The ratification process

On 23 June 2021 the German Constitutional Court (Bundesverfassungsgericht) rejected the application for a preliminary injunction against ratification of the UPC Agreement. The grounds for the rejection made it clear that in the view of the Court the case on the merits has no merit. Germany then completed its ratification process. The ratification act was published on 12 August 2021.

On 27 September Germany deposited the ratification of the Protocol on Privileges and Immunities, which provides for the privileges and immunities of both the Court and its judges and staff. This protocol entered into force on 27 October, which is of course important for the appointment of judges.

On the same day Germany deposited its ratification of the Protocol on Provisional Application. When it enters into force the UPC will have legal personality in each Contracting Member State and the Preparatory Committee will be converted into the Administrative Committee. This is the Court’s highest governing body, consisting of representatives of the Contracting Member States. An important competence of this committee is the appointment of the UPC judges. In the meantime, an additional course on patent law for candidate judges has already been held. Slovenia notified the European Council that it is bound by the protocol on 15 October. Just one more ratification or notification is needed for the Protocol to enter into force, enabling the appointment of UPC judges and the finalization of the case management system, the IT system, the registries and everything else the Court needs to be operational. This is expected before the end of this year.

Germany will not yet deposit its ratification of the UPC Agreement, because the Agreement itself enters into force on the first day of the fourth month after that deposit, meaning that cases can be filed in Court as of that day. Therefore. Germany will do this just three months before the Court is really ready for business. On the day on which Germany deposits its ratification instrument the opt-out register will also go live, meaning that patentees will have three months to opt out patents from the UPC jurisdiction before the Court actually opens for business.

The EPO Select Committee

In the meantime there has been a meeting of the Select Committee on 14 October. This is the committee of the EPO Administrative Council that manages the Unitary Patent. The most important decision at that meeting was not to change the amounts of the renewal fees, despite the fact that the Unitary Patent no longer covers the UK. There will be an evaluation of those fees in a few years.

There will be an online filing tool for requests for unitary effect. The system will be ready in time. In its next meeting the Select Committee will discuss whether patent applicants can ask for a stay of prosecution for pending applications until the Unitary Patent Regulation enters into force (which will be on the same day as the UPC Agreement). This will enable unitary protection for currently pending applications, since that request needs to be filed within one month after grant of the European patent.

The Preparatory Committee

The Preparatory Committee met on 27 October. It discussed a draft Declaration on the authentic interpretation of article 3 of the Protocol on Provisional Application, which article contains the requirement of ratification by the UK. The Declaration states that this needs to be interpreted in line with article 89 of the UPC Agreement, which would allow to replace ratification by the UK by ratification by Italy, which was the third member state with the highest number of patents in 2012 if the UK is disregarded. All representatives of Contracting Member States agreed. The plan is to have this Declaration signed by the Member States in the margin of a future meeting of the Committee of the Permanent Representatives of the Governments of the Member States to the European Union (which meets on a weekly basis). This is aimed at resolving the discussion whether any changes are needed in UPC legal documents since the UK is mentioned, but no longer participates.

The Preparatory Committee further discussed the steps that still need to be taken for the Court to be ready to open by late 2022 or early 2023. All of this shows that the process has again picked up momentum and it does seem likely that the UPC will now be a reality in the near future. This also means that business should now really start preparing for the UPC, both with regard to applications for unitary protection and opt-out and in view of actual UPC litigation.