As we reported here, the Preparatory Committee announced that it is working under the assumption that the Provisional Application Phase of the UPC will start in May 2017 and that the Court itself will come into force/become operational in December 2017. Eleven countries (including France, but not the UK and Germany) have already ratified the UPC Agreement and a number of other countries are poised to do so. It is understood that Italy will ratify in the next few days and Lithuania and Slovenia now have the necessary approvals to despite their instruments of ratification with the Council of the European Union and will be doing so soon. It is hoped that 17 or 18 contracting member states will have ratified the UPC Agreement by the time that the Court comes into operation.
Progress is also being made to ratify the Protocol on Privileges and Immunities of the Unified Patent Court which is necessary to recognise the legal personality of the Court. On 23 January 2017, the Netherlands was the first contracting member state to deposit its instrument of ratification, and the UK is now making preparations to follow suit. Meanwhile, the Rules of Procedure of the Court, now in their 18th draft, are nearing completion.
UK prepares to ratify the Protocol on Privileges and Immunities
The UK has taken the next step required before ratifying of the UPC Agreement. The Protocol on Privileges and Immunities of the Unified Patent Court (copy here) was presented to Parliament by the Foreign Secretary, Boris Johnson, on 20 January 2017. It provides that the premises and the documents of the Court are inviolable and that the Court, the members of the Administrative, Budget and Advisory Committees, the Judges and the Registrar are immune from legal proceedings (although in relation to the Judges and the Registrar, art.8 of the UPC Statute states that this can be waived in certain circumstances). The Protocol will enter into force 30 days after the date on which the last of France, Germany, Luxemburg and the UK (being the countries where the Central Division and Court of Appeal are sited) deposit their instrument of ratification. Before this can be done in the UK, an affirmative order must be brought before Parliament which needs the formal approval of both houses of Parliament. Legislation is also required in Scotland because intellectual property is a matter which is reserved to the Scottish Parliament under the Scotland Act 1998. Ratification of the UPC Agreement could then take place as early as March or April 2017.
This comes at a time when Parliament is debating the short (137 word) Bill conferring power on the Prime Minister to trigger the UK's withdrawal from the EU by notifying the European Council under art.50 of the Treaty on European Union. Although there will be strong pressure on the UK to remain in the UPC Agreement after Brexit, the requirement for the Court (comprising, in the UK, the central and local divisions in London) to submit to EU law is difficult to harmonise with the Prime Minister's statement that Brexit will mean an end to the jurisdiction of the European Court of Justice in the UK. This will have to be explored in more detail, but for the time being, the Government is taking the line that the UPC Agreement is an international treaty, not an EU instrument, and the Court itself is an international tribunal and not a national court within the Union legal order.
News on the Court's rules
The 18th draft of the Court's Rules of Procedure was adopted by the Preparatory Committee in October 2015. The Preparatory Committee is due to meet again on 15 March 2017 to finalise the Rules. The Rules will then be formally adopted at the first meeting of the UPC's Administrative Committee, expected shortly after the commencement of the Provisional Application Phase.
While the majority of the Rules are now settled, a small number of changes are expected to be made to the 18th draft before they are finally adopted. Along with minor redrafting and corrections these changes are expected to include a requirement that those filing applications to opt patents out of the system certify that they are authorised by all the patent's proprietors to file the application. Those who are not registered as representatives with the UPC will further be required to upload a mandate from the patent proprietor(s) confirming they are authorised to file the application. Representatives will be able to register themselves with the UPC from the start of the sunrise period. As we reported here the sunrise period is currently expected to commence in September 2017.
The final Rules will also incorporate the agreement reached by the Preparatory Committee in February 2016 regarding Rules 370 and 371 which set out the Court's fees (copy here).