Brexit Raises Questions About the Future of the Unitary Patent and Unified Patent Court
Recently, the UK voted to leave the EU. However, that has not happened yet for several reasons. The first reason is that the referendum actually needs to be voted on by Parliament, adopting the results of the referendum vote. A second reason is that withdrawal from the EU occurs when Article 50 of the Lisbon Treaty is enacted. Neither one of these two items has occurred. If Parliament agrees to follow the referendum outcome and votes to leave the EU, and if the UK gives notice under Article 50, then many trade agreements and treaties will need to be negotiated in a two-year period from date of notification.
Amongst the items to be considered in this time period is the effect on intellectual property. Currently, the UK is a member of the European Patent Convention that operates independently from the EU. The European Patent Convention has established a system of common laws and procedures for the contracting states to file, prosecute, and grant a European Patent. Currently, once a European Patent is granted and survives certain post grant challenges, it is ratified in each national country selected by the patent applicant. This is likely not to change with the Brexit vote. It is likely that the UK will remain a contracting state and that European patents will be nationally ratified in the UK.
Additionally, the UK is a current signatory to the Patent Cooperation Treaty (PCT) which the Brexit vote is not likely to change. This means European patents can continue to be obtained by filing a PCT patent application, and UK national patents can still be obtained by using the PCT.
However, two areas of uncertainty with the recent Brexit vote are the planned Unitary Patent (UP) and Unified Patent Court (UPC). The UP was to be a contracting state in filing a patent application in the European Patent Office (EPO), and the UPC was a planned new patent court consolidating litigation on EP patents that have not opted out of the system.
The UP applies to all EU states, with the exception of Croatia and Spain. It is a single contracting state through the EU, has a single renewal fee, and is enforced through the UPC. The UP is obtained at the EPO when it is granted. One of several things can occur now with the Brexit vote. First, only countries where one is seeking protection will continue to be chosen by a patent applicant. Another option is that a UP strategy covering 26 countries may be chosen. The third option is a combined selection of the UP and ratification of national patents. So, although there may be some changes to what an applicant wants to do, those options are not very onerous ones to contemplate.
On the other hand, the situation with the UPC is somewhat more complicated. That court was established to litigate all UP cases and all other EP patents granted, unless opting out. Currently, 13 countries need to ratify the UPC, including the top three – Germany, France, and the UK. If the UK decides not to continue down this path, the Netherlands would replace it. As part of what has already been going on, London was specified as a location for one of the Central Division Courts for life sciences, chemistry, and metallurgy. Since the Brexit vote, it is likely that the plans to initiate the UPC as of 2017 will likely postpone any implementation of the UPC, for no other reason than the location of the Court, should it not be London.
Given what has happened in the UK, it may still be a likely outcome that the EPC provisions will not be affected by the Brexit vote. The UK could agree to a special agreement or treaty that provides for a unified patent court, but that agreement would require the UK to submit to the jurisdiction of that Court. Given the reluctance of the UK electorate to submit to the jurisdiction of the “European” bureaucracy, this is not an assured resolution. In the event the UK does not submit to the jurisdictional issue, the UP and UPC may only extend to the EU countries, and the UK would have a parallel litigation route.
For the time being, there is some uncertainty for the UK, but national patents are not affected. The uncertainty really surrounds the UP and UPC issues. Those issues will take time to resolve, at least two years, if not more. Gibbons will continue to follow this story and report on updates and practice tips.