UP & UPC: Ratification and timings
18 October 2017
Over the course of the summer there have been a number of developments in the unitary patent and Unified Patent Court (UPC) project which we summarise below. We also include a note on commencement timing, which remains uncertain at the time of writing.
On 18 August 2017 the EPO published a Unitary Patent Guide.
Download the EPO Unitary Patent Guide
European Patent Office UPC guide (pdf).Download EPO UP & UPC guide
The guide sets out how to obtain unitary patent protection and other useful information relating to the process and fees.
UPC Provisional Application Period
In July we reported that the UK had agreed to apply the Protocol on Provisional Application of the UPC. This brought to ten the number of countries that had consented to this Protocol, which will ultimately allow the UPC to come into existence before formal commencement of the court itself, and also enable the so-called sunrise period (for pre-commencement opt-outs) to begin. In order for the Provisional Application Period to start, however, at least three further countries must agree to apply Protocol, and these must include Germany (which we discuss below). From what we understand, Bulgaria, Portugal and Slovenia are close to completing the necessary steps.
Further ratifications of the UPC Agreement
On 24 August, Lithuania deposited its instrument of ratification of the UPC Agreement with the European Council. There are therefore now 14 countries that have ratified: Austria, Belgium, Bulgaria, Denmark, Estonia, France, Italy, Lithuania, Luxembourg, Malta, the Netherlands, Portugal, Sweden and Finland. In order for the UPC Agreement to come into effect, however, ratification by the UK and Germany is still required.
Readers will of course be aware that the UK indicated its intention to ratify in November 2016, notwithstanding the vote to leave the EU, and that it has since then continued with the steps necessary to enable ratification to happen. However, delay has been caused to that process by the snap UK General Election that took place on 08 June 2017, the “Hung Parliament” outcome of that election and the summer Parliamentary recesses of both the UK and Scottish Parliaments.
Two minor pieces of legislation are necessary before the UK will ratify, one from each of the UK and Scottish Parliaments. Both have now been published and laid before their respective Parliaments.
UK legislation at least will have to wait until mid-October 2017 at the earliest to be considered (because of political party conferences) so it may not be until November 2017 before the UK is in a position to ratify.
We assume it will do so, although the question of whether (and how) the UK can remain in the UPC post Brexit remains somewhat open. We are aware that business is continuing to press for clarity on that issue, which is likely to be resolved as part of the overall Brexit negotiations. Our current expectation is, however, that the UK will complete the process of ratification, probably before the end of the year.
Readers will also be aware that in March 2017, a private individual lodged a complaint with the German Constitutional Court (FCC), challenging the constitutionality of the German legislation implementing the UPC Agreement. This led to a request from the FCC to the German Government not to sign that legislation into law, which request was heeded. Details have since been emerging as to both the grounds of the complaint and the identity of the complainant (who is an individual known for his opposition to the UP/UPC project).
We are not in a position to comment on the merits of the complaint, whether it will be admitted or indeed any possible outcome. What we do know is that a number of entities and organisations (including one in which we are involved) have been asked to comment on the complaint, before the FCC decides on admissibility. Those comments are due by 31 October 2017, after which the FCC will make that initial decision. If the complaint is not-admitted, delay to commencement of the system should (all things being equal) be relatively minor – perhaps a couple of months. If on the other hand it is accepted, then the delay is likely to be more considerable because the German Government is unlikely to be able to ratify the UPC Agreement, or indeed agree to apply the Provisional Application Protocol, while the case is pending.
We will post any news and other developments on our website as soon as we hear them.
As indicated, while the FCC is considering the admissibility of the complaint before it, it is hard to give a new estimate on timing for the commencement of the UPC.
We would nevertheless advise businesses and users, however, to continue with their preparatory steps. If the complaint before the FCC is rejected, it is possible that the sunrise period will begin more or less as most recently (and of course provisionally) suggested by the UPC Preparatory Committee, namely at some point early in 2018.