We can sign-up, but can we opt-out?: 24 Member States sign Unified Patent Court Agreement

The signed Unified Patent Court Agreement
The AmeriKat tucked herself away in her office this afternoon to watch the signing of the Unified Patent Court Agreement. This is hardly a news item, as it was expected that at least the required 13 would sign (and then ratify) the Agreement and, as the IPKat pointed out, had no one signed it that would have been news.

Nevertheless, the AmeriKat was positioned when after 30 minutes of waiting, the video finally started which showed various permanent member representatives mingling, gossiping and even taking photos with their camera phones while awaiting for proceedings to commence. To someone who's past two year's has been riddled with late nights, calls for action and literally thousands of e-mails from and to industry, lawmakers and practitioners in an attempt to resolve the crucial issues affecting the new unified patent system, the casual and triumphant atmosphere was a trifle unsettling.

As if written by Armando Iannucci himself, the only jovial moment occurred just before the signing when some attendees, unbeknownst to them, left their microphones on as they went through the list of representatives from the Member States that would be signing. There appeared to be some questioning as to whether certain representatives were male or female and some comments about where Michel Barnier would be choosing to sit.

Ireland's Minister for Jobs, Enterprise and Innovation - Richard Bruton - commenced the proceedings by stating:

"I think this is a very significant occasion. I know that this has been a product of work over many years - indeed over almost 40 years from when the idea was first nurtured as a concept. I would like to welcome Michel Barnier who has prioritized patent reform. We were discussing this morning in the Competiveness Council the strategies for growth and the importance of the single market and here I think is a very tangible expression of creating a single market in a very important area - the area of patents - where clearly in many of these benchmarking rankings we fall behind competitors. Its an area where such actions as those proposed will significantly reduce costs for SMEs and also costs of enforcement. So I think this is a significant day. I know that there are very many people who have contributed this. I think there is a saying "If we see far its because we stand on shoulders of giants" and there have been many giants who have attempted to bring what we are now achieving today to fruition. We are very fortunate to be here to sign on behalf of our Member States this important piece of new architecture within the European Union. I would like to thank the Cyprus Presidency, in particular, who put a lot of work on this….and the role of the European Parliament who has been a significant player...I would like to invite the representatives to sign the Agreement on the Unified Patent Court…beginning with Belgium."
And so with that, the thick book containing the Agreement made its rounds around the table to 24 Member States who put their John Hancock on its pages (save, of course, for Poland and Spain who passed the book on - Bulgaria also has not signed but is expected to do in the coming days).  Soon after, Vince Cable (who was the hand the signed the Agreement on behalf of the UK), hailed the Unified Patent Court Agreement as providing a big boost for London who will soon be hosting a branch of the Central Divsion of the Court.  He stated:
"The decision that London should host this new court shows not only the confidence in our legal sector but also the strength of the UK's intellectual property (IP) regime. Agreement on a unified patent regime is a good result as it will mean defending a patent across Europe will now be much simpler."

Although the proverbial fat lady has taken the stage, she hasn't quite sung yet as it is now onto the pesky matter of ratification.  Before the UK ratifies, CIPA, the IPFed and other professional bodies have written to the IP Minister Lord Younger "calling for a proper, evidence-based economic impact assessment of the effect on the UK economy, to be carried out and made widely available before Parliament is asked to ratify the UPC Agreement."  Another call to tender, anyone?

The next meeting to discuss Member States' ratification and to establish the infamous Preparatory Committee is planned for next Wednesday (Deirdre Kilroy kindly reminded the AmeriKat that Ireland will have to undertake a constitutional referendum in order to ratify the Agreement).   The AmeriKat hopes that soon after next week's meeting in Brussels, we can finally enjoy the public consultation of the Rules of Procedure. 

In the meantime, the UPC geeks (of which the AmeriKat is one of them), are trying to clarify the drafting of Article 83 of the Agreement which relates to the transitional measures and the opt-out procedure. Article 83 reads:


Transitional regime

(1) During a transitional period of seven years after the date of entry into force of this Agreement, an action for infringement or for revocation of a European patent or an action for infringement or for declaration of invalidity of a supplementary protection certificate issued for a product protected by a European patent may still be brought before national courts or other competent national authorities.

(2) An action pending before a national court at the end of the transitional period shall not be affected by the expiry of this period.

(3) Unless an action has already been brought before the Court, a proprietor of or an applicant for a European patent granted or applied for prior to the end of the transitional period under paragraph 1 and, where applicable, paragraph 5, as well as a holder of a supplementary protection certificate issued for a product protected by a European patent, shall have the possibility to opt out from the exclusive competence of the Court. To this end they shall notify their opt-out to the Registry by the latest one month before expiry of the transitional period. The opt-out shall take effect upon its entry into the register.

(4) Unless an action has already been brought before a national court, proprietors of or applicants for European patents or holders of supplementary protection certificates issued for a product protected by a European patent who made use of the opt-out in accordance with paragraph 3 shall be entitled to withdraw their opt-out at any moment. In this event they shall notify the Registry accordingly. The withdrawal of the opt-out shall take effect upon its entry into the register.  . .
The question currently being debated is if you opt-out your existing European patents from the "exclusive competence" of the UPC does that mean that the UPC nevertheless enjoys "non-exclusive competence" shared with the national courts? The effect would be that even if you opt-out your patents from the UPC's exclusive competence, cases could still be brought in the UPC. The AmeriKat thinks the intention and structure of the Article favors the interpretation that "exclusive competence" just means "competence" - otherwise what is the point of an opt-out procedure - but sloppy drafting is the enemy of clarity and reason. If readers have any thoughts on the interpretation of Article 83, please let the AmeriKat know. She can then bore/entertain you with her interpretation of Article 83.
We can sign-up, but can we opt-out?: 24 Member States sign Unified Patent Court Agreement We can sign-up, but can we opt-out?:  24 Member States sign Unified Patent Court Agreement Reviewed by Annsley Merelle Ward on Tuesday, February 19, 2013 Rating: 5


  1. May I add that "opt out from the exclusive competence of the Court" has another very important implication (highlighted by Hanns Ullrich):

    It means that if you, as patent(s) holder, opt out for your patent(s), litigation on your patent(s) will not be before Unified Patent Court, but before national courts (I agree with the AmeriKat on this point), but that's all you've opted out. The UPC agreement still apply for your patent(s), and in particular, rules defining direct/indirect infringement and limitations thereof (you know, the (in)famous Cyprus compromise).

  2. I take it that under the IPReg provisions, all UK patent attornies now have a litigation certificate and will be entitled to represent before the unitary patent court. Anyone know any different?

  3. No, because the relevant regulation (http://www.ipreg.org.uk/document_file/file/IPReg_Regulations_Website.pdf) only gives:
    i) A right to conduct appeals from and/or apply for judicial review in the High Court
    of decisions of:
    a) the Comptroller General of Patents,
    b) an Appointed Person, or
    c) any other body or tribunal in England and Wales making decisions relating to
    the subsistence, scope, grant, enforcement, exploitation or ownership of
    intellectual property rights such as may be constituted from time to time;
    ii) A right to conduct litigation in:
    a) the Patents County Court; and
    b) any County Court when the court is hearing a matter where Part 63 of the Civil
    Procedure Rules apply or any matters ancillary thereto;
    iii) A right of audience to appear before:
    a) the Patents County Court;
    b) the High Court in appeals proceedings mentioned in paragraph (i) but not
    applications for judicial review; and
    c) the appeal tribunal constituted by the Registered Designs Act 1949 (as
    amended from time to time);
    iv) A right to conduct appeals from decisions in proceedings mentioned in paragraphs
    (i)-(iii) above to the Court of Appeal and the Supreme Court.

    It's up to the UPC to decide who it recognises for representation and advocacy before it. I suspect only those who have rights before all national first instance patent tribunals in national states will get UPC rights. I certainly doubt that EPAs / (C/R)PAs will get automatic rights to litigate and advocate before it. There may even be a UPC Bar exam, one day...

  4. Can I ask what I suspect is a very stupid question: is signing that took place yesterday the 'ratification' we were expecting to take most of the year? Or is there a second step required?

  5. Thanks anon 10:14 - perhaps I was reading Article 48(1) too optimitically, noting that the German text refers to "Anwälte" rather than "Rechtsanwälte".


  6. A further comment, since under Article 88 (1) the agreement, like the EPC, is equally valid in each of the three languages German, English and French, I would have thought that there are good grounds for considering that all patent attornies with a litigation certificate are entitled to represent.


  7. May I express an alternative interpretation of the opt-out mechanism:

    After the end of the transitional period, every European patent/application will be litigated exclusively at the UPC (provided that no national proceedings are pending). If the patentee/applicant opts out "from the exclusive competence of the Court", and after the expiry of the period of Art. 83(1), an action may be brought either before the UPC or before a national court. If the patentee/applicant does not opt-out, an action will habe to be brought before the UPC. In other words, the opt-out mechanism extends the seven year transitional period of Art. 83(1) in respect of a patent that has been entered into the Registry. For this reason the request for the use of the opt-out will have to be filed "by the latest one month before expiry of the transitional period".

    If the patentee/applicant withdraws the use of the opt-out (Art. 83(4)) at some point after the expiry of the transitional period, and provided that no national proceedings are pending, the UPC acquires exclusive competence.

  8. Anon 10:48 - no, there is a separate ratification procedure required. A little while before Christmas I was asked by a client what this would involve. I spoke to an official at the UKIPO involved in the UK implementation of the unitary patent system, who claimed that this would be by "the normal method" of ratification for treaties.

    The official wouldn't be drawn on what this involves, but, intriguingly, hinted that "various options" were being considered (which rather contradicts the idea of a "normal method" being employed, if such a thing exists). If I remember correctly, the IPO were liaising with the FCO's Treaty Section lawyers on this and the end result maybe that ratification will not require Select Committee scrutiny or a Parliamentary vote.

    Though the official was frustratingly vague as to what ratification *will* involve, it seems to me that if Parliamentary scrutiny (whether by a Select Committee or by the Commons and Lords) is ruled out, the opportunity may no longer exist for us in the profession and industry to make further representations.

    As a further puzzle, I managed to establish that, if the Agreement *does* go before a Select Committee, this may not necessarily be the European Scrutiny Committee. Again, the official was rather evasive on this point and couldn't, or wouldn't, tell me who it might be. My own guess is that the European Scrutiny Committee has shown itself to perhaps be a little too rigorous in its taking of evidence and grilling of successive IP ministers, not to mention its well-known Eurosceptic leanings, so the search is on for a friendlier Committee to rubber-stamp the ratification...

    Do we have any experts in UK constitutional or treaty law who might be able to shed more light on this?

  9. Hi Amerikat (and assorted UPC geeks),

    We batted around some thoughts on this a while back, and have been resurrecting them after reading your post. Our thoughts were a bit long for the comments box, so we've written a blog post by way of response:


  10. Language discrimination cannot exist in the EU.

    This is written in the Charter of Fundamental Rights.

    So the translation regime is wrong and discrimates businesses that have to understand automated translations, instead of proper translations in EN, FR, DE.

    Is there any procedure to appeal this monster at the CJEU?


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