UK legislates to support ratification of Unified Patent Court reforms

The Patents (European Patent with Unitary Effect and Unified Patent Court) Order 2016 has been laid before the UK parliament. It will take effect on the same date that the Agreement on the Unified Patent Court enters into force.

The proposed new legislation would amend sections of the existing Patents Act of 1977 to give recognition to the jurisdiction of the new UPC and account for other aspects of the new unitary patent and UPC regime.

The publication of the draft legislation follows the release of a paper by the Intellectual Property Office (IPO) late last week which outlined the UK government's intentions on adopting secondary legislation to implement the UPC Agreement and EU regulations that establish the new unitary patent.

At the time of the release of its paper, the IPO said that it expected the new laws, now laid before parliament, to be finalised "by this spring".

Patent law expert Victoria Bentley of Pinsent Masons, the law firm behind Out-Law.com, said that the publication of the new draft legislation and the timetable for its finalisation "are welcome steps in the ratification process" but said ratification of the new unitary patent and UPC framework could still be delayed until after the forthcoming referendum on whether the UK should remain a member of the EU.

"Participation in the new unitary patent package is open to all EU member states," Bentley said. "Of the 28 potential participants, the unitary patent will apply only in those member states that participate in the Unitary Patent Regulation and sign and ratify the UPC Agreement."

"Before unitary patent protection can become a reality, at least 13 member states – which must include France, Germany and, for the moment, the UK – must ratify the UPC Agreement. The agreement will enter into force on the first day of the fourth month after the deposit of the 13th instrument of ratification or accession," she said.

"From that date European patents which have not been opted out and unitary patents will be subject to the jurisdiction of the UPC. Currently nine member states, including France but not the UK or Germany, have ratified the UPC Agreement. Finland deposited its instrument of ratification on the 19 January 2016," she said.

"As long as the UK is a member of the EU, its ratification is likely to remain mandatory in order for the UPC to proceed," Bentley said.

In its response paper published last week the UK government said that new UK legislation will be drawn up to prevent companies owning both a national patent and a unitary patent that covers the same invention. This has been reflected within the Patents (European Patent with Unitary Effect and Unified Patent Court) Order 2016 now published.

In an explanatory note published alongside the new draft legislation, the UK government said: "Article 2(5)(c) amends section 77 of the [Patents] Act to make clear that once unitary effect for a European patent (UK) is registered in the Register for unitary patent protection, that patent no longer has effect in the UK as a national patent and is to be treated as never having had effect as a national patent."

The IPO had earlier said: "The government is unchanged in its view that, on balance, the best policy is to prohibit double patenting. The law will be consistent for all European patents valid in the UK whether they benefit from unitary effect or not."

Last month the European Patent Office (EPO) said that "a complete secondary legal framework" to underpin the unitary patent and UPC reforms has now been established.

In its statement the EPO said that the secondary legal framework comprises "the implementing rules, budgetary and financial rules, the level of the renewal fees and the rules concerning the distribution of the renewal fees between the EPO and the participating member states".