The European Union package includes two regulations, which would create a European Patent with unitary effect (“Unitary Patent” or “UP”) and a Unified Patent Court (“UPC”) Agreement (“UPCA”—a treaty) that would create a Unified Patent Court. The UP regulations specify that they would be effective on the same date as the UPCA on the first day of the fourth month after minimum ratification of the UPCA by 13 EU states including France, Germany and the United Kingdom. As discussed below, the sole remaining necessary ratification is that of Germany.
The UPCA failed to consider the need for an organizational phase before the UPC opens to receive cases. Therefore, a Protocol on the provisional application (“PPA”) of the UPC Agreement has been devised, which would permit some parts of the Agreement to be applied immediately after 13 states, including France, Germany and the UK, give notice that their Parliament has approved ratification of the Agreement. The PPA will permit organizational activities before the UPCA enters into full force and the court opens, including the recruitment of judges and staff, testing of IT systems and early registration of opt-out demands. As of May 24, 2018, Germany and two more stares must express their consent to be bound by the PPA before the Provisional Application Period (“PAP”) can begin
UPCA Ratification Status
The UPCA requires a minimum ratification by France, Germany and the United Kingdom, and at least 10 other signatory EU member states. France ratified in 2014. The minimum of ten “other states” was satisfied in 2016.
Although UK was on track to ratify in 2016, its ratification was delayed by the UK Referendum on June 23, 2016, in which 51.9% of those voting favored leaving the EU (“Brexit”). The UK, however, repeatedly said it wants to participate in the UPC. On April 26, 2018, the UK deposited its ratification on April 26, 2018, removing fears that a failure to ratify by the UK would require renegotiation of the UPCA.
It always was intended that Germany would be the last required state to deposit its instrument of ratification, in order to control the Court’s opening date. Everything was going smoothly in Germany. UPCA ratification and the PPA had been approved by the German Parliament. Then, in April 2017, an individual filed a complaint with the German Constitutional Court, challenging German ratification and participation in the UPC on several grounds of German and EU law. Such individual challenges are common in Germany, although very few such complaints move past a preliminary review for admissibility of the complaint. Nevertheless, in June 2017, the German President halted the ratification process pending action by the Court. Responsive comments by the German government and organizations invited by the Court are currently due December 31, 2017. The Court has listed the case on its calendar for decision in 2018 on the question of whether or not the complaint is admissible.
The Possible Effects of Brexit
The UPCA specifies the UK as a required EU member state and places part of the Central Division of the UPC in London. Now that the UK has ratified the UPCA, it will be a member of the UPC if the UPCA comes into effect before the UK leaves the EU. If the UK leaves the EU before the UPCA is effective, it appears the UPCA would need to be revised.
Currently, the UK is scheduled to leave the EU on March 29, 2019; however, it appears likely that deadline will be extended and that at least the provisional application of the UPCA will come into effect while the UK is still an EU member.
An obvious question is whether the UK can remain a member of the UPC after leaving the EU. The prevailing opinions by UK and German experts indicate that the answer probably is “Yes.” Indeed, it appears that after the UPC is established in the provisional phase, any necessary amendments to the UPC Agreement can be made either by its Administrative Committee or by a protocol, which would be much easier and faster than adopting and ratifying an amendment of the Agreement by action of the member states.
The question of the UK’s continued participation in the Unitary Patent after Brexit is more complex, because the UP will be created by EU regulation. Therefore, any continued UK participation in the UP will have to addressed in the UK’s EU exit negotiations or later. In any event, because the UP will be the same as the UK part of a European Patent, practical solutions appear likely.