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Brexit and the UPC – Jan 2019 update

As the UK is scheduled to leave the European Union at 11pm UK time on Friday, 29 March 2019 (“Brexit”), we take a quick look at where we are with regards to Brexit and the Unitary Patent System.

First and foremost, we know that there will be no impact of Brexit on UK membership of the European Patent Organisation.   As recently as the 24 January 2019, President Battistelli said:

“Meeting [today] with CIPA (UK Chartered Institute of Patent Attorneys) gave us an opportunity to restate that Brexit will have no impact on UK membership of the EPO. For a very simple reason – the EPO is not an EU agency but an independent international organisation, of which the UK is a founding member”.

As well as having an established EU (Dublin, Ireland) presence, TLIP is poised to advise clients about pan-European patent protection strategy once the UPC system comes into place. Alex Turnbull, Paul Lynch, Anna Bartholomew, Simon Fortt and Lisa Brown are all European Patent Attorneys with the appropriate current qualifications to be awarded a European Patent Litigation Certificate.  This certificate is the qualification that certain attorneys can obtain in order to have the same rights to conduct litigation at the Unified Patent Court (UPC) as a legal practitioner.

The following discussion relates to a new patent system, the Unitary Patent System, which will run in parallel to the current European Patent System. The current system is unaffected by Brexit, and traditional European patents will still be granted in the UK after Brexit, whatever form Brexit may take. The Unified Patent Court (UPC) will provide one court to enforce and revoke patents across participating European Union. Unitary Patents will be granted by the European Patent Office, covering these states.

The UPC is presently on hold due a German constitutional challenge against its ratification of the Agreement. German (along with French and British) ratification is required for the Unitary Patent system to go ahead. Germany will not ratify the agreement until this challenge is dealt with.  France and the UK has ratified the Agreement already.

The Preparatory Committee of the UPC released a brief end of year news summary entitled “Status of Unified Patent Court Project” in December 2018. This noted that 2 further states (Latvia and the UK) ratified the Unified Patent Court Agreement in 2018, bringing the total to 16 ratifications (well over the number required). However, they are awaiting the outcome of the complaint pending before the Constitutional Court in Germany

The press release notes that the technical and operational preparations are continuing, allowing for the project to “move at pace”. We are sure the Preparatory Committee will be following Brexit closely, as London is due to host one of the themed Courts, or Central Divisions. This Court will focus on chemistry and life sciences cases, including pharmaceuticals. If the UK is unable to become part of the Unitary Patent System after Brexit, it remains to be seen if the Court will be opened there, or be re-located somewhere else. The Italian Foreign Ministry have indicated they believe Milan should replace London, as the host city.

It has been reported that the German Parliament has been granted an extension for submissions to the Connotational Court about the challenge until 31 January 2018. The Constitutional Court is expected to start working on a decision on the admissibility of the complaint after that date, with a conclusion likely due in the first half of 2019. As such, the UPC could open for business in 2019, after an expected few months of preparation.

Whilst the Unitary Patent System has been set up and coordinated for member states of the European Union, and is governed by two EU regulations (Regulations (EU) Nos 1257/2012 and 1260/2012), as we note above Unitary Patents are going to be administered by the European Patent Office, and not the EU. Thus, it is theoretically possible the UK will still be able to participate in the Unitary Patent system after Brexit.

We previously reported that the UK Government, back in their July 2018 white papers, indicated that it is the UK Government’s intention to at least explore being a part of the Unitary Patent system & Unified Patent Court post-Brexit. This reaffirmed their ratification of the UPC agreement on World IP Day 2018. UK Government guidance released in August 2018 about the proposed post-Brexit implementation/transition period indicated that it has been agreed with the EU that the UK will still be able to participate in the UPC during this transition period. The assumption is that the EU and UK Government will then come to an agreement that allows this to continue after the transition period.

However, there is much talk in UK politics about a so called “No Deal” Brexit. Guidance released by the UK Government about the effect of this on patents finds:

If the Unified Patent Court comes into force and the UK needs to withdraw from both the Unified Patent Court and unitary patent, businesses will no longer be able to use the Unified Patent Court and unitary patent to protect their inventions within the UK. Existing unitary patents will give rise to equivalent UK patent protection to ensure continued protection in the UK.

Although the guidance does not indicate that we will have to withdraw from the UPC, it seems it may be a possibility. What effect this will have on the UPC London Court remains to be seen.

In summary, presently both the German constitutional challenge and Brexit present challenges to the introduction of the Unitary Patent System/Court. We will be monitoring both closely and will report on developments. It is not presently known which is coming first, Brexit or the UPC opening, especially given the discussion in UK politics about an extension to the Article 50 withdrawal date (currently March 29th 2019).

Please get in touch to Alex Turnbull on mail@tlip.co.uk for further information.