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November 2016 - Unitary Patent - Consequences of a Brexit

The Unitary Patent Protection has been defined by two EU Regulations. It does not seem possible for a non Member State of the European Union to participate to such a Unitary Patent Protection.

1. How could UK participate to the Unitary Patent after Brexit ?

Some voices emitted the idea that the Member States of the European Patent Convention (EPC) could agree to a special agreement according to Article 142(1) EPC. A group of EPC Contracting States, including UK, could then agree that a European patent may only be granted jointly in respect of all those states. A kind of “further Unitary patent” would then be created, which would cover UK.

It is however questionable whether such a solution would be politically acceptable.

2. How could Unitary Patent be enforced ?

If the UPCA enters into force and UK remains a Contracting Member State of the UPC, the Unitary patent may or may not extend its protection to the UK territory. The only strange consequence if the Unitary patent does not extend to UK is that the London local division and the London section of the Central Division will be competent for deciding infringement and validity of Unitary patents not extending to the UK territory.

3. Conclusion

It can be concluded that there are three ways of reaching an entry into force of the UPC Agreement.

  • - A quick way which is however uncertain consists in having the UK ratifying already now the Agreement before leaving the European Union with the hope that legal solutions will be found and confirmed in an exit agreement and by suitable amendments of the present UPC Agreement.

It must be noted that amendments of the present UPCA could be made by the Administrative Committee which may amend the Agreement to bring it into line with Union law according to Article 87(2) UPC. If the changes can be made in that way, no new ratification process would be necessary in the various Contracting Member States.

This leads to a certain risk since a Member State of the European Union could at any time ask for an opinion of the CJEU, which could be negative.

  • - A slow but safer way would be to first amend the present UPC Agreement to make possible for UK to remain a Contracting Member State after leaving the EU and to obtain confirmation by the CJEU that this amended Agreement would be compatible with the European Union Treaties.
  • - Finally, a third way could be for the signatory States to decide already now that the UPC Agreement should enter into force without UK. It would then be necessary to define a new location for the London section of the Central Division (if the rather complicated solution of three locations for a “Central Division” is maintained).

This third way could lead to entry into force of the Agreement only slightly amended as far as the Central Division is concerned. The future decisions of the UPC would then not anymore cover the territory of the United Kingdom.