Innovators are attempting to determine what to do with their European filing strategies with Brexit becoming more of a reality each day. As laid out in my first post on the subject, the availability of the European Patent Convention (EPC) post-Brexit will continue to make the normal filing methods through the European Patent Office (EPO) available. The same may not be true for the forthcoming Unified Patent Court Agreement (UPCA) which is of greater concern.
THE PROMISE OF THE UPCA
Presently, the EPO evaluates patents under the patentability guidelines of the EPC. Once granted by the EPO, the application must be validated in the countries of the applicant’s choosing, which includes filing fees, complying with validation requirements, and maintaining the patent for each selected country. The UPCA is intended to create a pan-European patent that supplements the pre-grant policies of the EPC by addressing the complexities and costs after a patent is granted at the EPO.
The UPCA, once ratified and implemented, will provide a unitary patent that has a core set of laws for determining infringement among all member countries. As indicated by the name, unified patent courts will also be established for hearing cases by judges trained to hear patent law cases and in some instances Central Divisions for hearing only certain subject matter. Munich, for example, will be for mechanical and engineering subject matter.
By doing so, the UPCA seeks to avoid litigations across numerous countries related to the same patent, which may be interpreted differently in accordance with patent laws that vary from country to county leading to inconsistent outcomes. Simultaneously, the existence of a unitary patent removes the validation process and the need to maintain multiple patents.
Once obtained, the patent allows a seven-year window to opt-out from participation and into the typical processing through the EPO. In order to opt-out, the patent holder cannot have any pending litigation. Opting-out may be enticing, to those who become concerned that they will be pulled into a foreign country, where litigation will be undertaken in a foreign language.
A ROAD LESS CERTAIN
Where does Brexit fall into all of this? Currently, only EU members are allowed to take part in the UPCA. Also, ratification requires thirteen countries, which includes the three countries with the most validations from the previous year. Those three countries are Germany, France, and the UK. So far there are 11 ratifying countries, and only France has signed on from the big three.
When Brexit won out by a narrow margin, many wondered what would happen. In a surprising move on November 28, 2016, the UK announced that they would be moving ahead with ratification of the UPCA in the near future. It is now expected that both the UK and Germany will ratify around March. This sets up a timetable for provisional or sunrise applications in the spring and implementation by the end of 2017 or early 2018.
Presently, the UK is expected to be a participant in the UPCA and will continue to be involved. The Unified Patent Court has also moved forward with announcing a Central Division in London as originally planned. The placement of the Central Division has not come without issue, as Milan has challenged the placement and the UK’s involvement in the UPCA. Milan is the site of a Local Division, which is not as prestigious as a Central Division, as it is more generalized and is created on the basis of the number of filings within that member state at the time the UPCA goes into effect.
It is still unclear how long the UK’s involvement will last. The UK Minister of State for Intellectual Property, Baroness Neville Rolfe, was aware of the relationship between the EU, the UK and the UPCA in stating that “[a]s long as we are members of the EU, the UK will continue to play a full and active role… But the decision to proceed with ratification should not be seen as pre-empting the UK’s objectives or position in the forthcoming negotiations with the EU.”
With the tentative nature of the UK’s involvement in the UPCA in mind, it would be prudent to seek both a unitary patent and a separate UK patent in order to better ensure pan-European protection. It is possible that through the negotiations taking place during the next two years between the UK and the EU, or more, that the EPC, UPCA, or both may be modified to allow the UK’s inclusion in the UPCA with EU membership so that separate filings will not be needed.