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29 September 2016Patents

Brexit: 20 law firms back opinion on UK’s UPC membership

At least 20 law firms have backed a legal opinion on the UK’s membership of the Unified Patent Court (UPC) after the UK leaves the EU.

The legal opinion was released by Richard Gordon QC and barrister Tom Pascoe from Brick Court Chambers earlier in September.

Gordon and Pascoe were instructed by the Intellectual Property Federation, the Chartered Institute of Patent Attorneys (CIPA) and the Intellectual Property Lawyers Association to assess a number of questions about the legal consequences of Brexit for “certain” aspects of UK patent law.

The questions surround the unitary patent regulation and the UPC Agreement.

Since then, 20 law firms have stated their support for the opinion. These include Bird & Bird, Collyer Bristow, Browne Jacobson, Bird & Bird, Powell Gilbert, D Young & Co, Herbert Smith Freehills, Bristows, Linklaters, EIP and CMS UK.

CIPA announced its support on September 19.

The barristers found that it would be “legally possible” for the UK to continue to participate in the unitary patent system and the UPC Agreement post-Brexit, but that it would have to overcome a “substantial” number of obstacles to do so.

For the UK to continue to participate in the unitary patent, it would have to secure an “international agreement”.

The UK would also have to sign up to EU law to participate in the UPC and it would need to sign up to an appropriate jurisdiction and enforcement regime.

Addressing the question of what the consequences would be if the UK ratified the UPC Agreement without amendment, the opinion found that UK divisions of the UPC would have to close.

Tony Rollins, CIPA president, said: “There is now a legal path to securing our continued participation in the UPC and unitary patent following Brexit, although this will take some time.

“We are pleased that counsel’s opinion supports our position, but more work needs to be done before the UK can ratify the UPC Agreement,” he added.

Simmons & Simmons also aired its support for the opinion and released a comment from Rowan Freeland, partner at the firm.

He said: “I was keen that we should get an opinion on this question from counsel who had no personal stake in the future of the UPC and who could provide objective advice on the issues. Their opinion is admirably clear in its analysis, and helps set the agenda for the political debate.”

Law firm Gowling WLG said in a blog post written by partners Gordon Harris and David Barron that the opinion “highlights some significant practical difficulties of finding a way forward for the UPC, with these difficulties unlikely to be eased by the political situation in the UK”.

Paul England, senior associate at Taylor Wessing, added: “It is encouraging for potential users that the opinion provides a legal route by which the UK could continue to participate in the UPC and unitary patent project, post-Brexit.

“Hopefully, given that the UK will continue to be subject to decisions of the European Patent Office anyway, which is also a European-wide authority, this might prove less politically difficult than has been suggested by some.”

Freeland told WIPR that the opinion has “taken forward the debate” and “its implications are far more wide-reaching” than for the UPC.

He added that the opinion is a “three way split” and an “informal consortium” between CIPA, the IP federations and the consortium of law firms.

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