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What can be salvaged from the upc agreement

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My contribution to a discussion on the Implications of Brexit on Intellectual Property Law at Queen Mary University of London on Monday 12 Feb 2018. A "unitary patent" would have been a single European patent for the territories of some but not all of the EU member states and the Unified Patent Court would have been a single patent court for all the participating countries with jurisdiction to determine disputes over unitary patents and all other European patents, As a result of Brexit and litigation in the German Constitutional Court it is unlikely ever to come into being.

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What can be salvaged from the upc agreement

  1. 1. Implications of Brexit on Intellectual Property Law: What can be salvaged from the UPC Agreement? Jane Lambert Barrister
  2. 2. The European Patent Convention ● European Patent Convention (“EPC”) is a “special agreement for the protection of intellectual property within the meaning of art 19 of the Paris Convention. ● It is not an EU treaty although all EU member states are party to the EPC. ● EPC establishes a patent office known as “the European Patent Office” (“EPO”) which examines application for, and grants, patents known as “European patents” on behalf of the governments of contracting parties. ● European patents are treated for all intents and purposes as though they had been issued by national patent offices and they are enforced by national courts in accordance with national law.
  3. 3. The Unified Patent Agreement ● Since 1949 there have been many at least 7 attempts to establish a Pan- European patent within the framework of the Council of Europe, the EPC, EEC and EU. ● The latest initiative is the Agreement for a Unified Patent Court (“UPC”) to settle disputes relating to European patents and European patents with unitary effect (“unitary patents”) of 19 Feb 2013 (“the UPC Agreement”). ● Regulation (EU) No 1257/2012 provides for unitary patents.
  4. 4. British Interest in a Pan-European Patent ● HMG has supported every initiative for a Pan-European patent since it joined the EEC in 1973. ● According to TaylorWessing’s Patent Map, London remains the most expensive forum for patent litigation in Europe despite the Intellectual Property Enterprise Court (“IPEC”) and cost management reforms: £900,000 to £1 million in England compared to €200,000 to €800,000 for France, €100,000 to €200,000 for infringement and a similar range for validity in Germany and as little as €5,000 to €15,000 in Lithuania. ● Hargreaves estimated the duplication of litigation costs alone as somewhere between €120 million and €240 million a year,
  5. 5. Ratification of UPC Agreement ● Art 89 (1) of the UPC Agreement provides that the instrument comes into force 4 months after it has been ratified by 13 EU member states including France, Germany and the UK. ● So far, 15 EU member states including France have ratified the UPC Agreement but not the UK and Germany. ● On 28 Nov 2016 Lady Neville-Rolfe, minister with responsibility for IP, indicated that HMG would ratify the UPC Agreement notwithstanding our withdrawal for EU.
  6. 6. Ratification of UPC Agreement ● On 11 Jan 2017, her successor Jo Johnson MP told the Commons Science and Technology Committee that he regarded the UPC as an international agreement and our continued participation after Brexit as a matter for negotiation. ● The Privy Council has approved the UPC Privileges and Immunities Order. ● Draft statutory instruments for the ratification of the UPC Agreement are ready to be laid before Parliament. ● The upper and lower houses of the German parliament have passed legislation ratifying the Agreement. ● Presidential assent has been withheld pending litigation in the German Constitutional Court over a challenge to ratification of the Agreement.
  7. 7. Ratification of UPC Agreement ● As art 50 (3) of the Treaty of European Union provide that the Treaties will cease to apply 2 years after the notification of withdrawal, it is possible that the UK will leave the EU before the German litigation is resolved. ● Even if the litigation is resolved and Germany ratifies the UPC before 29 March 2019, the UK will cease to be a member state on that day even if it accepts a transitional arrangement by which EU law continues to apply to the UK until 31 Dec 2020.
  8. 8. Questions on the Future of the EU ● Can the UK continue to participate in the UPC and host part of the Central Division of the Court of First Instance during an implementation period and afterwards? ● Will the remaining EU member states have sufficient incentive to revise the UPC Agreement to allow it to continue after the UK’s withdrawal?
  9. 9. Can the UK continue to participate in the EU? ● Art 84 (1) UPC Agreement makes clear that the instrument is open for signature only to EU member states ● The Agreement makes no provision for the withdrawal of a contracting party from the EU. ● Richard Gordon QC and Tom Pascoe advised in Sept 2016 that it was theoretically possible to draw up a supplemental agreement to allow continued British participation but that might be struck down by CJEU. ● The European Patent Litigation Agreement was abandoned because it was regarded as incompatible with EU law.
  10. 10. Can the UK continue to participate in the EU? ● Art 20 UPC Agreement provides: “The Court shall apply Union law in its entirety and shall respect its primacy.” ● Regulation (EU) No 1257/2012 will cease to apply to the UK after 31 Dec 2020 at the very latest. ● Draft provisions of the withdrawal agreement relating to the proposed transitional agreement will exclude provisions on enhanced cooperation from the laws that will apply to the UK after its departure.
  11. 11. Will the EU 27 renegotiate the UPC Agreement? ● Businesses outside the EU including those in the UK would benefit from a unitary patent and Unified Patent Court even if the UK has no part in it. ● There is less incentive for the remaining states to adopt a unitary patent or UPC as the costs of litigation in their countries are much lower than in the UK. ● Spain and Italy challenged the UPC Agreement in the CJEU because of language objections and such objections could resurface particularly if Milan replaces London as the host for the Central Division. ● Remaining EU member states have priorities other than Brexit.
  12. 12. Further Information ● LinkedIn https://www.linkedin.com/in/nipclaw/ ● Facebook https://www.facebook.com/jane.lambert.587 ● Twitter @nipclaw ● NIPC Law blog http://nipclaw.blogspot.co.uk/ ● NIPC Brexit blog http://nipcexit.blogspot.co.uk/
  13. 13. Any Questions 4-5 Gray’s Inn Square London WC1R 5AH T 020 7404 5252 E jlambert@4-5.co.uk www.4-5.co.uk

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