UK's UPC Consultation calls for evidence on draft legislation to avoid a law of "unintended consequences"

It's here.  Numbering at almost 100 pages, the UK Intellectual Property Office's consultation published last week on the draft UK legislation that will implement the Unified Patent Court Agreement and the Unitary Patent Regulations is a feast of information for UPC fanatics, like the AmeriKat.

The IPO is, in their words:

"seeking views on the drafting, structure and effect of the draft legislation which will allow for the implementation of the Unified Patent Court Agreement and the associated EU Regulations which introduce the Unitary Patent. We are also asking for relevant evidence on the way that the proposals will work in practice in order to inform our assumptions about economic impacts, and to assist with decisions on the detail of proposed legislation."

In short, tell us how the UPC Agreement is going to impact the current status of patent litigation and law in the UK.  In their section on the scope of the consultation, the IPO state that they hope to receive responses which will ensure that the proposed legislation implementing the UPC will not create any "unintended consequences".  Anyone familiar with the UPC Agreement and the Unitary Patent Regulations will know that the rushed/compromised drafting of both will ensure that the consultation's responses will be bristling with issues.

The proposed changes to the UK Patents Act 1977 fall into three broad categories which are accompanied by impact assessments for each (which include key assumptions like that the UK remains part of the EU ::cough::). These categories are as follows:

1.  Jurisdiction:  Subject to the much-disputed and misunderstood transitional period regime, sections of the UK Patents Act  1977 relating to the exclusive jurisdiction of national courts to hear infringement, declaration of non-infringement and revocation proceedings will no longer apply to UK designated European Patents or SPCs based on those patents.  Proceedings concerning unitary patents will automatically be subject to the exclusive jurisdiction of the UPC once the system comes into force.  Therefore, those sections in the Patents Act will also not apply to unitary patents.     

Irrespective of the ratio of box to Kat, the
AmeriKat  will try and make herself fit.
The UKIPO is trying to do the same with  fitting
the UPC Agreement into UK law.  

However, this is old ground.  The new interesting impacts on jurisdiction are those in relation to the Comptroller-General of Patents.  In the UK the Comptroller can decide on disputes relating to patents and, sometimes, SPCs.  For those patents that will be subject to the jurisdiction of the UPC, the Comptroller will no longer be able to deal with those issues.  However, the Comptroller's power to issue, upon request, non-binding authoritative opinions relating to the validity or infringement of a UK designated patent will remain and will also apply to unitary patents or classic European Patents that are subject to the UPC's jurisdiction.  The basis for this reasoning is that because the opinions are not binding, the implementation of the UPC will not impact on this service and it can continue without any changes.  

2.  The Unitary Patent:  There are two changes of interest in this category.  The first is the section on double patenting.  The UK does not permit more than one patent to be valid in the UK in relation to the same invention.  The Comptroller has the power to revoke a national patent where a UK designated European Patent protects the same invention.  The draft legislation extends this power so that the Comptroller has the ability to revoke a national patent if a unitary patent is registered for the same invention.  

Unlike those who issue groundless threats,
Kats don't pull punches.  A fuzzy IP-packed
paw will hit you every time.  

The second change of interest is on groundless threats.  If a patentee threatens to bring a patent infringement action in the UK, but there is no infringement or the patent is invalid, then the person threatened may be able to claim relief from the UK courts on the basis that they have been subjected to a "groundless threat".  Groundless threats were recently subject to a Law Commission report, published this Spring, which proposed changes to the current system.  Although the Government has yet to respond to this report, the importance of the groundless threats provisions are such that the UK IPO considers that they should apply to unitary patents.  

The interesting bit is that the UPC Agreement does not cater for groundless threats and, in turn, does not have jurisdiction for groundless threats.  Therefore, the UK IPO proposes that the current section 70 of the Patents Act be amended to make sure that  groundless threats will be applied to unitary patents and that it covers threats to bring proceedings in respect of a unitary patent before the UPC.  Oddly, at paragraph 83 of the consultation, the UK IPO states that "the threat itself will still have to be made in the UK...because section 132 of the Patents Act limits the Patents Act to acts in those territories".    Hmm.  But given the "unified" and "unitary" nature of the court and rights concerned, couldn't a threat made in one country to bring proceedings before the UPC be considered a threat in the UK?  

3.  Patent Infringement:  The stand-out change in this section is in relation to computer programs.  If there was ever a reminder that no one seemed to have read the UPC Agreement terribly thoroughly before signing it, Article 27(k) of the Agreement is evidence.  Article 27(k) provides that an exception to infringement for: 

 "the acts and the use of the obtained information as allowed under Articles 5 and 8 of Directive 2009/24/EC, in particular, by its provisions on decompilation and interoperability".  

The Software Directive relates to the protection of computer programs which are protected by...copyright.  The Directive provides that third parties who have lawfully acquired a computer program can copy the program or decompile it if it is necessary for interoperability.  There are other limited exceptions, but they have all been implemented into UK law as exceptions to copyright.  However, the UPC Agreement applies these exceptions to patents.   

Whoever put Article 27(k) into the UPC Agreement
is having a laugh....

The UK IPO states that where software is protected by a patent there are already exceptions from infringement for research and private acts.  Their view is that these exceptions will cover some of the acts provided for by the Directive.  However, the Directive goes further and provides exceptions for interoperability, reproduction and de-compilation.  They therefore propose that the draft legislation merely reference Article 27(k) instead of implementing the wording into the draft legislation.   

When this provision was pointed out to the AmeriKat, she and her fellow UPC-frantic friend just shrugged their shoulders not knowing where on earth this had come from.  She therefore asks the Kat's dear readers from across Europe whether the provisions of this Directive or similar provisions have been applied in their national law as an exception to patent infringement. 

The other notable change in this category is that made to the contributory infringement provisions under section 60(2).  Under this section, patentees can prevent a third party providing assistance to someone to infringe a patent by supplying "the means relating to the essential element of the invention" which they know will contribute to an infringing act.  Currently, the supply of the "means" has to be in the UK, to someone in the UK.  That it is to say, there are territorial restrictions on the operation of s.60(2) (i.e. the double territoriality requirement).  However, the draft legislation proposes to change this by extending the scope so that if someone in the UK were to provide the means to someone in France which enabled them to infringe a unitary patent, it would be considered contributory infringement.  

What happens to those who do not meet the
11:45 PM deadline on 2 September 2014. 

The consultation ends on 2 September 2014 at 11:45 PM, meaning that those enthusiastic UPC fans can spend their summer drafting meters of prose about all of the "unintended consequences" of implementing the UPC Agreement and Regulations into UK law.  She encourages everyone, especially those incredibly vocal Kat commentators, to contribute to this consultation as she knows the UK IPO is eager for responses.

In the meantime, the AmeriKat will be wading through the layers upon layers of assumptions made in the impact assessment reports to try and figure out just what impact theses changes may or may not have on UK law and the UK generally.  The only thing she knows for sure is that the uncertainty over the level of fees is the biggest blank space that desperately needs to be filled in before anyone, court users and Governments alike, know what the impact of the new European patent litigation system will be.