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European IP Leaders’ Brexit perspective

8 September 2016

Withers & Rogers Chairman Karl Barnfather was delighted to moderate the opening panel session, on the Implications of Brexit and the UPC, to the MIP European Patent Reform Forum in Munich on Tuesday 6 September 2016.   On the panel was Margot Fröhlinger of the European Patent Office and Professor Tilmann of the University of Heidelberg.

Professor Tilmann was the first commentator, following the UK’s referendum decision of 24 June 2016 to leave the European Union, to state that such withdrawal from the EU would not preclude the possibility of the United Kingdom remaining a member of the Unified Patent Court (UPC) system.   His paper on the subject was published on the 28 June 2016 on the IPKat blog here.

The legal position which is widely supported (but not without some criticism) is dependent on the UK ratifying the UPC agreement (UPCA) whilst still a member of the European Union.   This opinion was also backed by Margot Fröhlinger (formerly of the European Commission) since the UPCA is an International, and not European Union, agreement.   Accordingly, ratification by the UK whilst still a member of the European Union would comply with Article 84 of the UPCA.

However, Margot Fröhlinger went on to state that of course it would be necessary for the UK also to confirm that it would, post Brexit, accept the rulings on questions of law by the Court of Justice of the European Union (ECJ) in respect of those limited areas for which referrals from the Unified Patent Court would be made to the ECJ.   In this regard, the limited areas of referral include questions regarding Supplementary Patent Certificates (SPC’s) the Biotechnology Directive, and the Enforcement Directive.   The UK will also have to comply with any orders by the ECJ in relation to any damages arising from any breach of these EU directives in accordance with Article 22 UPCA. However, it is understood that no such damages orders have ever been made in the history of the European Union and as such they remain highly unlikely. Moreover, these areas of possible concern seem minor in comparison with other areas of commerce, outside of patents, in which many more EU Directives are in force.

Accordingly, the Seminar made it clear that the legal position is very positive regarding the possibility of the Unified Patent Court Agreement coming into force with the UK’s continuing involvement beyond Brexit.

Whilst there appears to be widespread support by patent practitioners for this legal position, there is however a lack of clarity in relation to political will.   British Prime Minister Theresa May’s “Brexit means Brexit” position seems to indicate that the UK will be leaving the European Union during her current term of office which is due to expire in May 2020. As such, the UPC is one of the many issues which might become a bargaining tool in negotiations with the European Union regarding the proposed exit.

The Intellectual Property Federation (an organisation representing British companies with significant interest in Intellectual Property) issued a positioning statement which states that it is in support of membership of the Unified Patent Court and ratification of the agreement. However, guarantees would need to be given regarding the continuing involvement of the United Kingdom after any exit from the European Union. For example, the Central Division of the Unified Patent Court related to pharmaceuticals should continue to be in London.

The Intellectual Property Federation has publicly stated :

“• We support the Unitary Patent (UP), and the Unified Patent Court (UPC) with the UK participating on the current terms, including the location of the branch of the Central Division in London.

  • Without a guarantee of continued UK participation post-Brexit, the UK should not ratify the UPC at present. We consider that ratifying the UPC to bring it into effect and subsequently being forced to leave the system would bring an unacceptable amount of uncertainty to industry across the UK and EU.”

The debate on the Implications of Brexit and the UPC gave a clear indication of the legal certainty regarding the legal possibility of the United Kingdom remaining and enabling implementation of the Unified Patent Court Agreement and of the continuing affect thereof after the United Kingdom left the European Union.   The issue then appears to be one of political will on the part of the remaining members of the European Union, as well as the United Kingdom, as to whether ratification should take place before the UK leaves the EU.

In spite of recent optimism for implementation of the UPC in 2017, following many years of trying to create an efficient, predictable and harmonized patent landscape within the European Union, the lack of political certainty no longer offers much room for hope on the actual unfolding of these positive events in the near future.

 

Karl Barnfather
Chairman & Patent Attorney

If you require further information on anything covered in this briefing, please contact Karl Barnfather (kbarnfather@withersrogers.com; +44 1926 310700) or your usual contact at the firm. This publication is a general summary of the law. It should not replace legal advice tailored to your specific circumstances.

© Withers & Rogers LLP, September 2016