The IPKat is delighted to receive this paper from Prof. Dr. Winfried Tilmann of Hogan Lovells which suggests that it might be possible for the UK, post-Brexit, to nevertheless be involved in the Unitary Patent (European Patent with Unitary Effect or EPUE) and Unified Patent Court (UPC). Many have wondered whether this could be the case; few have come up with a plausible legal basis for such a scenario (given that the CJEU ruled the previous proposal for a European patent litigation system incompatible with the EU Treaties for reasons including the involvement of non-EU states). The IPKat will present the paper and hopes that our dear readers may provide their comments.
EPUE-Reg and UPCA after Brexit
The British voters have voted for a Brexit. What does that mean for the EPUE-Reg and for the UPC Agreement (UPCA)?
There is no immediate effect, since Art 50(2) EUC provides for a two-year period for agreeing on the details of an exit. During that period, the details of any UK participation in the patent package must be agreed upon for the time after the legal effect of the exit has taken place (legal exit).
What are the options for the EPUE-Reg and for the UPCA if a continuing participation of the UK in the patent package is desired?
The possibility of an extension of the unitary effect of an EPUE to the UK could be provided for by a Protocol of the Administrative Committee prepared by the Preparatory Committee. The competence of the Administrative Committee for that part of the proposed Protocol could be based not only on Art 142 EPC but also later on the exit-agreement UK-EU. If the Protocol were based (also) on the exit-agreement UK-EU, the competence of the Administrative Committee could be based on Art 87(2) UPCA, because the Protocol would bring the UPCA into line with Union law. In that case ratification by the CMS or by the UK would not be needed.
The same applies for the part of the proposed agreement of the CMS according to which a CMS who, at the time of ratification, was an EU-MS but does not continue to be an EU-MS may stay within the UPCA. This change may be brought about by a Protocol to the UPCA based on Art 149a(1)(a) EPC and later on the exit-agreement UK-EU, in combination with Art 87(2) UPCA, because the Protocol would bring the UPCA into line with Union law. Ratification by the CMS and by the UK would not be needed.
a) The UK should use its present position as EU-MS and deposit its instrument of ratification of the UPCA as soon as possible. In that case the UPCA could enter into force well before the exit-agreement becomes operative.
b) After the entry into force of the UPCA, the Administrative Committee of the UPCA should amend Art 84 UPCA in saying that a CMS will not lose its contractual position if it leaves the EU.
c) The Administrative Committee should, at the same time, establish a Protocol containing an agreement of the EPC-MS providing for an extension of the unitary effect of an EPUE to the UK.
c) Both agreements should be endorsed in the exit-agreement EU-UK. With the exit-agreement becoming operative, the two agreements (b and c) would be covered by Union law (the exit-agreement being of such quality) thus providing the basis for a retroactive application of Art 87(2)) UPCA.
d) At the date when the exit-agreement becomes operative, the UK will stop being an EU-MS but its further adherence to the UPCA would be based on the amended Art 84 UPCA. The UK would be ready to receive the unitary effect of an EPUE on the basis of Art 142 EPC.
1) is this legally possible - would the CJEU endorse the legal basis and conformity with EU law?; and
2) is it politically achievable?
What do our readers think?