UK won’t participate in UPC

The UK will not be seeking involvement in the Unified Patent Court (UPC), it was confirmed yesterday, despite the country’s ratification of the underlying agreement in April 2018.

In a quote sent to WIPR, a UK government spokesperson said: “The UK will not be seeking involvement in the unitary patent/UPC system. Participating in a court that applies EU law and bound by the Court of Justice of the European Union (CJEU) is inconsistent with our aims of becoming an independent self-governing nation.”

IAM first reported the news.

In November last year, a European Parliament report said that although it was not “legally impossible” for the UK to participate in the UPC after leaving the EU, a number of obstacles remain. In particular, this included the jurisdiction of the CJEU.

The CJEU plays a central role in the new system, having the final say on the interpretation of existing EU Law. And, while the UPC is not an EU institution, under article 20 of the UPC Agreement, the UPC “shall apply Union law in its entirety and shall respect its primacy”.

However, said Wouter Pors, partner at Bird & Bird in the Netherlands, “the influence of the CJEU is rather limited since the rules on validity and infringement are not EU law”.

Richard Mair, president of the Chartered Institute of Patent Attorneys (CIPA), was informed yesterday of the decision by Tim Moss, CEO of the UK Intellectual Property Office.

Mair said: "This was not entirely unexpected, given the government’s well-known views on the jurisdiction of the CJEU.

"British companies and SMEs will still be able to use the UPC if and when it comes into operation and, more importantly, the rights of audience of British-based European patent attorneys are unaffected by the government’s decision. British companies and SMEs will still have the benefit of British representation by CIPA fellows when litigating in the UPC."

The life sciences section of the central division of the court had been allocated to London and will now need to be moved. In 2017, nearly 90% of WIPR readers taking part in a survey believed that Milan would be a good fit for the UPC’s central division seat should it be moved from London.

Pors added: “The most important effect of this decision is that patent owners will incur additional costs if they want to enforce their patents in the UK, making one wonder to whose advantage this decision really is.”

In Germany, the constitutional complaint disputing the legitimacy of the UPC is still pending before the German Federal Constitutional Court (Bundesverfassungsgericht, BVerfG) and has delayed the country’s ratification of the agreement.

Last August, the German government said that the UK’s departure from the EU plays an “important role” in the further implementation process of the UPC, according to the German government.

The German Parliament (Deutsche Bundestag) said: “The actual and legal implications of withdrawing from the Convention must be examined and agreed at European level. This opinion is currently not finalised, not least because significant factors of the expected exit are not yet known.”

A disappointing decision

Martin Turner, head of policy and public affairs at the UK BioScience Association, said: “The BIA worked closely with the government on the establishment of the UPC and supported the UK’s participation because it would provide a more efficient and cheaper means for life science companies to challenge and enforce patents, which would be of particular value to small and medium-sized enterprises.

“We are disappointed that the government will not be seeking membership and in doing so hasn’t listened to the views of industry.”

Kevin Mooney, partner at Simmons & Simmons in London and the chairman of the drafting committee for the UPC’s rules of procedure, said he was “very disappointed” with the decision.

“It’s a great shame for the UK IP community because the judges and lawyers have invested a great deal of time and effort. The strange thing is that this project is probably one of the only European projects that has, up until now, the complete support of European and UK industry and had complete government support,” he added.

What remains to be seen is whether other states will go ahead on the project without the UK.

“In many ways, I hope the UPC will go ahead, given the amount of effort invested and support from industry. However, from the point of view of UK lawyers, it would not be a good result,” said Mooney.

Pors believes that the EU and the participating member states are still determined to continue with this project.

“In preparation for the UPC opening for business in 2021, this fall there will be a new training course for future UPC judges, which hasn’t happened since 2016. Of course, the UPC will be less attractive without the UK, but it will still cover all the major EU member states and will, therefore, have considerable added value compared to national litigation,” he said.

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