered a big farce.

    Techrights and zoobab: FINGERS OFF!!! You know why

Comments are closed.