The existing system for obtaining and enforcing European Patents will not change post-Brexit as European Patents are granted under the European Patent Convention, which is not an EU organisation. The UK is and will remain a member of the European Patent Convention. Aside from general implications of Brexit for protection and enforcement of IP rights, Brexit will impact in two key areas relating to patents: (1) SPCs and (2) the Unified Patent Court/Unitary Patent.
Aside from areas of enforcement, patent law is harmonised in the EU in relation to biotechnological inventions and supplementary protection certificates (SPCs). However, despite being created by an EU law (a Regulation), SPCs are national rights. The UK government has confirmed that, including in the event of a No Deal, the EU SPC Regulation on SPCs will be retained in UK law and will form the UK’s own SPC regime on exit, thereby preserving the status quo. It has issued draft Regulations which will achieve this, including in relation to the paediatric extension (which will require amendments to the Human Medicines Regulations). A number of other necessary revisions to UK patent law will be dealt with, including in relation to compulsory licensing.
Unitary Patent and Unified Patent Court
The area of particular focus in relation to Brexit is the implication for the Unitary Patent and Unified Patent Court (UPC) project. The proposed regime has two aspects. First, the Unitary Patent will be a single patent applied for following one central application at the European Patent Office, which will be available alongside the existing regime for standard European Patents and national patents. The Unitary Patent will have effect in all EU Member States that ratify the UPC Agreement. Even before the Brexit vote, however, not all Member States had intended to participate in the Unitary Patent, most notably Spain and Poland.
The other part of the regime, the UPC, focuses on patent enforcement and patent challenges. The UPC will exclusively govern disputes concerning the Unitary Patent (and related SPCs) from day one. However, it will also have jurisdiction over existing and future standard European Patents. Ultimately, this jurisdiction over European Patents will be exclusive, but there is an important transitional period under the UPC rules which means that this exclusive jurisdiction may not arise for some time. Instead, during this period, patent holders can remove their European Patents from the UPC’s jurisdiction for the remainder of their term.
The UK is a mandatory ratifying state for the UPC Agreement to come into effect and, in April 2018, in a step that surprised many, it ratified the Agreement. Germany must also ratify and remains to do so, as there is an outstanding constitutional challenge. It is presently unclear whether the UK can participate in the new regime once it is outside of the EU, and much will depend upon the timing of the UK’s exit, and also on the position in Germany.
An Opinion from constitutional law barristers Richard Gordon QC and Tom Pascoe obtained shortly after the Referendum suggests that, on balance, there is a legal mechanism for the UK to participate, namely an international agreement between the UK and the EU. However, this would require the UK to accept supremacy of EU laws to the extent that they impact on issues being litigated in the Unified Patent Court (and to be prepared to refer questions of interpretation to the CJEU). This would extend beyond patent law issues. As for Unitary Patents, again barring an agreement, these will not extend to the UK post-Brexit. However, the government has confirmed that measures will be put in place to preserve any such rights (if they are obtained before Brexit) in the UK.
Even if the UK is not part of the UPC and unitary patent regime, UK businesses will still be able to use it to protect, enforce and challenge patents in the contracting EU countries. They may also be brought before the UPC in infringement or revocation proceedings. Accordingly, it is vital to keep a watching brief on the situation as it continues to unfold.