Following the announcement of the UK’s intention to ratify the Unified Patent Court Agreement, the IP Federation (which represents the views of UK industry in IP matters) has published its response here. IP Federation recognises the potential benefits of the unitary patent and UPC system for industry and also of London hosting part of the Court’s central division. However, it also recognises that there is uncertainty over what will happen upon Brexit, because membership of the EU may (on one view) be essential to UPC membership, and because of the absence of any exit provisions in the UPCA. It therefore calls upon the UK and other contracting states “to work together urgently to enable the UK to stay in the system after Brexit and to prepare transitional provisions in case this is not possible”.
The issue of whether the UK can remain a part of the UPC system post-Brexit was addressed in the opinion obtained (by IP Federation and others including Bristows) from Richard Gordon QC and Tom Pascoe (here). This opinion suggests that the UK can remain a part of the UPC system provided that certain steps are taken, notably that there should be an agreement involving the EU to give the UPC jurisdiction to refer matters to the CJEU in appropriate cases. This advice has been understood by some commentators as being based on the physical presence of parts of the UPC in London, who have rightly pointed out that the physical location of a division of the UPC makes no difference to its power to make references. However, the issue identified by Gordon / Pascoe is that the UPC’s ability to refer matters to the CJEU is based upon Article 267 TFEU. This gives a power to national courts of EU states to refer matters to the CJEU (and a power to the CJEU to receive such references). As a court common to participating EU member states, the UPC may still be regarded as a court of EU states, whereas once the UK leaves the EU, it is thereafter a court of a mix of EU and non-EU states. The question then arises whether this change in the nature of the UPC precludes any division of the UPC from making references (and precludes the CJEU from receiving them)? If so, a legal basis is required for the making and receiving of references. These are complex EU constitutional issues and IP Federation is right to call for urgent work to begin to address them.