Following June's Brexit referendum, we published an overview of the possible implications for the Unitary Patent and Unified Patent Court. At the very least, it was clear that the outcome of the vote would introduce substantial delays and possible changes to the framework of the new system. More significant was the question of whether the UK could participate in the new system at all, and, if so, how this could be achieved.
A recent Opinion written by constitutional law counsel on instructions from the Intellectual Property Lawyers Association, the IP Federation and the Chartered Institute of Patent Attorneys has considered this issue. In summary, the Opinion of Richard Gordon QC and Tom Pascoe (both of Brick Court Chambers) is that the UK can continue to participate in the Unitary Patent and UPC, as a non-EU Member State, if it enters into a new international agreement with the participating EU Member States, implemented by domestic legislation. Their interpretation of the 2011 Opinion (Opinion 1/09) of the Court of Justice of the European Union (CJEU) is that it does not preclude non-EU Member States participating in the UPC, provided that the agreement providing for this contains sufficient safeguards to preserve EU constitutional principles as required under EU law: namely, supremacy of EU law, responsibility for infringements of EU law and uniformity through preliminary references to the CJEU.
Whilst they consider this is the better interpretation of the CJEU's Opinion, they note there are a number of counter-arguments and, accordingly, there is a risk that the CJEU may strike such an agreement down. However, they suggest that, provided the EU is a party to the envisaged agreement, it would be possible to obtain a pre-emptive opinion from the CJEU on its legality.
The Opinion sets out a number of hurdles that would need to be overcome to ensure that any such agreement is compatible with EU law:
- An agreement extending the Unitary Patent to the UK would need to replicate the provisions of the Unitary Patent Regulation and include safeguards to ensure uniform application and interpretation of the Regulation.
- In relation to the UPC, the envisaged agreement would have to have "at its centre compliance with EU law in its entirety", i.e., the UK would have to submit to the supremacy of EU law in its entirety in relation to proceedings before the UPC. As well as specific patent-related EU laws such as the Biotechnology Directive and SPC Regulation, this would include general areas of EU law such as competition law and the EU Charter of Fundamental Rights.
- Additionally, parties would have to be given the opportunity to bring proceedings for damages for breaches of EU law by the UPC before the CJEU, and a UPC panel operating in the UK would have to be able to refer questions of interpretation to the CJEU (the authors of the Opinion suggest that both of these would be achievable). A number of amendments would also be required to the UPC Agreement and the UK would need to sign up to an appropriate jurisdiction and enforcement regime (such as the Lugano Convention), once the Re-cast Brussels Regulation ceases to apply. This is, of course, a general issue for consideration post-Brexit, extending beyond patents.
It has been suggested by some that the UK could proceed to ratify the UPC Agreement (as it had been on course to do) in order to get the project up and running. However, it is clear (and is confirmed by the authors of the Opinion) that this will potentially have severe consequences: if the UK ratifies the UPC Agreement, without any amendment, and then subsequently leaves the EU without any agreement in place for its continued involvement, any divisions of the UPC then operating in the UK would cease to do so.
The Opinion discusses a number of interesting aspects of both domestic and EU constitutional law which will impact on the viability of the Unitary Patent and UPC regime extending to the UK. However, it necessarily does not analyse the political considerations and sensitivities involved in this issue – in particular, there remains the central question of whether the UK submitting to the supremacy of EU law, albeit in the standalone context of the UPC, will be politically acceptable.
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