At last the doubters have been proven wrong. The UK has ratified the UPC Agreement.  The news was announced this afternoon by IP Minister, Sam Gyimah MP, at an IP Awareness Network event at the House of Commons Terrace to celebrate World IP Day, and we can expect to see this ratification recorded tomorrow on the EU Council’s General Secretariat’s record of notifications on its website here.

Why the long wait?

It has to be admitted that it has been a marathon – completed more than five years after signature of the UPCA.  At various stages, the UK’s progress has been stalled by a series of unfortunate events. To understand why the delays have occurred, it is important to understand that the UK’s constitution requires it to have passed all implementing legislation before it ratifies a Treaty such as the UPCA – unlike states such as France who can ratify first, and sort out the legislation afterwards.

Hence, although almost all of the work had been completed by the beginning of 2016 – indeed most of it two years earlier – one step remained before the UK could ratify.  It had to implement the Privileges and Immunities Protocol. Unfortunately, there was a delay in this Protocol being agreed, such that it was only available for signature on 29 June 2016 which, by unfortunate coincidence was just after, not before, the Brexit vote. In other words, it was constitutionally impossible for the UK to ratify before then.

Of course, the Brexit vote itself caused a delay whilst the Government considered whether it could and should proceed with involvement in the UPC project. That was resolved at the end of November 2016, and the answer was an unequivocal, unconditional “yes”.

The UK then continued on the path toward ratification by signing the Protocol and prepared drafts of the legislation necessary to implement it, that is draft Statutory Instruments (SIs) – one for the UK as a whole and one for Scotland. As a result, the Preparatory Committee in January 2017 was able to announce a start date for the UPC of December that year.

In early 2017, therefore, it looked like both the UK and Germany would be ready to ratify by about May, and it was planned that immediately after Easter (late April), the final draft of the UK SI would be presented to the Westminster Parliament. Then came the next unfortunate event: the General Election. This was announced literally just a few days before the planned Parliamentary session.  The election was famously called after the Prime Minister had gone for a walk in Wales with her husband, and surely not even the most paranoid conspiracy theorist could have thought that this conversation went along the lines of: “How can we derail the UPC? I know, let’s call a General Election”.

Inevitably, therefore, it was only the other side of the election that progress could resume. By this time, the news from Germany that Dr Stjerna had filed his constitutional complaint at the BVerfG had finally emerged, meaning that again there was no real rush for the UK to act. However, it still tried. In July it authorised the start of the Provisional Application Phase, and even tried to squeeze approval of the UK SI into the Westminster Parliament’s last business session before the summer break, but this had to be abandoned due to more urgent business arising on the final afternoon of the session. But on the other side of the long break, progress resumed. With still no news from the BVerfG, save that amicus briefs were to be filed which would slow matters down further, there was still no rush, but the legislation was passed in December, bringing the Parliamentary stage to an end.

But then there was another delay. Was this a further deliberate delaying tactic? Not at all. Formal approval of SIs has to be given by the Privy Council. It is chaired by Her Majesty the Queen. She is over 90 years old and had planned a long holiday in January. Hence the next meeting of the Privy Council was not until February.

After that, the UK was in a position to ratify, but there was a further short delay then too. Why? Again purely practical issues arose. There was a new IP minister, and more significantly, the Foreign Office (the Ministry to take the final ratification step) was just a little busy with “minor” issues such as the poisoning of a former KGB spy in a small English city in broad daylight, and the Syrian crisis – and all while there was still no news from Germany to make UPC ratification urgent.

Hence, as your author has been saying since November 2016, once the decision to go ahead with the UPC project had been taken, it was just a matter of completing the mechanics, and the theories of some deliberate dragging of feet were quite simply wrong. Some suggested a cunning plan was afoot to use the UPC as a negotiating tool in the EU withdrawal negotiations. This is something your author could never understand: the UK wanted to be in the UPC, and the other contracting states wanted the UK to be in the UPC, so how could this ever have been a negotiating card?

What next?

So we are now at the stage where the UK has done everything it needs to do. What does that mean for the future? Strictly speaking, on its own, nothing. We still await a few countries who, despite ratification have yet to approve the start of the Provisional Application Phase – Austria, Bulgaria, Latvia, Lithuania, Malta and Portugal – of which two must do so before it can start (or for other countries who are yet to ratify to do so and approve the PAP). Plus, more significantly of course, there is Germany which remains a real remaining obstacle in the way of the UPC.

But vitally, serious discussions can now start about enabling the UK’s continued participation in the UPC system after Brexit (including after the end of the transition period after 31 December 2020), and that is probably the point of greatest significance arising from today’s announcement. Can agreement be reached on that? Can it extend to the unitary patent part of the package, which is clearly more difficult given its status as an EU right. Hopefully the answers to these questions will be “yes”. There appears to be a will, and as the saying goes: where there is a will, there’s a way.

Congratulations to the UK IPO and everyone else who has contributed to today’s excellent news.

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  1. In spite of what the author says there are still big stumbling blocks before one can clearly assert that the UK can participate to the UPC after Brexit.

    A lot of papers have been written and give an affirmative reply to this question. But in none I could find a convincing reply.

    Among the questions to be answered:
    – How is it possible to the UK to stay in the UPC after the Brexit if it does not accept rulings from the CJEU?
    – Why a court from a non-member state should be allowed to bring prejudicial questions to the CJEU?
    – How can a decision from a UPC court residing in England can be enforced in another UPC member state?
    – How can a decision of a UPC court, other than one residing in the UK, be enforced in the UK?
    – After all, the Brussels convention on enforcement will no longer apply to UK.

    Fiddling with the Administrative Committee of the UPC is not an option as it has not been designed for this purpose. Art 142 EPC is neither a solution to this problem. And last but not least, the UPC itself is full of references to Union law.

    That the UK legal profession will be delighted to stay in the UPC goes without saying, after all they played a prominent role at least in drafting the rules of procedure which still are at their 18th draft. The RPUC should be submitted to the EU. I have not heard anything in this respect.

    Not to forget there are other countries poised to take over the role of the UK. Alone the discussions about the possible relocation of the London branch of the central division of the UPC after Brexit gives an idea that the question is not easy to reply. The Italians want it in Milan, German industry want it in Munich and so on.

    As the UPC was not in the first Brexit negotiation basket, it is permitted to doubt that it will be in the second one. And it will certainly not be added just to the benefit of a few lawyers.
    In this respect the author contradicts himself when on the one hand he says that the stay in the UK was never a negotiation card, but now “serious discussions can now start about enabling the UK’s continued participation in the UPC system after Brexit”.

    That some lawyers in other potential member states wanted UK to stay in it is one thing, but they only wanted it in order to get the UPC up and running as quickly as possible.

    Nobody has been proved wrong, and hope dies last, but it is not tomorrow that the UK will, if ever, stay in the UPC.

    One thing which should be avoided at any cost is to put pressure on the GFCC. The UPC question is not on top of the pile, and there are other complaints pending before this one. Notably three complaints about the Boards of appeal of the EPO. They are not linked directly to the UPC question, but as the UP is a patent granted by the EPO it cannot be claimed that there is no relation at all between those complaints.

    Whilst a harmonisation in IP matters in Europe is an aim to be pursued, I am not sure that the UPC in its present form is the reply.

    And by no means is the UPC good for European industry at large and SMEs in particular, in spite of what is touted loudly in numerous canals. It is good for the big industry, and even there I have doubts. Who needs a patent in all contracting states of the EU and even in all contracting states of the EPC? But it will be much easier for non-EU patent owners to enforce their rights as barely a third of applications at the EPO come from EU member states. Has anybody ever thought of this?

    Techrigts: FINGERS OFF!!! You are very prompt to accuse others of lacking ethics. But then behave accordingly and do not poach comments you have been requested not to use.

    1. As far as I am aware, the Brussels Regulation should be a non-issue as far as the enforceability of UPC judgments in the UK is concerned. UPC divisions – whether in the UK or outside it – are all divisions of a single transnational court operating under the same legal system as one another. Thus, the situation is not analogous to using the Brussels regime to attempt to enforce (say) a decision of the English High Court in Germany, or to enforce a decision of the Bundespatentgericht in the UK. For the purposes of enforceability of UPC judgments the member states are all the same jurisdiction, regardless of the member state where a particular division of the court sits.

      The question about the CJEU is a valid one and on the face of it appears to be inconsistent with the UK’s “red line”. However, this could potentially be “finessed” in that, strictly speaking, the CJEU will not have authority over any British courts; it will have authority over an international court (the UPC), parts of which might just so happen to be based in the UK.

      1. There are interesting considerations in your reply. They have however not cleared my reservations.

        I have taken notice that you consider the UPC divisions – whether in the UK or outside it – to be divisions of a single transnational court operating under the same legal system as one another. This does however not guarantee the supremacy of EU law which was the main reason for the EPLA to end as we know it. It remains a fact that the UP is a legal asset in the EU for which Union law applies. In how far courts, which are not inside the EU legal system and to which non-EU member states can participate, will be tolerated by the CJEU remains to be seen.

        As far as enforceability is at stake, I would like to observe that the Brussels Regulation EC 44/2001 applies to disputes between individuals from different Member States of the European Union (EU). Questions of interpretation of the Brussels Regulation are subject to the jurisdiction of the ECJ. Here again, I am not convinced by your reply.

        Whether it is on the matter of enforceability or on the supremacy of EU law, the last word will be that of the CJEU. The sooner, the better.

        All these problems could have been solved upfront if the draft UPCA would have been submitted to the CJEU, as this was done for the EPLA. In any case, this should have been done after Brexit.

        I still wonder why this what not the case. There must have been reasons, but please do not say the UPCA took care of C 1/09 and nothing more needed to be done. As stated by Alan Johnson, if there is a will, there is way.

        But simply accepting to “finesse” in order to come to a solution is to me more the expression of wishful thinking, than to be based on sound legal grounds.

        The day the CJEU will have endorsed your views, I will believe that all problems linked with the post Brexit participation of UK will have been solved. Until then, even if the UPCA is ratified and enters into force, there is a big Damocles sword over the whole construction UP-UPCA.

        Techrights: FINGERS OFF !!!!

      2. You are essentially arguing that the Commission was wrong to believe that, as stated in Recital 3 of Regulation 542/2014 “It is necessary to regulate the relationship of Regulation (EU) No 1215/2012 [i.e. the Brussels regime] with the UPC Agreement”.

        Other Recitals to Regulation 542/2014 explain the Commission’ position:
        (4) The Unified Patent Court and the Benelux Court of Justice should be deemed to be courts within the meaning of Regulation (EU) No 1215/2012 in order to ensure legal certainty and predictability for defendants who could be sued in those two Courts at a location situated in a Member State other than the one designated by the rules of Regulation (EU) No 1215/2012.
        (5) The amendments … with regard to the Unified Patent Court are intended to establish the international jurisdiction of that Court…
        (6) As courts common to several Member States, the Unified Patent Court and the Benelux Court of Justice cannot, unlike a court of one Member State, exercise jurisdiction on the basis of NATIONAL LAW with respect to defendants not domiciled in a Member State. To allow those two Courts to exercise jurisdiction with respect to such defendants, the rules of Regulation (EU) No 1215/2012 should therefore, with regard to matters falling within the jurisdiction of, respectively, the Unified Patent Court and the Benelux Court of Justice, also apply to defendants domiciled in third States. The existing rules of jurisdiction of Regulation (EU) No 1215/2012 ensure a close connection between proceedings to which that Regulation applies and the territory of the Member States. It is therefore appropriate to extend those rules to proceedings against all defendants regardless of their domicile. When applying the rules of jurisdiction of Regulation (EU) No 1215/2012, the Unified Patent Court and the Benelux Court of Justice (hereinafter individually referred to as a ‘common court’) should apply only those rules which are appropriate for the subject-matter for which jurisdiction has been conferred on them.
        (7) A common court should be able to hear disputes involving defendants from third States on the basis of a subsidiary rule of jurisdiction in proceedings relating to an infringement of a European patent giving rise to damage both inside and outside the Union…
        (8) The rules of Regulation (EU) No 1215/2012 on lis pendens and related actions, aimed at preventing parallel proceedings and irreconcilable judgments, should apply when proceedings are brought in a common court and in a court of a Member State in which the UPC Agreement or, as the case may be, the Benelux Court of Justice Treaty does not apply.
        (9) The rules of Regulation (EU) No 1215/2012 on lis pendens and related actions should likewise apply where, during the transitional period provided for in the UPC Agreement, proceedings concerning certain types of disputes are brought in, on the one hand, the Unified Patent Court and, on the other hand, a national court of a Member State party to the UPC Agreement.
        (10) Judgments given by the Unified Patent Court or by the Benelux Court of Justice should be recognised and enforced in accordance with Regulation (EU) No 1215/2012 in a Member State not party to, as the case may be, the UPC Agreement or the Benelux Court of Justice Treaty.
        (11) Judgments given by the courts of a Member State not party to, as the case may be, the UPC Agreement or the Benelux Court of Justice Treaty should be recognised and enforced in another Member State in accordance with Regulation (EU) No 1215/2012.

        (13) Since the objective of this Regulation cannot be sufficiently achieved by the Member States but can rather, by reason of its scale and effects, be better achieved at Union level…

        With this in mind, are you still so sure that “the Brussels Regulation should be a non-issue”?

      3. Another thing: the UK.

        Firstly, it is common ground that the UK cannot stay in the UPC if it is truly a “Court Common to the [EU] Member States”.

        Secondly, if the UPC is, in fact an international court, then the judgements of that court WILL need a mechanism for enforcement in any Participating Member States. Personally, I am doubtful that Article 34 UPCA will suffice on its own. Also, I am certain that it will not suffice for the UK, as ratification of an international agreement is meaningless to the UK courts unless there is corresponding UK legislation.

      4. Enforcement ultimately means this: can an injunction be enforced if the party against whom it was made does not comply? Or can a costs award (or damages award) be enforced against assets in a jurisdiction?

        Under the English system if a party does not comply with a court order, the ultimate enforcement lies in contempt proceedings (for injunctions) and orders over property (for monetary awards – as you cannot be put in prison for not paying your debts under the English system). Contempt proceedings can allow a court to award fines or imprisonment (maximum two years). These end enforcement mechanisms are what ultimately means court orders are followed. The UPC system does not set up any equivalent system, nor could it. So recognition of judgments is essential as without that the underlying English legal system won’t be able to enforce.

      5. Further to my first reply, which still has not been published (and I wonder why), I see still other problems with the post-Brexit UK participation in the UPC.

        In IPKat, Darren Smith drew the attention to a reservation filed by the UK. The reservation is as follows: “The United Kingdom of Great Britain and Northern Ireland shall not provisionally apply Article 4 of the Agreement on a Unified Patent Court.” As Darren Smith said, without a legal personality it seems to be difficult to set up a Court in London. Further comments superfluous.

        Independently of this, there are other problems:

        – According to Art 5 UPCA, the contractual liability of the Court shall be governed by the law applicable to the contract in question in accordance with Regulation (EC) No. 593/20081 (Rome I). As this is an EU regulation, how can a non-EU member state endorse such a liability?

        – According to Art 22 UPCA, “The Contracting Member States are jointly and severally liable for damage resulting from an infringement of Union law by the Court of Appeal”. How can a non-EU member state be jointly and severally liable?

        Those are little problems with respect to those created by Art 20 UPCA, according to which there is “Primacy of and respect for Union law”, as well as Art 21 UPCA on preliminary rulings by the CJEU, which is only open to national courts of EU member states. But this is nothing new.

        I can only repeat the end of my first reply: it is high time to ask the CJEU for its opinion on these matters. If the UPC starts with such pending questions, how can it be advised not to opt-out?

        Techrigts: FINGERS OFF!!!

  2. Alan, you write: the UK wanted to be in the UPC, and the other contracting states wanted the UK to be in the UPC, so how could this ever have been a negotiating card?

    I baulk at that little word “so”. The way I see it, Davis and Barnier, and their respective Sherpas, are engaged in a PR battle about which of the two sides is the more reasonable.

    For the UK, UPC ratification is a cost-free bonus point. Handy extra leverage, just when needed. We really are top Europeans you see. No problem with “Europe” just with “the EU”.

    Cost-free? How’s that then? HMG (David Davis) can ponce around, magical thinking, asserting what “good Europeans” the Conservative Party is. Cost-free because when it comes to patent law the swivel-eyed Tory BREXIT faction-ers haven’t a clue what’s going on, their voting “base” doesn’t give a toss about the UPC, and so they stay silent instead of calling out May’s Cabinet as traitors and red line breakers.

    Time will tell. Meanwhile, not the UK but Germany gets all the negative publicity and critical comment. Good result for the BREXIT-ers, I would think. Negotiating card? You bet.

  3. I hope the German Supreme court considers accelerating the matter in light of these great news from UK.

  4. Since the existing UPC proposal would be affected by Brexit, surely: negotiation remains; there is no change; and when and in what form the UPC comes into force remains an open question?

  5. Question: if the UK somehow (magically) manages to stay in the UPC post-Brexit, what are we to make of Articles 5(3) and 7(1) of Regulation 1257/2012?

    “The acts against which the patent provides protection referred to in paragraph 1 and the applicable limitations shall be those defined by the law applied to European patents with unitary effect in the PARTICIPATING MEMBER STATE whose national law is applicable to the European patent with unitary effect as an object of property in accordance with Article 7.”

    “A European patent with unitary effect as an object of property shall be treated in its entirety and in all the participating Member States as a national patent of THE PARTICIPATING MEMBER STATE in which that patent has unitary effect and in which, according to the European Patent Register:
    (a) the applicant had his residence or principal place of business on the date of filing of the application for the European patent; or
    (b) where point (a) does not apply, the applicant had a place of business on the date of filing of the application for the European patent.”

    Of course, after Brexit, the UK will no longer be an EU (Participating) Member State – and so will become irrelevant for the purposes of Articles 5(3) and 7(1). Thus, it seems that the UPC will NEVER apply UK national law to “unitary” patents.

    This could be bad news for those wishing to conduct clinical trials in the UK, as it will make it impossible to argue that the UK’s (extremely broad) “Bolar” exemption represents a defence against infringement of a “unitary” patent … even if the alleged infringement takes place in the UK and the patent proprietor has their (principal) place of business in the UK.

    So, all of the legal effort expended to make the UK a go-to destination for conducting clinical trials will have essentially been rendered pointless. Not quite the “taking back control” of our laws that the Brexiteers had in mind, I’m sure!

    1. Either Regulation 1257/2012 will be amended as part of the Brexit negotiations to allow unitary patents to have effect in the UK, in which case that reference will point to UK law, or they will become EP(UK)s, also subject to UK law. Either way, this is not an issue.

      1. EME – I think you need a reality check.

        How easy do you think it will be to persuade the EU27 to amend Regulation 1257/2012 when, if you believe Gordon & Pascoe, it is not strictly necessary to do so in order to allow the UK to continue to participate in the UPC?

        Also, have you seen the EU27 even CONTEMPLATE extending the effects of a “unitary” right (eg a Communty TM or Registered Design) to the UK? There are no provisions in the draft withdrawal agreement with the UK that purport to achieve this kind of objective, so why would the EU27 take a different approach with “unitary” patents?

        I did not address the issue of not opted out EP validations in my earlier post. However, the likelihood there is that the UPC will apply the law of infringement as set out in the UPC Agreement… which is also NOT UK law. Thus, for example, the “Bolar” provision that the UPC will likely apply to the UK validation of an EP that has been afforded unitary effect in the other Participating Member States is that in Article 27(d) UPCA (and NOT that in Section 60(6D) to (6G) of the UK Patents Act).

        I reiterate: this does not really look like the UK “taking back control” of its laws, does it?

        1. You are arguing on the basis that the letter of the UPC Agreement and/or the Regulation will remain unamended, which I don’t think anyone is considering as an option. That may be your reality check. If there is no change to the law, it will be because the UK is not staying in the system (in fact, even in that scenario key provisions of the UPC Agreement will need amending, e.g. location of the London section). Whether the UK stays in or not is purely a political decision that will not be affected by the current wording of the relevant texts, changes to those texts will follow as appropriate. I really don’t care for the whole “taking back control” thing, I’m talking about practicalities here.

          1. Well, yes, my arguments are indeed based upon current reality (ie the present versions of the UPC Agreement and Regulation 1257/2012) and not upon any assumption that wished-for amendments will be made.

            With regard to amendments that would allow the UK to stay in the “unitary” patent (or perhaps even allow the UPC to select UK national law as the law of infringement), can you see any signs that the Commission is preparing a revised version of Regulation 1257/2012? Also, would that even be possible at this stage without a simultaneous amendment to the UPC Agreement (which includes numerous, explicit references to the current Regulation, ie NOT any successor to that Regulation)?

            And then there is the challenge of amending the UPC Agreement itself. Under which provision do you believe that the Agreement would be amended? Presumably this would be the only show in town, namely Article 87(2) UPCA. If so, then it is important to be realistic about what else needs to happen for amendments to be made under that provision.

            Reliance upon Art 87(2) UPCA presumes that there is “an international treaty relating to patents or Union law”. Now this requirement MIGHT be satisfied by the UK’s withdrawal agreement with the EU. But is that likely, given that (by Gordon and Pascoe’s own admission) that agreement would need to also contain provisions that PERMANENTLY subject the UK to the supremacy of EU law, and to the jurisdiction of the CJEU, in the (not so few!) areas of EU law upon which the UPC’s judgements might be based?

            Remember that, amongst other things, the agreement with the EU would need to ensure that the UK automatically adopted any new laws that the EU may at any point decide to create and that relate to patents and SPCs either directly (eg by way of “Bolar” provisions, the Biotech Directive and SPC Regulations) or indirectly (eg competition law, the European Charter of Fundamental Rights, the entire pharmaceutical acquis communautaire, etc.). That sounds like political dynamite in the current climate, ie an undeniable instance of the UK being turned into a vassal state. It would therefore be foolish to assume that the necessary agreement with the EU (and hence also the necessary amendments to the UPCA) will come to pass.

            In the light of the above, I think that it is perfectly reasonable to still be sceptical about whether the UPC (in its current form) will see the light of day. Whilst it is not (yet) implausible that this will happen, let’s at least be realistic and acknowledge that it is still rather unlikely in the light of the practical and political hurdles to establishing a UPC that is workable.

  6. I have noticed that the UK ratification of the UPC Agreement has a reservation that Article 4 (giving Court legal personality) shall not apply in the provisional period:
    It seems to have been a reservation made when the Protocol on Provisional Application was signed by UK, but I don’t remember any comment at the time and I had not noticed this before.
    Any idea what is the reason for this reservation? It seems to be difficult to set up a Court in London if it does not have legal personality there…

    1. Agree. Here is what the Preparatory Committee wrote about the provisional period on its website:

      „Once the Protocol enters into force the organisation as such will therefore be created and acquire legal personality. The Administrative Committee, the Budget Committee and the Advisory Committee will be established at the start of provisional application and will then take over the responsibility of the preparations from the Preparatory Committee.

      During the provisional application phase the organisation will be able to conclude necessary agreements with third parties and formalise all the preparatory work done by the Preparatory Committee. One hugely important area that cannot be conducted before the provisional application phase is the completion of the recruitment of the judges. Once the judges are appointed the two Presidents can be elected, the Presidium can be set up and the Registrar and the Deputy Registrar can be appointed.

      The Preparatory Committee has assessed that the provisional application phase needs to be a period of between six to eight months in order to have time to put everything in place and prepare for the Court to be operational.“

      Given that the preparatory process will need 6-8 months (which IMHO is quite an optimistic estimate) and given that the German ratification will not completed before end of May, even in the most favorable circumstances for friends of the UPC, we are looking at an earliest possible
      starting date of the UPC in early 2019. Given that no one knows what will happen to the UPCA after March 29, 2019, it would be madness, from Germany‘s perspective as I see it, to trigger the launch of the system before clarity has been reached about what happens after Brexit date.

    2. Yes, that is odd. Perhaps that reservation will be withdrawn if and when negotiations with the EU reach a satisfactory point for the UK. I cannot think of any good reason why the UK would NOT want to have provisional application of Art. 4 UPCA. However, if there is a perfectly innocent explanation, then perhaps someone from the IPO might care to enlighten us…

  7. There’s are a lot of points raised above so I’ll only put in my two cents to three of them:

    1.On enforcement of UPC decisions in the UK

    The effective amended version of the UK patents act 1977 has new schedule A4 including

    4.(1)For the purposes of enforcement of a decision or order of the Unified Patent Court—
    (a)the decision or order has the same force and effect,

    as if the decision or order had originally been made by the enforcing court.
    (2)The enforcing court, …, may enforce a mediation settlement in the same manner as a judgment or order of the enforcing court.

    (3)In this paragraph—

    “enforcing court” means—
    (a)as respects England and Wales, the High Court,……”

    2.Regarding this statement “Firstly, it is common ground that the UK cannot stay in the UPC if it is truly a “Court Common to the [EU] Member States”.” -I don’t know who this is common ground for. I can’t see any reason why a court can not be common to EU member states and also common to a non-member state.

    3. Regarding Regulation 1257/2012- that will presumably no longer apply to the UK post-Brexit (once the UK moves beyond any transitional periods) and the regulation does not need to apply for the UK to stay in the UPC. Italy was originally set to be in the UPC but not the Unitary Patent. If the UK was to stay in a form of the Unitary Patent as well as stay in the UPC, it would seemingly be enforced through a new special agreement under Art 142 EPC not Regulation 1257/2012

    1. Russell,

      (1) You are quite correct about Schedule A4 – that would seem to take care of at least some of the enforcement issues within the UK. However, it does not deal with the broader issues addressed by Regulation 542/2014. It would seem that some form of agreement between the UK and the EU27 is necessary to plug the gap there.

      (2) Regarding the point about whether the UPC is a “Court Common to the [EU] Member States”, I suggest that you take a look (again) at CJEU Opinion 1/09. The EPLA adopted the model that you mention (ie a court common to both EU and non-EU states) but was found not to comply with EU law.

      The Gordon & Pascoe opinion tries hard to “finesse” this point by arguing that this does not mean what everyone thought at the time (ie that any court tasked with interpreting and applying EU law really ought to be an “EU court”, at least in the sense of being a “Court Common to the EU Member States”). However, to make any headway with this argument, Gordon & Pascoe had no choice but to nail their colours to the mast of the UPC being an “International Court” and NOT an “EU Court” in any sense.

      Oh, and by the way: if Gordon & Pascoe are correct in asserting that the UPC is an International Court, then the UPC is effectively dead. This is because there will be no legal basis for the Court of Justice of the EU to accept preliminary references from that court… for the very reason that it is NOT a court or tribunal of an EU Member State.

      (3) What is your point about Regulation 1257/2012? Sure it won’t apply (directly) to the UK post-Brexit, but that is irrelevant to the point that I was making: namely that the departure of the UK from the EU means that THE UPC, when applying Regulation 1257/2012, will NEVER be able to select UK national law as the law of infringement.

  8. I am glad that the discussion now focuses on fundamental points: is the UPC an international court, comprising EU members and non EU members or is it a court embedded directly or indirectly in Union law reserved to EU member states.

    By the way, I take bets that “Schedule A4” was decided before Brexit, so this argument is not too persuasive.

    That the UPC and the Benelux court have been put on a par in Regulation 542/2014 was due to the fact that both accepted the supremacy of union law.

    After Brexit, there will be a difference between the Benelux court and the UPC. The Benelux court will remain active exclusively within member states of the EU, and will still accept the supremacy of Union law, but the UK intends not to do so.

    If UK nevertheless would accept supremacy of Union law, even in such a small area as patents, what is then the Brexit good for? It was primarily conceived to regain legal autonomy and not to be submitted any further to Union law. This is politically hardly sustainable, and the sooner that all proponents of the post Brexit stay of UK stop dreaming, the better it will be.

    According to an interview given by Alan Johnson to IAM*, “the limited CJEU influence is a small price to pay for an overall better international system.” This means for me that he even acknowledges that a court not accepting the supremacy of Union law will not be viable. And here we come to C 1/09.

    Opinion C 1/09 has made it very clear: without supremacy of Union law, no common litigation system. Keeping the UK, and even accepting other non EU members in the UPC, goes against the declared will expressed in C 1/09. After C 1/09 EPLA was dead, and it appears pointless to attempt any revival of it.

    It seems pretty useless to try to “finesse” with that aspect of the opinion. The UPC might be an international court, but with a non-EU member it will not be a court embedded in Union law, and will not prima facie accept supremacy of EU law.

    Regulation 1257/2012 will presumably no longer apply to the UK post-Brexit. Wishing to renegotiate this point within the Brexit discussions seems quite illusory, as in the actual negotiation round only what was part of the first round will be part of the second one.

    In my opinion, it appears wishful thinking to expect that Art 142 will be accepted by the member states common to the EU and the EPC, as a basis for renegotiating enforcement, just to please a state leaving the EU.

    It is only if all the hurdles mentioned in the above comments are overcome that it will be possible to envisage a future for the UPC, with or without the UK. And all those hurdles should be settled and clarified before March 29th 2019, should the UK remain in the UPC? Difficult to see.

    I can therefore only approve Thorsten Bausch when for him “it would be madness, from Germany‘s perspective [as I see it], to trigger the launch of the system before clarity has been reached about what happens after Brexit date.

    When according the same interview given by Alan Johnson to IAM*, he is “just counting down the days until [he will] get [his] blue passport!”, he should as well count the days until the participation of the UK in the UPC is dead, should it not accept supremacy of Union law. And nothing looks as UK wants to go along this way. You cannot have your cake and eat it, whether there is a will or not!


    Techrights: FINGERS OFF!!!

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