UPC not as easy as 123

With the future of the unitary patent project uncertain following the UK’s Brexit vote, 20 law firms have teamed up to give the UK a way forward

Despite the UK Intellectual Property Office indicating that there will be “no immediate changes” to the UK’s position in the Unitary Patent Court (UPC), and by extension the unitary patent system as a whole, and the UPC’s preparatory committee agreeing, many affected parties are pushing for more clarity following the June Brexit vote.

Now, 20 law firms based in London have pledged support for an investigation into the future of the UK’s position in the UPC specifically, including Linklaters, Bird & Bird and Taylor Wessing.

Richard Gordon QC and Tom Pascoe of Brick Court Chambers formulated a legal opinion stating that the UK could continue to remain a part of the UPC provided EU law in that jurisdiction binds it.

The opinion finds that it would be constitutionally possible for the UK to participate in the UPC agreement following Brexit as long as it signs up to the provisions, which protect EU constitutional principles. But this may still be subject to review by the Court of Justice of the EU.

The group of law firms, headed by Simmons & Simmons IP head Rowan Freeland, as well as the IP Federation and the Chartered Institute of Patent Attorneys, instructed and funded Gordon and Pascoe’s legal opinion.

Paul England, senior associate at Taylor Wessing, says: “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 Europe-wide authority, this may prove less politically difficult that has been suggested by some.”

“Enthusiasm for pushing ahead with the UPC (without the UK) may be tempered by the fact that value to users would be diminished without the UK’s participation, bearing in mind the size of the UK market, quality and experience of the UK’s highly respected patent judges.”

But England adds: “Ultimately, participation in the UPC is a matter of political decision making and negotiation by the government, rather than law firms. However, the Intellectual Property Lawyers’ Association consortium of 20 firms obtained the opinion to see if it could provide the government with a legal route to participation, if that is what it decides is in the UK’s best interests.”

“It is encouraging for potential users that the opinion does provide such a route.”

Soon after the Brexit vote, Allen & Overy released a snap analysis of the potential effects, explaining: “The vote means an end to the UK’s involvement in the [unitary patent] project, although it seems likely [it] will continue without us.”

“The UK has been an enthusiastic and vocal supporter of this new system and London was set to house a prestigious central division of the new UPC. Future unitary patents will not now cover the UK and UPC judgements will not extend to UK patents.”

Further, England adds: “The value of the UPC and the unitary patent to users would be diminished without the UK’s participation.”

“This is not only because the UK is one of the largest markets in Europe, but also because the UPC would lose the quality and experience of the UK’s highly respected patent judges and the influence of English patent law.”

Eleven participants have ratified the UPC Agreement so far, so only Germany and the UK are needed to implement it. While the new opinion eases the minds of many on the UK’s continued participation, if Brexit were to bar the UK from entry, question remains on whether the UK could potentially join the UPC and unitary patent at a later date.

England says: “[It] cannot be ruled out, and the opinion suggests it is possible legally, but it would require a change in direction politically.”
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