Establishment of the Unified Patent Court (UPC):

The UPC is established via an international agreement: the Agreement on a Unified Patent Court (UPCA), Council of Europe, 11 January 2013. This is an international agreement/treaty between 25 of the 28 Member States of the European Union setting up the Unified Patent Court. The UPCA has not been not signed by Spain, Poland, or Croatia.

The UK Government announced on 28 November 2016 at the EU Competitiveness Council meeting that the UK would ratify the UPCA despite the UK's plans to leave the EU (see the official UK Government announcement here and our commentary on the decision here). This was seen as a surprising move as it had been thought that the UK was unlikely to do so given the general view that non-EU members could not participate in the new UPC system. It now looks likely that the UK will ratify in March or April 2017, allowing the UPC to come into existence late 2017 once all the final arrangements are made and Germany has also ratified. Prior to this, an Opinion from Leading Counsel, commissioned jointly by the Intellectual Property Lawyers Association (IPLA), of which Herbert Smith Freehills is a member firm, and other IP representative groups, on specific questions concerning the impact of Brexit on the UK's participation in the UPC, had concluded that the UK was not absolutely barred from participating even if outside the EU but much would depend on whether the CJEU was prepared to allow this. See our commentary on this Opinion (and a link to the Opinion itself) here. This will continue to be relevant in the context of continued participation post-Brexit.

A Protocol on the Provisional Application of the Agreement on the Unified Patent Court (the Protocol) has been agreed which will allow the provisional application of the institutional, financial and administrative provisions of the UPCA and will enable the necessary legal and practical arrangements to be made in contemplation of the establishment of the UPC, including the appointment of judges. The EPO commented that the Protocol "should ensure that the Court is fully operational and ready to hear cases on the very day the Agreement formally enters into force by the contracting states".

However, for the Protocol to come into effect, 13 signatory states - which have signed the UPCA (and which must include France, UK and Germany) and have ratified the UPCA or informed the depositary that they have received parliamentary approval to ratify the UPCA - must have signed and ratified, accepted or approved the Protocol (in accordance with Article 2(2) of the Protocol) or declared by unilateral declaration or in any other manner that they consider themselves bound by the provisional application of the articles of the UPCA mentioned in Article 1 of the Protocol. These Articles cover, inter alia, the establishment of the UPC, the Registry, the Mediation and Arbitration Centre, the training and appointment of judges, and the provisions allowing for the UPC Statute and Rules, legal aid, remuneration of judges, the setting up of local or regional divisions, and the establishment of the pool of judges.

Now that the UK has signed the Protocol, along with the other 3 mandatory signatories, and there are more than 13 signatories in total, the Protocol is close to coming into effect. The Council of the EU has a page listing signatories to the Protocol. The UK will still need to pass legislation (via statutory instrument) to ratify the Protocol as will some other signatories.

For the UPCA to come into force:

  • the UPCA must be signed AND ratified by 13 Member States, including France, Germany and the UK;

AND

  • amendments to the Brussels I Regulation to accommodate the UPC must come into effect

Once these are in place, the UPCA will only come into force on the first day of the fourth month after both those criteria are met.

Summary of the current state of fulfilment of the criteria for the UPCA to come into force:

  • The Brussels I Regulation amendments have been made and these took effect from 10 January 2015
  • Signature and ratification of the UPCA:
    • Every EU Member State has signed the agreement except for Croatia, Poland and Spain, so there are sufficient signatories.
    • Summary of UPCA Ratifications (12 to date):
      1. Austria ratified on 6 August 2013
      2. France ratified on 14 March 2014
      3. Sweden ratified on 5 June 2014
      4. Belgium ratified on 6 June 2014
      5. Denmark ratified on 20 June 2014
      6. Malta ratified on 9 December 2014
      7. Luxembourg ratified on 22 May 2015
      8. Portugal ratified on 28 August 2015
      9. Finland ratified on 19 January 2016
      10. Bulgaria ratified on 3 June 2016
      11. Netherlands ratified on 14 September 2016
      12. Italy ratified on 10 February 2017

There now only needs to be ratification from the UK and Germany for the UPC regime to come into effect.To follow ratification see the table produced by the Council of Europe.

UK: The UK Government announced on 28 November 2016 that it would be ratifying the UPC Agreement (see here). General opinion is that the UK will ratify in March 2017.

The Intellectual Property Act 2014 provided for a new section 88A to be inserted into the Patents Act 1977 giving the Secretary of State power to make an order, giving effect to the UPCA. This will require a Statutory Instrument.

The UK Government has already announced that it has completed its consultation on the secondary legislation implementing the UPC and UP arrangements (see The Patents (European Patent with Unitary Effect and Unified Patent Court) Order 2016 – made on 12 March 2016 and which will come into force when the UPCA does).

Germany: The German Federal Minister of Justice published draft legislation on 16 February 2016 to implement the unitary patent in Germany and allow Germany to ratify the UPCA. Following consultation, draft bills are expected to be put before the German parliament shortly. It has been said that Germany will wait until August to ratify so that the UPC can commence on 1 December 2017 (so that the UPCA (and hence the UPC) can come into force on the first day of the fourth month after the final required ratification is made). Of course this is dependent on the UK ratifying in advance.

Estonia and Lithuania are making preparations to ratify, but have yet to lodge instruments of ratification.

Ireland has announced that it will have a referendum on whether to ratify the UPCA.

Sweden, Lithuania, Latvia and Estonia have concluded an agreement (see press release 4 March 2014) on a regional division of the UPC, although the last three have yet to ratify.

Sufficient ratification, therefore, is now solely dependent on the UK and Germany ratifying (since they are mandatory ratifiers and there sufficient other ratifying states have done so already). Despite the delay that was created by the uncertainty over the UK's participation following the result of its Brexit referendum, it seems likely that the new court system will be up and running in December 2017, provided there are no practical delays caused by IT systems or court facilities not being ready and the ratifications from Germany and the UK are made as anticipated.

Note: Countries which have not taken part in the enhanced cooperation procedure to establish the UP are Croatia and Spain; and which have not signed the UPCA are Spain, Croatia and Poland. Poland supported the enhanced procedure for the UP but has decided not to take part in the UPC and so UPs will not be valid/enforceable in Poland.