Unified Patent Court / Unified Patent Court

Unified Patent Court

1. Overview
The European patent landscape may substantially change in the near future. The creation of the Unitary Patent – a European patent with true unitary effect – is intended substantially to reduce the costs of securing patent protection across Europe. The Unified Patent Court (UPC) will provide for single court proceedings to enforce or invalidate patents. Its decisions will have pan-European effect. However, it remains to be seen in what way Brexit (the UK leaving the European Union) will impact to coming into existence of the new UPC system.

As one of Europe's leading patent law firms, we understand the new challenges and opportunities that the new system will bring for litigants in a Europe-wide patent dispute. We contributed to building the new procedural system. We know and understand the cultural and legal differences that the UPC will undoubtedly inherit. Our seasoned patent litigators can lay claim to many years of experience of successful cross-border patent litigation in Europe.

In 2016, our firm was recognized by Managing Intellectual Property as European Patent Firm of the Year. We believe that a law firm should offer leaders in the field, wherever they are needed.  Our 'flying squad' of top patent litigators is best positioned to advise and represent you in the area of European patent litigation and patent prosecution.

2. Brexit and implications on the UPC
On 23 June 2016, the people of the United Kingdom of Great Britain and Northern Ireland voted in favour of leaving the European Union. The UK must now first trigger the process for leaving the EU as foreseen by Article 50 of the Lisbon Treaty on the Functioning of the European Union, which provides the basic rules for withdrawal of a Member State from the Union and require a prior formal notification of the intention. From the moment of the notification of the withdrawal, negotiations shall be prompted between the EU and the UK to reach an agreement on the arrangements for the withdrawal and the framework of a future relationship. EU Laws would only cease to apply to the UK when such an agreement is reached or 2 years after the notification –which could be extended further.

Irrespectively, Brexit has an impact on the planned Unitary Patent System which was on the brink of entering into force soon, because the Unitary Patent is an EU initiative (although not comprising all the Member States, since Italy, Spain and Croatia did not initially participate and even though some other countries, such as Poland, did participate now decided to hold on the ratification process). Along with the Unitary Patent Regulations of the EU, providing rules for obtaining a Unitary Patent title and some arrangements for translations, another key element of the so-called “patent-package” is the Unitary Patent Court, an International Patent Court common to the EU Member States participating in the UP system to rule on the enforcement and invalidation of Unitary Patents (and European Patents, if not opted out) for the whole territory of the participating Member States, thus providing, for the first time in history, a very powerful pan-European effect to this Court (see http://www.hoyngrokhmonegier.com/unified-patent-court).

Effectively, Brexit has currently put the coming into force of the UPC&UP on hold as it is yet dependent on ratification by at least 13 Contracting Member States, with the three Member States with the highest number of European patents in force in 2012 – Germany, France and the United Kingdom –  being necessarily among these 13 Member States. This means that ratification by these three Member States is a necessary requirement for the UPC&UP system coming into force. While, up to date, 10 Contracting States had ratified, including France, Germany and particularly the UK have not yet ratified, even though preparations have been reportedly carried out at the legislatives of both countries. As a consequence of Brexit and as long as the decision remains for the UK to leave EU, it has now become doubtful whether the UK will still ratify the Agreement before leaving the EU. 

In this regard, many possible alternative routes for the UP&UPC system are currently discussed. One route currently discussed is – looking at the hybrid nature of the UPC, as both an international Court, but also a court common to Member States of the EU, and subject to the primacy of EU Law – whether there is a chance for the UK to still become part of the System even if in the future not an EU Member State anymore, provided it would still recognize the primacy of the EU Laws to allow for the role of the European Court of Justice to receive referrals. Another option – without participation of the UK – could be that the place of the UK as the third Contracting Member will be taken up by Italy or the Netherlands (as Contracting Member States having the next highest number of EP filings), so that the entering into force of the UPC could be triggered when they ratify. Such solution with non-UK participation would, of course, require some significant reorganising and new agreements between the Contracting Member States (such as on the location of the Central Division, the fee schedules etc). Further, such system may not be as attractive or appealing to users than a system with UK participation. 

It remains to be seen how politics and the potential legal implications and options will develop in the following weeks. In these times of flux, HOYNG ROKH MONEGIER, has the advantage to be on the forefront of not only national IP legislation but particularly of EU harmonisation and specifically the development of the UP&UPC system, with many of our partners taking an active role in the forming of the system, will be able to offer our clients top-notch guidance and first-hand information on how the system will evolve in the future and how to best protect their IP and what actions may in the future be necessary to do so.


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