Voters in the United Kingdom have voted to leave the European Union (EU). The exit of the UK from the EU (the "Brexit") could result in a delay in the implementation of the Unitary Patent (UP) and the Unified Patent Court (UPC) System, and restructuring of both. However, Brexit will not affect the European Patent Convention (EPC) or any patent applications pending before the European Patent Office (EPO).
On June 23, 2016, the UK held a referendum on its membership in the EU. The majority of voters cast their votes in favor of having the UK exit the EU. This vote is not legally binding on the UK government; however, the UK government has begun the process of withdrawing from the EU.
The withdrawal of the UK from the EU will take place over two years, from the date the UK officially invokes Article 50 of the Lisbon Treaty. During this period, the UK will still be governed by EU law. David Cameron, the current prime minister of the UK, has stated that he will resign in the fall of 2016 and it is unlikely that Article 50 will be invoked before the new prime minister takes office. As a result, it is expected that the UK will officially remain a member of the EU until at least the fall of 2018.
Brexit and the European Patent Office
Brexit will not affect the EPO. The EPO is governed by an international treaty, the European Patent Convention, which is separate from the European Union. Following the withdrawal of the UK from the EU, patentees will still be able to apply for a patent from the EPO and validate the resulting patent in the UK. Alternatively, a patentee will be able to apply for a patent directly from the UK Intellectual Property Office (UKIPO). Further, as is the case now, any patent infringement cases involving a patent issued by the UKIPO or a UK validation of a patent granted by the EPO would be tried by the UK courts.
Brexit and the Unitary Patent and Unified Patent Court System
With the UK's vote to withdraw from the EU, the fate of the UP and UPC System is uncertain.
The UP and UPC System are intended to provide a path for patent protection in EU member states. The UP will offer unitary patent coverage in all member states of the EU that have ratified the Agreement on a Unified Patent Court, while the UPC will provide one venue to bring enforcement actions for a UP. The UP and UPC System were designed to reduce the administrative burdens and costs associated with obtaining and enforcing a patent across the EU.
The UP will operate in conjunction with the EPO. Upon the grant of a European (EP) patent by the EPO, a patentee would be able to validate the EP patent as a UP, in addition to validating the EP patent in non-EU member states (notably, Norway, Switzerland, Turkey, and now the UK) and any EU member states that have not joined the UP and UPC System. If a patentee needs to enforce a UP against an infringer, the patentee would be able to do so in one proceeding at the UPC. The UPC could also be used to obtain an injunction across all UP/UPC countries.1 While the UPC may make enforcement of a patent easier, a holding of invalidity at the UPC would result in the loss of patent protection across all UP/UPC member states.
Currently, neither the UP nor the UPC can enter into force until the Agreement on a Unified Patent Court is ratified by at least 13 participating EU member states. Further, the ratifying member states must include the three participating countries that filed the most patent applications at the EPO in 2012—currently, the UK, France, and Germany.
France has already ratified the Agreement and Germany is currently in the process of ratifying it. With the exit of the UK from the EU, the next country with the most EPO filings is Italy. However, and here is the rub, the UK is considered to be a member of the EU until it officially exits the EU—estimated to be in the fall of 2018 at the earliest. Unless the UK ratifies the Agreement (unlikely) or the Agreement is rewritten in some form during the next two years to accommodate the consequences of Brexit, neither the UP nor UPC can take effect until after the UK exits the EU and Italy can take its place as one of the top three EPO filers.
Additional issues will also likely delay the UP and UPC entering into force. The UPC will comprise a Court of First Instance with a Central Division and several national or regional divisions. The Central Division will have three seats, each devoted to specific technologies. London was to be the life sciences seat of the Central Division. Since the UK is withdrawing from the EU, the Central Division seat for the life sciences will need to be relocated from London. The initial Central Division seats were the subject of intense negotiations and it is likely that the negotiations for the replacement location will also be the subject of intense negotiations.
Further, the UK was heavily involved in crafting the rules and procedures for the UP and UPC. As the UK will no longer be participating in the UPC, the remaining EU member states may insist on renegotiating certain provisions to strip out those most heavily influenced by the UK.
Another key aspect that will need to be adjusted post-Brexit is the renewal fees that would be charged for a UP. The renewal fees for the UP were set to match the total renewal fees charged by the top four EU member states in which an EP patent was validated—the UK, Germany, France, and the Netherlands. The UP renewal fees will now need to be recalculated to reflect the new total renewal fees charged by the top four EU member states in which an EP patent is validated.
While the UPC Preparatory Committee and the EPO Select Committee dealing with the UP are continuing their work with regard to the technical implementation of the UP and UPC System, they acknowledge that the "vote in the United Kingdom in favor of leaving the European Union has given rise to questions concerning the future of the Unified Patent Court and the Unitary Patent Protection."2 It is likely that the UP and the UPC will eventually come into force; however, the timing of this may be significantly delayed. Further, it is highly likely that the Agreement on a Unified Patent Court will be subject to renegotiation by the remaining members. What the resulting UP and UPC System look like and when they take effect is currently anyone's guess.
