One month after the UK referendum, discussion has deepened and several papers have been published about the Brexit vote and the Unitary Patent system. Is it possible to both save the system and keep the UK in?
EPO president Benoît Battistelli thinks the best case scenario would be for the UK to ‘go ahead as soon as possible with the ratification of the UPC Agreement. This would allow the UK afterwards, in its EU exit negotiations, to obtain its continuous participation both in the Unified Patent Court and the Unitary Patent.’ The European Patent Litigators Association EPLIT made a similar appeal for swift UK ratification.
But in reaction to Battistelli’s blogpost, Patent law specialist Deborah Bould of Pinsent Masons, pointed out that such a move by the UK is politically unrealistic: ‘This gives the UK no certainty about the future. For example, the London seat of the UPC Central Division focussing on life sciences could be wound up on Brexit.’
The IP Federation in the UK is even more adamant. In a position paper published this week, it states that certainty regarding the future should be a prerequisite for further steps by the UK government and parliament: ‘We support the Unitary Patent), and the Unified Patent Court with the UK participating on the current terms, including the location of the branch of the Central Division in London. Without a guarantee of continued UK participation post-Brexit, the UK should not ratify the UPC at present. We consider that ratifying the UPC to bring it into effect and subsequently being forced to leave the system would bring an unacceptable amount of uncertainty to industry across the UK and EU.’
Both Deborah Bould and the IP Federation think the Brexit vote should be a reason to consider opening up the Unitary Patent system for participation of non-EU-member states. According to Bould, ‘it is a shame [that the UK is pressurized to ratify the UPCA, ed.] as the EPO could instead be leading an approach to negotiate a revised UPC Agreement allowing participation of the UK post-Brexit and potentially opening the system up to EPC contracting states more generally.’ According to the IP Federation, ‘the involvement of non-EU, European Patent Convention Contracting States in the UPC (e.g. Switzerland, Norway) would be a potential advantage to industry, and it may be advantageous for the UK to promote this.’
With their remarks, they touch on a crucial issue of debate since the Brexit vote (not taking into consideration the political aspects): Can the Unitary Patent package survive with the UK as only non-EU-member by making relatively small adaptations to the UPCA? Or would more rigorous changes – and subsequent severe delays for implementation of the system – be inevitable to keep a post-Brexit UK in?
EPO president Battistelli apparently thinks including just the UK is possible, and a scenario to save the system in this way was described on this blog by Bird & Bird partner Wouter Pors. But in a comment Leo Steenbeek from Philips, and in another blogpost Dr. Axel Walz of the IP Dispute Resolution Forum in Munich questioned whether this is a viable option.
The debate has left traces in the IP Federation’s paper: ‘Certainty is required to ensure that the UK’s ratification would not threaten the validity of the UPC’. And the Institute of Professional Representatives before the European Patent Office (epi), in its 14 July Communication on the Brexit, states: ‘The epi continues to support the Unitary Patent/UPC system as an attempt to further harmonize and simplify the patent system in Europe and would like to see the system to come into force. However, any solution to address the present situation of the UK should avoid to introduce additional legal uncertainties for users and affected third parties.’
Unfortunately, a month after the UK referendum, uncertainty rules. On 21 July 2016, law firm Simmons and Simmons reported a ‘working party of representatives of the main UK industry and professional IP associations has been convened by its partner Kevin Mooney to consider the options. Mooney is also chairman of the Committee that prepared the draft Rules of Procedure for the UPC.
In the meantime, the plan of the UPC Preparatory Committee to continue to progress as envisaged with the work dedicated to the technical implementation pending more clarity about the consequences of the Brexit vote, has turned out to be problematic.
On 29 June 2016, less than a week after the Brexit vote, the UPC Preparatory Committee agreed on the UPC protocol on Privileges and Immunities (PPI), but, as has been pointed out here (in a comment) and here, the protocol was only signed by Belgium, Germany, Denmark, France, Greece, Italy, Luxembourg, Malta, Netherlands, Portugal, Sweden and Finland. ‘The UK did not sign while without UK participation, it cannot enter into force.’ Article 18.1 of the PPI expressly mentions the United Kingdom as one of the state parties whose approval is indispensible.
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If beside UK, once it has left the EU, other non-EU member states should be allowed to join the UPC, this means roughly that UPLA is coming out its ashes. I thought EPLA was dead. How can it just revive because of the Brexit? Some explanations are due.
As logical conclusion, any solution by which the UK as non-EU member state could stay in the UPC, was thus available before the Brexit. Why suddenly, because of the Brexit, a solution allowing the future UK and other non-EU member states to join the UPC emerges? Have I missed something?
A UPC without UK is certainly less attractive, but that is reality. That a lot of efforts have been put in the UPC and its start is to be acknowledged, but political reality has to be acknowledge as well. Simply doing as if nothing happened on 23d of June is not an option.
May be the time could now be used to look at fresh and to iron out the multiple compromises which had to be adopted in order for the UPCA to be palatable to different states. I am thinking for instance of the “Central Division” which has its seat in Paris, but sections in London and Munich. This is a typical EU compromise which has no real raison d’être but to satisfy some member states.
A quick solution is a bad solution, especially as uncertainty is not something investors want to see.
I strongly oppose! Only a quick solution is a realistic and, of course therefore the only good one. If we follow all the objections of a part of academia against the UPC we will never get a European Patent Court for the next 100 years and, yes, the UPC is a compromise, but not a bad one. The experiences of the best patent litigators and patent judges have influenced the Rules of Procedure (RoP), the first truly European Code of Civil Procedure ever. Academia is still trying to draft such a code since more than 50 years without any valuable outcome. Only practical needs and input from private practice and industry as well as an open public discussion (with academia also invited) led to the final version of the RoP resulting from all important European legal traditions (Roman, German as well as Common law) accepted by nearly every group of the IP community. We should start now as soon as possible with the UPC system and hopefully with the UK as a participant! Professor Tilmann has explained in detail how that will be possible! The relevant distinction between non EU member states and the UK is that UK is still a member. In the 1/09 opinion of the CJEU nothing addresses such a constellation with an EU member that will leave the EU in the future. Opinion 1/09 only deals with the situation where a state IS not an EU member state, a completly different situation from a constitutional point of view. And this difference points to the solution as explained by Professor Tillman. The rest is a question of politics. If there will be such a political solution it will be covered by EU law as far as the primacy of applicable EU law will be accepted. Whether there will be such a political solution is one part of the entire Brexit deal between UY and the EU, but, remind UK industry want to have unrestricted access to the common market including banking sevices to save the City of London economy. In view of this and the circumstance that the UPC-A is not EU law itself, but international law that has to be construed only in view of the primacy of EU law I assume that we will find a solution with UKs participation. Otherwise we have to prepare everything to install the system without the UK, thats up to UK. In this situation we should urge them to ratify the UPC-A also in order not to hinder the remaining member states. The EU is able to throw the weight of a lot of issues into the balance during exit negotiations with the UK to reach such an outcome…
I fully share Mr. Spingorum view on the long term compatibility of UK within UPCA, if ratification is done quickly and before any possible declaration under A 50 TEU is made.
I believe that he way out, legally sound as usual, suggested by Prof Winfried Tilmann and quoted by Mr Spingorum looks very clear and clean and capable of obtaining the necessary support, also at political level.
I was one of those participating in the EPLA discussions and sharing its project, but that time is now over for it, like it or not. Therefore, let’s make UPC a reality soon. Indeed the main political decision is with the UK (“to ratify or not to ratify..”), while the “Continental-EU” partners can probably not go much farther than signalling that they believe in a long term solution allowing UK to remain part of the UPC (which is an International Treaty and not EU Law as we know), e.g along the lines suggested by Prof Tilmann, and committ altogether to it.
A conclusive plea “to the UK” on my side is for them to take a decision on ratifying or not the UPC very soon. It is not EU Law, it is a long awaited International Treaty and there appear to be ways for it to have a post-Brexit life with UK. If they would malauguratamente conclude to remain out of it, they should as well inform the other partners as soon as possible to allow the system to have a new start soon, very unfortunately, without the Uk.