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| The AmeriKat never loves in haste, unless you happen to be a tasty little mouse... |
Lord Byron, Lothario of the Romantic movement and one of the greatest British poets. Not the figure that would naturally come to mind in a post about the Unified Patent Court, but bear with the AmeriKat. In 1819, in his most famous work, Don Juan, Lord Byron wrote:
"Now hatred is by the far the longest pleasure;It is a wonderful quote, illustrating that the speed in which decisions are made can mask, temporarily, the ultimate sorry fate for having made such a decision. As a keen observer of people, the AmeriKat has seen this in action in various guises. From the banal - watching the regret soaking down someone's face as their hastily ordered dish is placed next to their dining companion's more riveting platter - to the more serious. Then there are those who Lord Byron need never worry about where a decision, much less a hasty one, is unlikely to ever be forthcoming (you know who you are...).
Men love in haste, but they detest at leisure".
However, where on the spectrum will the UK's announcement of their intention to ratify the Unified Patent Court Agreement fall? Does it fall into the "ratify in haste, repent at leisure" camp?
As IPKat readers will be aware there has been significant discussion, albeit a lack of concrete action (as of yet), about the need to ensure that, if the UK does ratify, it can continue to participate post-Brexit. However, the UPCA is silent on the scenario where a signatory ceases to be a EU Member State and the ambiguity (or stone cold clarity, depending who you ask) of Opinion 1/09 does not help matters.
Over the past several months on the European patent law conference circuit, prior to the UK's announcement, everyone was agreed that continued UK involvement was desired. However, two factions began to emerge. One faction was cooing that UK industry need not worry, everything would be fine - the UK need just ratify. The litigators among you who have ever received an 11PM cold call from a transactional colleague asking whether you can "just approve this IP-heavy transaction, we are signing tomorrow" will have experienced the nervousness of the second faction. "If I have to sign this off, I just know that in a few years I or some other litigator will be cleaning up a mess...." Cue Lord Byron's "love in haste, detest at leisure" adage.
Against this backdrop, the question of what happens when the UK ceases being a EU Member State was subject to the commissioning of the Gordon-Pascoe opinion. That opinion suggested that for the UK to remain part of the UPC, additional agreements and amendments would be needed. A key issue concerns the power of courts of EU Member States to refer matters to the CJEU under Article 267 TFEU. The UPC, as a court common to EU MS, also has this power to refer questions to the CJEU (see Article 1 and 21 UPCA). However, if a contracting party to the UPCA ceases to be a Member of the European Union, the court is not common to EU MS - it will include a non-EU MS interloper, the UK. Does this mean that the UPC will not be able to refer questions to the CJEU contrary to the UPCA and EU law (see Article 20 UPCA)? The UPCA does not deal with this at all. Indeed, the UPCA does not even contemplate that a signatory will be a non-EU Member State. The UPCA refers to a party to the agreement as a "Contracting Member State" defined as "a Member State of the European Union party to the Agreement" (see Article 2(b) and (c) UPCA). This is not surprising given that, in 2013 when the UPCA was signed, no one had envisaged that the UK would, in the very near future, cease being a Member of the European Union.
So something further seems to be needed to ensure, with "sufficient degree of certainty" (to adopt the language of Article 62(4) UPCA), the UK's continued UPC participation post-Brexit. Without such measures, the impact on UK industry could be significant. For example, if the UK can no longer participate in the UPC, what happens to the coverage of Unitary Patents in the UK? What about pending UPC litigation or the enforcement of orders already granted by the UPC in the UK? Yet when the UK Government published its announcement at the end of November, no reference was made for the need for a transitional protocol to be prepared as part of its steps towards ratification.
Last week, the IP Federation published their response to the UK's announcement to ratify. In the statement, the IP Federation expressed the need to ensure that the "UPC functions effectively in the long term". They have importantly called on the UK and the other contracting Member States to urgently start work to ensure there is:
".... a legally secure route by which the UK can remain in the UPC after Brexit. If this work also makes it possible for other states which are not part of the EU but which are part of the European Patent Organisation to join the UPC this would be welcomed.".If, for whatever reason, the UK cannot remain part of the UPC on Brexit, then:
"[t]he UK government needs to provide assurances that any Unitary Patents will be recognised as UK national patents. The UK and other contracting states will also need to produce transitional arrangements to govern what will happen to ongoing litigation at the UPC and to ensure the continued functioning of the court.
Given that the clock is now ticking for the commencement of the UP and UPC, the IP Federation calls on both the UK and the other contracting states to commence work on the legal framework that will be needed for both of these options as soon as possible. It will be vital for the UK and other contracting states to provide opportunities for industry to provide input into the shape of this legal framework. The IP Federation looks forward to playing a constructive part in this process."The AmeriKat agrees Given that the purpose of the UPC is to "enhance legal certainty" in the enforcement of patents (see Recital 5 of the UPCA), it would seem perverse that the UK's ratification of the UPC would result in increased uncertainty for industry post-Brexit in patent law. So for those wishing for a quiet holiday period, get your sleeves rolled up and quills at the ready....