The Unitary Patent and Unified Patent Court, which would provide for a single EU patent and corresponding Court within which to litigate such patents, have been stalled for several years pending ratification by Germany.

German Constitutional Court decision and U.K. departure from the EU (BREXIT)

A summary of these mechanisms is set out in our earlier article entitled “UP and UPC – What are they?“.

The coming into force of the agreements providing these devices now only waits for German ratification (the U.K. having ratified back in April 2018 under the hand of our then Foreign Secretary, Boris Johnson).

On 23rd January 2020, the German Federal Constitutional Court Bundesverfassungsgericht announced that its second senate will hand down its decision on the ECB Bond case on 24th March 2020.  This is being heard by the same rapporteur (Justice Peter Huber) as the UPC case and Justice Huber indicated in November last year that the decision on the UPC case should be handed down early this year (2020). So there is clear progress towards the UPC decision.   It is expected that the decision will allow Germany to ratify the necessary agreements which would overcome the final barrier to commencement.

The next question from a U.K. perspective then becomes one of how Brexit might affect these devices.  Various constitutional opinions have been sought and the general conclusion is that it would not be difficult to allow the U.K. to continue to participate in the system, even after ceasing to become an EU member state.  Whilst it appears that the U.K. government is generally in favour of continued participation, a potential sticking point is that this would probably require the UK to agree to referrals into the CJEU which would then require the U.K. to submit to the jurisdiction of that Court against the stated intentions of U.K. government.  There is also the question of whether the other EU states wish the U.K. to remain part of the system.  The general view appears to be that the Northern European states, Germany, France and the Scandinavian states in particular, are strongly in favour, and most are neutral.  There therefore seems a reasonable likelihood that the U.K. will continue to be part of the system post-Brexit.  And the EPO has only a few days ago indicated its eagerness and readiness to proceed with the Unitary Patent.

The significance of UK continuance is that the system would still include all the top European economies (the U.K. being the second largest economy in the EU) and would continue to have access to the highly experienced IP expertise from the U.K.

If the U.K. does not join the Unitary Patent System, U.K. businesses would still have full access to the system but the consequence would be that to obtain rights in all the present EU countries it would still be necessary to obtain a separate U.K. patent, as is currently necessary, and for enforcement a proprietor would have to litigate that patent in U.K. courts. A further consequence of the U.K. not being part of the system would be the probable re-siting of the London section of the Central Division of the Unified Patents Court, to a place within the remaining member states of the EU.  This would result in a significant loss to the UPC of UK litigation and judicial expertise – particularly important as much of the court procedure is based on that of the U.K.

We should know more in the next few months, once the German constitutional Court has published its decision.


Andrew Mackenzie

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