Monday, January 30, 2017 New minister for Intellectual Property on Unified patent court

There is a new minister for Intellectual Property in the UK, Jo Johnson. 

The previous minister, Baroness Neville Rolfe, made some promising statements about  the UK's intentions to ratify the agreement on a unified patent court (UPC). She said on the one hand that  the UK government is proceeding with preparations to ratify the Unified Patent Court Agreement, but on the other hand that "(...) the decision to proceed with ratification should not be seen as pre-empting the UK’s objectives or position in the forthcoming negotiations with the EU".

New minister Jo Johnson has confirmed these sentiments and strikes perhaps a slightly more positive note. In a a House of Commons Science and Technology Committee session on 11-Jan-2017, he said "We have taken a decision to proceed with preparations to ratify the UPC Agreement. We believe it is important that we participate in this framework. It has value to UK inventors and businesses and we want to be there at its creation.” He declined to answer how the Brexit might influence this decision though: “These are questions that will form part of the greater discussion of the Brexit negotiations.” (Quotes copied from IP Pro Patents.) 

About a week later, Mr. Johnson submitted an explanatory memorandum to Parliament. The document is an interesting read and stresses the benefits of the unitary patent system. One section to note (section 3.) is the following:

The UPCA establishes a specialised, non-EU patent court under international law with jurisdiction for disputes relating to European patents in 25 European countries. The Agreement is between 25 EU countries (not Spain, Croatia or Poland), the EU is not a signatory, and establishes a court common to the 25 participating countries as an international Organisation with legal personality in each. The UPC is part of the judicial systems of the participating countries in so far as it has jurisdiction over patents valid in their territories. However, the UPC forms a separate jurisdiction to the national court systems and it will not be part of the UK Court system.

This is true, as far as it goes. The unified patent court indeed is not an EU institution. However, it is also the case that the unified patent agreement repeatedly refers to EU law and the EU court of justice. If and how the UK can stay in the UPC after a Brexit is a current debate, and perhaps these are the questions that are part of the greater discussion of the Brexit negotiations that Mr. Johnson ment.

Photo by Myriams-Fotos via Pixabay, under a Creative Commons CC0 license. No changes were made.

Thursday, August 04, 2016 UK Intellectual Property Office makes statement on UPC: no immediate changes

The intellectual property office of the UK has made a brief statement on the unitary patent after the Brexit. According to IPO:

The UK remains a Contracting Member State of the Unified Patent Court at present. We will continue to attend and participate in UPC meetings in that capacity. There will be no immediate changes.

This is the full statement regarding the unitary patent. I can imagine what those UPC meetings will be about, as the unitary patent's future is really murky right now. Different options are on the table, but all of them have downsides. Could the UK live with a UPC agreement that is full of references to EU law? Could the EU live with a UPC member that is not an EU member? There are many more questions than answers.

The statement also mentions other IE rights. If the IE right is not based on EU law, there is no problem (EPC, Madrid system), but what should happen to EU trademarks, and EU designs?


Photo by Couleur via Pixabay under a CC0 license (no changes made).

Friday, July 15, 2016 Ratification news: Bulgaria fully ratified, Netherlands moves forward

An EU flag waving in front of a Bulgarian courthouse

With all the commotion surrounding the brexit we neglected news of the countries that made progress towards ratification. First of all, Bulgaria has deposited its instrument of ratification and is the tenth state to do so.

In the Netherlands the parliament has accepted the Agreement on a unified patent court. The Netherlands can now proceed to deposit their instrument of ratification. They have not done so yet.

When the Netherlands completes this final part of their ratification they will be the 11th country. At that point an important milestone will be reached. Only the required countries Germany and the United Kingdom are then sufficient to reach 13 countries and make the unitary patent a reality. 

Nevertheless, all eyes are on the United Kingdom. Will they continue to ratify the Agreement even though they voted to leave the EU? I have not yet heard of any positive indication, that the United Kingdom is continuing  their ratification process. Feel free to mail me any news about it.

Photo by Wengen via Pixabay under a CC0 license (no changes made) 

Wednesday, June 29, 2016 Brexit? What brexit?

The UK should ratify the agreement on a unified patent court, get the unitary patent started and continue to be a member even after the Brexit is formalized.

This is the position taken by Willem Hoyng (member of the drafting committee of the UPC Rules of Proceedings and well known litigator) over at EPLAW.

This means the unitary patent system should soon come into effect as if no Brexit ever happened. London would keep its court, the EU would have its unitary patents, and everybody would be happy. Unitary patents would not necessarily be valid in the UK, but even this might be arranged with a separate international “Extension Agreement”.

According to Hoyng this is possible because the agreement on a unified patent court is an international treaty not an EU regulation, just like the  European Patent Convention. Although, the
agreement does not allow the participation of non-EU Member States, it is not required to leave the unified patent court should a country become a non-Member State.

Among the respondents at EPLAW is Leo Steenbeek (Principal IP Counsel of Philips), and he does not agree. Apart from the question whether it would make sense for country to engage in further international cooperation when it wishes to retreat from EU, there is also a question if the Court of Justice would allow this.

The position of the UK would be a bit like the one originally envisioned for Italy, part of the UPC but not (yet) of the unitary patent. If Hoyng says it's possible I'm willing to listen, but some confirmation on the legality of all this would be good. For example, an opinion of the Court of Justice on this would give the legal certainty needed for this venture. Moreover, whether there is the political will to make this happen? I'm not so sure. 

In any case, whether or not the UK can stay in after the Brexit, in any scenario it would be best if the UK would continue to ratify the agreement without delay. At least this would allow a unitary patent without the UK, and who knows, perhaps a bit more.

Photo by skeeze via Pixabay under a CC0 license (no changes made).

Wednesday, March 09, 2016 UK passes legislation for unitary patent, no ratification yet

A good month after publishing the draft legislation to amend the UK Patents Act, the UK parliament has now passed it (House of Commons on 1 March and the House of Lords on 2 March). Amending the Patent Act was necessary to adopt the unitary patent.

During the debate, Mr. Edward Vaizey (The Minister for Culture and the Digital Economy) notes that "We think that the new court and patent will be ready for business in early 2017." Indeed, the mandatory three participants have now ratified the agreement or are about to.  Two more ratifying countries are needed after Germany and the UK ratified, but this will likely not be a problem.

We are still waiting for the UK to formally ratify the Agreement on a Unified patent court. Will this happen before or after the EU referendum of 23 June? I suppose passing this legislation means that the UK government could ratify the agreement if they wanted to. I'm not sure that this is going to happen though. It may mean a hasty retreat if the referendum goes sour, after just a few months in the new system. For the UK it may be preferable to avoid this. On the other hand, even outside the EU, it is preferable for UK to have an easier option to obtain a patent in the continent. So who know what will happen.

Photo "'Belinda' Flying the Flag", by Peter Trimming via Flickr under a CC BY 2.0 license.

Tuesday, September 01, 2015 Location selected for London branch of Unified Patent Court

Aldgate Tower, the new location of the London part of the Unified Patent Court

The Intellectual Property Office (IPO) of the UK reports that they have selected a location for the London section of the Unified Patent Court. The new court will be located in Aldgate Tower in London. 

At a recent unitary patent conference the UK informed that they would complete ratification of the unified patent court agreement by spring 2016. I interpret this announcement of a location as a confirmation that indeed the preparations for the unified patent court are continuing in the UK. There has been uncertainty on the UK's position on the unitary patent because of its current ambivalence towards the EU.  However, at present there seems to be no indication that the preparations of the UK for the unitary patent are anything different than planned.

The unified patent court has a rather complicated structure. In addition to local and regional divisions, the unified patent court will also have a central division. The central division of the Unified Patent Court will have its seat in Paris, with sections in London and Munich. The local division of UK will also be located in Aldgate Tower.

The central division will have sole jurisdiction for a number of actions. For example, direct actions for revocation of a patent shall be brought before the central division. The cases are divided over the three sections of the central division based on the subject matter of the case. For London these are Chemistry, metallurgy and Human necessities.

IPO Minister, Baroness Neville-Rolfe said today:

"The signing of this lease represents a milestone in the UK’s preparations for the introduction of the Unified Patent Court. Aldgate Tower, with its superb central location, will provide an ideal home for a modern court to support the UK’s and Europe’s leading edge innovative companies. This will further strengthen UK’s legal and professional services sector, and reinforce London’s status as a world leading centre for dispute resolution."

Photo "Aldgate Tower - London" by Jim Linwood obtained via Flickr under a CC-By license. The photo has been cropped.