The Unified Patent Court (UPC) will provide a forum for litigation of European patents (unless opted out) once for all territories where the European patent is in force, rather than country-by-country. In addition, applicants will be able to apply for and obtain a single Unitary Patent, covering all the states participating in the UPC.
In January 2017, the UPC Preparatory Committee announced it was working on the assumption that the Agreement on the Unified Patent Court (UPC Agreement) could enter into force so that the Court and the Unitary Patent could become operational in December 2017. The UPC Preparatory Committee reaffirmed this December 2017 operational date, at its most recent meeting of 15 March 2017.
The timetable to December 2017 is conditional on a number of factors that will dictate whether it is achievable. The most important are: obtaining the necessary ratifications of the UPC Agreement and Protocol on Privileges and Immunities, and accessions to the Protocol on Provisional Application. The Committee has stated that it is in a ‘state of readiness’ with regard to the Provisional Application period starting from May 2017.
Here we examine the steps that will be necessary to fulfil the above timetable.
The UPC Agreement
So far, 12 of the 13 countries necessary have ratified the UPC Agreement. The UPC Agreement ratification status is here. To complete ratification of the UPC Agreement, it remains for Germany and the UK to ratify by depositing their relevant national instruments at the depository of the Council of the European Union. These are mandatory and so the ratification of no other country will suffice to bring the court (and the Unitary Patent) into being, even though another ratification, that of Slovenia, is expected to complete soon.
In the UK, the Intellectual Property Act 2014 makes provision for the Secretary of State to ratify the UPC Agreement and contains enabling legislation to allow the government to make the necessary changes to national law in order to accommodate the Unitary Patent and Unified Patents Court by means of a Statutory Instrument (SI). This is SI (2016 No. 388), which was signed on 12 March 2016. The SI comes into force when the UPC Agreement comes into force. However, this SI is only one of two required to enable the UK to ratify the UPC Agreement. The other SI is required to reflect the UPC Protocol on Privileges and Immunities (PPI). Ratification of the UPC Agreement cannot be completed until the SI legislating for the PPI is in place. In Germany the two bills necessary to ratify the UPC Agreement are already at an advanced stage.
The Protocol on privileges and immunities (PPI)
The PPI is necessary to give the UPC the privileges and immunities it needs to operate, such as certain immunities from suit for its judges and staff, special tax arrangements and the protection of the court’s documents and assets. The Protocol must be ratified by France, Germany, Luxembourg and the UK.
The national implementing SI for the PPI – a Privileges and Immunities Order – is currently in draft form and must pass still through the UK Parliament without being disapproved. It is currently thought that this SI, followed by the UK ratification of both the PPI and the UPC Agreement will then be completed by May. Similarly, ratification of the German bill implementing the PPI is expected by May.
However, the PPI will not enter into force until 30 days after the date on which the last of France, Germany, Luxembourg and the UK have all deposited their instruments of ratification of this Protocol and to date these are all outstanding (see here).
There is then the matter of the Protocol on Provisional Application of the UPC (PPA).
Protocol on Provisional Application (PPA) of the UPC
The PPA establishes a provisional period in advance of the full opening of the UPC, in order for it to be fully set up in advance of the first day of its operation. This includes final steps in the practical set up of the Court, such as the recruitment of judges and testing of IT systems. Importantly, it also brings the Registry into being, allowing for early registration of European patent opt-outs (the ‘sunrise period’). The provisional protocol does not come into force until the day after 13 contracting Member States to the UPC Agreement have either ratified the UPC Agreement or have informed the depository that they have received parliamentary approval to ratify the UPC Agreement. However, these same 13 must also have either signed the Provisional Protocol or declared that they consider themselves bound by it.
Of the 13 countries that have deposited their instrument of ratification of the UPC Agreement or informed the depository that they have the necessary approval, not all have signed the PPA or declared themselves bound by it. To date, three further countries need to do so before the Provisional Protocol can come into force1. See signatory status here. The Preparatory Committee of the UPC is currently working on the basis that this will happen by May 2017, enabling the provisional period to begin straight away. Until the 13 are in place for both instruments, this cannot happen.
Although, the Preparatory Committee it still maintaining the position that it can start the provisional period in May, that may start at the very end of May, and it is not expected that the sunrise period will begin until September 2017, when the Registry will start receiving opt-outs.
How does this come together?
For the UPC Agreement itself to come into force, the ratification instruments of the 13 countries must be deposited with the Council of the European Union (informing the depository of the necessary approval is not enough). But before this can happen, the PPI must be in force and the provisional period must have been running for a sufficient length of time for the necessary preparations to be made to the Court and its Registry. As discussed above, there are currently a number of ratifications and signatures / declarations still necessary first. The Preparatory Committee is anticipating that these will be in place by May, although it accepts that this may not happen.
Assuming it does, then all that is required, when the Court is ready, is for the UK or Germany (it is expected to be Germany) to be the last to deposit its ratification instrument in Brussels. So this can be timed to allow for the optimum moment for the Court to be opened. The UPC and the Unitary Patent then come into force on the first day of the fourth month after this deposit. The Preparatory Committee is still currently aiming for this day to be 1 December 2017.