But on 28 November 2016, the British government announced its intention to ratify the Agreement on a Unified Patent Court as soon as possible, an announcement which was coupled with the statement that it does not consider the Unified Patent Court to be an EU institution. The United Kingdom then proceeded to sign the Protocol on Privileges and Immunities of the Unified Patent Court on 14 December 2016. The entry into effect of this Protocol represents another mandatory precondition for the court to operate. The Protocol must be approved by the United Kingdom, France, Germany and Luxembourg (as the country of residence for the court of appeal). Germany has already initiated the legislative process in this regard. The British State Secretary responsible for the UPC, Mr. Jo Johnson, confirmed in mid-January that the UK intends to ratify the Agreement on a Unified Patent Court in the near future. The UK is expected to ratify the Agreement in April.
Once the UK and Germany deposit the ratification instruments for the Agreement on a Unified Patent Court, the requirements for entry into force will be met and the Unified Patent Court will begin to operate on the first day of the fourth month after the instruments are deposited. The present timetable calls for the Protocol to take effect as early as May 2017 based on the provisional application of the institutional provisions of the Agreement. The Protocol creates the Unified Patent Court as a legal entity and enables election of the necessary committees, the selection and appointment of judges and other personnel, the adoption of a budget and rules of procedure, the leasing of space for the court and the creation of a registrar’s office, which will be responsible e.g. for accepting opt-out declarations. These declarations can be submitted even before the court system begins to operate, likely as of September 2017. Affected patents will be treated as if the opt-out had been submitted on the first day that the Agreement on a Unified Patent Court took effect.
The British government considers the legal hurdles created by the UK’s announcement of its withdrawal from the EU to be part of the overall package which is to be negotiated in connection with its exit from the EU. That the United Kingdom is subject to EU law, in patent law at least, and that it is required to submit to the decisions of the European Court of Justice insofar as that court has jurisdiction in questions of patent law, is directly evident from Articles 21-23 of the Agreement on a Unified Patent Court, so that an additional treaty provision is not required. However, arrangements need to be made with regard to the UKs participation in the court system established by the Regulation on jurisdiction and enforcement of judgments in civil and commercial matters (Regulation 1215/2012) and in the protective scope of European unitary patents. The relevant EU Regulations, Nos. 1257/2012 and 1260/2012, represent EU law. They cannot simply be applied to the United Kingdom as before once the UK withdraws from the EU. However, the two Regulations represent a “special agreement” in accordance with Article 142 of the European Patent Convention (see Article 1(2) of Regulation 1257/2012), so that a possible solution might be extending the scope of European unitary patents to the United Kingdom using Article 142 of the European Patent Convention.
If additions need to be made to the Agreement on a Unified Patent Court itself, these can be negotiated directly between the EU and the United Kingdom. The Agreement can then be amended through Article 87 of the Agreement in order to bring it into harmony with EU law. This would not require additional ratification by the member states.
Everyone involved expects the legal problems to be resolved and the obstacles to the new court system to be removed. Austria, Belgium, France, Portugal, Luxembourg, Sweden, Malta, Finland, Denmark, the Netherlands and Bulgaria have already deposited their ratification instruments. Italy and Slovenia have completed the legislative process in that regard and their ratifications should follow in the coming weeks. In other countries, including Lithuania and Latvia, the legislative process is also far enough advanced that those countries are expected to take part in the system from the beginning. Germany itself is expected to ratify the Agreement before the end of its legislative session. Accordingly, 17-20 countries will likely ratify the Agreement before the court begins to operate.
2017 will therefore be the key year for the transition to the unified patent court system. As usual, Preu Bohlig will provide expert, timely, detailed and comprehensive advice to ensure that you are prepared for the new court system. To this end, we will be holding seminars in Berlin, Dusseldorf and Munich beginning in the first half of 2017. If you are interested in taking part, you can submit your non-binding registration at eu-patent@preu-bohlig.de or anf@preu-bohlig.de. Once you do so, we will notify you immediately as to the specific times and locations of the seminars. In addition, you can read about all new developments on our website, www.preubohlig.de.
