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UPC Update

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The Unified Patent Court (UPC), if implemented, will provide a common international court for litigating European patents in participating EU Member States in relation to infringement and validity of both Unitary Patents and European patents, thereby providing a single procedure in place of possible parallel litigation.  Companion Unitary Patents (UPs), if implemented, will make it possible to obtain patent protection in up to 26 EU Member States by submitting a single request to the EPO, providing a simpler and more cost-effective procedure for applicants.

Although the UK will not participate in the UPC, all Forresters’ attorneys who are dual qualified as both UK & European Patent Attorneys will maintain rights of audience before the UPC as the treaties are presently written.

On 26 November 2020 the German Bundestag approved legislation by the necessary 2/3 majority to allow the German government to ratify the UPC treaties.  Passing the legislation with the required 2/3 majority has addressed the ruling of the German constitutional court that the UPC legislation was not compatible with the German constitution.  Therefore, the path is set for Germany to ratify the UPC treaties in due course.  A further two Signatory States need to agree to be bound by the Protocol on Provisional Application in order for the project to move into its final phase.

It is written into the treaties that there will be a seat of the central division in London (A.7 (2) AUPC).  Our view is that if the treaties are opened to change this, which is very likely if the UPC is to continue, various other governments may want to change further things in the treaties and the consequent haggling is likely to delay the UPC by years.  Ireland, Italy, the Netherlands, and France are rumoured to be vying for the seat of the central division presently planned for London.  Additionally, even if the only treaty change is to remove the central division in London, the ratification process may have to effectively start again in some countries, which also takes years in many cases.

There is also the question as to whether other states will want to participate at all in a UPC and Unified Patent system which doesn’t include the UK.  This is especially so in light of the UK patent litigation expertise which was due to form part of the UPC, in particular, through the involvement of UK judges both as adjudicators and as advisors to the UPC committees.

With the hurdle of the German constitutional complaint overcome, the UPC and UP may continue to progress towards reality, although may uncertainties remain.  For further information in relation to the UPC and UP, please contact Jack Gunning or your usual Forresters contact.