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17 January 2017Patents

Positive IP feel following plans for UPC opening

Lawyers have told WIPR that the intellectual property world “feels a lot more positive about the future” following the announcement that the Unified Patent Court (UPC) is expected to come into force in December this year.

The preparatory committee announced yesterday, January 16, that it was “working under the assumption” that the provisional application phase will start at the end of spring 2017, “presumably in May”.

It confirmed that the court is due to become operational in December this year.

In November last year, former UK Minister of State for Intellectual Property, Baroness Neville-Rolfe, made the announcement that the UK will implement the unitary patent and UPC Agreement.

The UK has not yet ratified the agreement, but according to law firm Bristows, the UK’s ratification is “expected in April”.

The firm added that “Germany [is] expected to be able to confirm its intention to do likewise”.

WIPR spoke to intellectual property lawyers about the announcement and its implications.

Gordon Harris, head of IP at Gowling WLG, said: “I think the whole of the IP world feels a lot more positive about the future now that it seems that we are going to be starting in the unitary patent system because there is one very big assumption being made that might be dangerous.

“You can understand why that it is because if we get into this system, if we start participating in the unitary system, the UPC, then we will remain there.

“I think that’s the assumption that a lot of people are making. I think they feel it would be unthinkable to allow us to go into the system, only to bring us out again two years later, which really could be quite damaging for British business.”

He added that assuming the UPC will come into force in December, and assuming that the UK is going to be part of it, then UK IP owners will have to choose whether to opt-out their patents or not.

Paul England, senior associate in the patents team at Taylor Wessing, told WIPR: “This announcement, though provisional, is good news as it means the UPC is back on track following the uncertainty caused by the UK’s EU referendum decision last year.

“If the UPC committee can stick to this timetable it will focus the minds of those deciding whether to opt out patents, and it also puts the court on the horizon for those considering European patent litigation strategies.”

Sally Shorthose, IP partner at law firm Bird & Bird, said: “This announcement is the natural next step following on from the government’s declaration in November that it would indeed ratify the UPC, notwithstanding the outcome of the referendum on Brexit and the forthcoming negotiations between the UK and the EU.

“The UPC preparatory committee is confident that this ratification will indeed take place and that therefore the final steps to implementation can be undertaken ... in the next few months.”

She added: “It must be hoped that the UK’s involvement in the UPC is not a temporary affair, and that an agreement can be reached with the UK which permits participation in the UPC while no longer being part of the EU.”

Gordon Harris is a WIPR Leader for 2016. His profile is available  here.

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