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June 24, 2016

Contrary to our beliefs, the UK has voted for leaving the EU. This will delay the opening of the gates of the UPC. Article 89 of the UPC Agreement provides that the Agreement shall only enter into force in case the three Member States in which the highest numbers of European Patents had effect have ratified the Agreement. That includes the UK. There are rumors as to how things will proceed. The most daring one is that the UK will ratify despite Brexit and negotiate a leave from the UPC Agreement along all other issues it has to deal with. More likely is the idea to bring Article 87 (2) of the Agreement into operation: “The Administrative Committee may amend this Agreement to bring it into line with an international treaty relating to patents or Union law.” One could argue that, with Brexit, the Agreement is no longer “in line” with Union Law. Hence, the Administrative Committee might amend Article 89 of the Agreement to read “… including three of the four Member States in which the highest number of European patents had effect…” The problem is that, at this moment in time, there is only a Preparatory Committee and no Administrative Committee. The protocol to the UPC Agreement on provisional application could be a tool to solve this problem. Yet, the protocol as it stands does not refer to Article 87 or Article 89. Finally, it has been suggested that the referendum (or the notification to the European Council of the intention to leave) is sufficient to no longer make the UK a Member State in the sense of Article 89 UPC Agreement. While we are used to a lot of stretching when interpreting laws, this will not be acceptable. Beyond rumor, however, is the statement of the head of the Preparatory Committee, Alexander Ramsay, stating that the project will continue. What is needed is likely a formal revision of the UPC Agreement, with or without subsequent ratification of the participating states. This can be achieved rather quickly, unless those not in favor of the current structure of the Agreement see this as a chance to rectify existing mistakes, and/or to delay the project into the far future. In any case, with the UK actually having left the EU the UPC will open its gates.

May 4, 2016

We are coming closer to the needed 13 ratifications. Bulgaria has just put everything in place to allow the government to ratify. Eileen Tottle of the Preparatory Committee has reported that Hungary and Slovenia will ratify shortly. This would bring the total number up to 12 ratifications - still excluding Germany and the UK. Eileen has confirmed the long spread rumour that Germany is expected to be the last of the crucial three necessary ratifications of the three largest EP-filers of the member states (currently UK, France and Germany) to ratify. Germany is supposed to hold back its ratification until the court is ready to start. Upon Germany submitting its ratification document in Luxembourg the 4 month period provided in Art. 89 will be triggered. The court is to on the first day of the fourth month after the deposit of the thirteenth instrument of ratification.

May 4, 2016
Ratification / Brexit

Ratification by the UK is a hotly discussed topic. Parliament is working for ratification. There are two Statutory Instruments to be signed before ratification meant to bring UK laws in line with the UPC Package and coming into force upon ratification. The Statutory Instrument (2016 No. 388) was signed on 12 March 2016 without the Parliament needing to amend it. The other SI is required to reflect the UPC Protocol on Privileges and Immunities. It is now being drafted following the recent approval of that Protocol by the Preparatory Committee at its February meeting. This is in line with the UK government having adopted a policy whereby it proceeds on all matters on the basis that the UK will remain in the EU. Yet, will there be ratification before the referendum. The UK IPO has explicitly stated that “the UK’s EU referendum will have no effect on UK ratification of the Unified Patent Court Agreement by the middle of 2016. This is in line with the timescale identified for the conclusion of the preparatory work necessary for the UPC to become operational. Ratification will happen before the Court is expected to open, in early 2017”.
Yet, it is doubtful that this holds true in light of the latest blow against the EU supporters in the UK by Panama papers of PM Cameron and mayor Johnson declaring to be in favour of a Brexit. Ratifying an international treaty giving away British competence in patent matters would immediately induce loud spoken arguments that Cameron is trying to decide in a rush although there is no such rush. Finally, among those for a Brexit we also find Justice Secretary Michael Gove. It is unlikely that the Justice secretary will push forward a project he does not endorse without substantial need. He will rather suggest to wait until after the referendum.

May 4, 2016

Among the issues less known to the public is the application phase for judges. On May 15, the Preparatory Committee announced that the UPC judicial recruitment package had been agreed with the advertisements to be published in May (Advertisement for judges ). 50 Judges are expected for the time being. The run for the positions is not as intense as previously thought. The reason is not that much the income but the consent to secondment (UK), uncertainty of the workload, the place of work, and the handling of insurances, pensions and the like in the course of such changes (Germany).

May 4, 2016
Last Sets of new Laws

The Code of Conduct ist expected to be agreed at the next meeting of the Preparatory Committee on May 20. The Protocol on Privileges and Immunities will enjoy a signing ceremony by the end of June.

May 4, 2016
Finally: Some Companies reveal future strategy

Large filers like Siemens have publicly declared to (only) selectively opt out. The intend to use the UPC from the beginning. As for filing strategy Siemens has claimed to consider 20 % of its long term portfolio to be unitary. Siemens will use the possibility of "double protection" provided by German law if a European patent is unitary or not opted out. Siemens has declared to be willing to use the UPC. However, where possible it will continue to file oppositions and not rely on more costly revocation actions.

March 3, 2016
UPC - Proposal for Court Fees and Recoverable Costs

Last week, the Preparatory Committee proposed the amounts of court fees and recoverable costs. There will be fixed fees and value-based fees: For infringement actions, the court fees shall be € 11,000 minimum plus a value-based fee for actions with a value-in-dispute exceeding € 500,000. The ceiling for the value-based fee shall be € 325.000 (for an action with a value-in-dispute of more than € 50 m). For revocation actions, a fixed court fee of € 20,000 shall be due. As regards reimbursement of legal fees (for the most part patent attorneys’ and lawyers’ fees) the draft proposes ceilings between € 38,000 (value-in-dispute of € 250,000) up to € 2 m (value-in-dispute of more than € 50 m). Also, it is proposed that no official fee shall be charged for an opt-out. For more details, please look at the Guidelines and the Rules.

March 2, 2016
Proposed German Legislation on Double Patenting

In a legislative draft dated February 5, 2016 it is suggested to lift the traditional German prohibition of double protection: A German patent and (1) a parallel traditional (non-opted out) European Patent or (2) a European Patent with unitary effect (“Unitary Patent”) may exist in parallel. This means that the proposed law allows double patenting to a bigger extent than is currently the case in Germany. To protect the defendant from being sued in parallel (before the UPC and national German courts), he is given the right to object to a parallel infringement suit in Germany.

August 6, 2015
Unitary Patent: Expected renewal fees increase its attractiveness

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On June 24, 2015, the Select Committee with its majority recommendation of the “True Top 4”-proposal held out the prospect of a clear savings potential by making use of the unitary patent. If the Select Committee reaches a consensus on a corresponding allocation key in mid-September, an economically convincing argument, especially for the medium-sized companies, would further smooth the way for the unitary patent.

August 6, 2015
UK wagging the UPC

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Even though it was considered unlikely that the UK ratifies the UPC as a European project before the UK referendum took place, latest news affirm that the necessary legislative preparations shall be completed in spring 2016. Learning from the Grexit-discussion consequences of a possible loss or delay of a UPC-key Member State should be discussed. How intense does the UPC depend on the UK?