|Sudden moments of clarity are always a good look for IPKat|
- respect for the supremacy of EU law;
- the possibility of claiming damages and/or instituting infringement proceedings for breach of EU law;
- uniformity through the making of preliminary references. (see para 72 of Counsel's Opinion).
The UK would be required to accept the supremacy of EU law in its entirety as regards all such disputes as fall within the jurisdiction of the UPC. This would include, for example, competition law, fundamental rights arising under the Charter and general principles of EU law, as well as the specific patent rules contained, for example, in the Biotechnology Directive, as well as possible future EU legislation. (para 76)So, while it may be legally possible for the UK to overcome the requirements of Opinion 1/09 by a new agreement, it could still be very politically sticky to sell a treaty which proposes the ongoing supremacy of EU law over the UK - even within the relatively limited context of patent disputes before the UPC.
Amendments to the UPC Agreement
As Counsel's Opinion raises, Article 87 of the UPC Agreement - allowing for amendments to it - would not come into force until the Agreement itself does. That is, after the mandatory ratifications have taken place, including ratification by the UK. For this reason, unless UPC Agreement contracting states can be persuaded to unanimously agree amendments to the Agreement itself or a new Protocol could be drawn up, amendments by the UPC's Administrative Committee would have to wait until it comes into force. In light of this, it's safe to say that the amendments required can by no means be guaranteed.
With that caveat taken on board, the extent of the amendments to the UPC Agreement itself that were identified by Counsel are surprisingly brief and few:
- The terms relating to 'Contracting Member State' would have to become 'Contracting State' in Article 2(c).
- Rather than saying the UPC is subject to the same EU law as national courts, being a court common to Member States, it should be "subject to the same obligations under Union law as any national court of
the Contractinga Member State s"in Article 1.
- In Article 21, a reference to "any national court of a Member State" should replace "any national court".
- Similarly, Article 29 which deals with exhaustion should refer to the market in Contracting States instead of just "in the Union".
- Finally, various references to “Member States” elsewhere would need to be amended to include the UK (and potentially other non-Member States!?).
One apparently insignificant footnote in the Opinion caught the IPKat’s eye. Footnote 18 states “Although secondary legislation enacted under section 2(2) of the European Communities Act 1972 will lose its legal basis, and therefore its effect, upon the repeal of that Act.” No further explanation is given of this assertion. The IPKat has seen this suggested before, but has also seen suggestions to the contrary. EU Directives are implemented in UK law either as primary legislation (Acts of Parliament), in which case it is universally agreed that unless amended or repealed such legislation remains in force, or by secondary legislation (Statutory Instruments [Orders in Council]) deriving legal basis from section 2(2) of the ECA.
In the case of such Statutory Instruments, some commentators believe that they will survive the UK leaving the EU, either because the ECA will not in fact be repealed (and some authors believe that the repeal is not necessary upon the UK leaving the EU, the ECA simply ceases to have any EU legislation to bite on), or because repeal of the ECA does not invalidate SIs that were at the time lawfully enacted under Section 2(2) ECA. The CIPA impact paper supposes that secondary legislation will remain in force for one or other of these reasons. But the real constitutional status of such secondary legislation seems to be unclear, and so the IPKat wonders whether any readers can provide reasoning or legal basis for whether or not an SI remains in force, once lawfully enacted, if the Act giving it legal basis is later repealed.