Susie Middlemiss from Slaughter and May tells us about the latest developments in the creation of the Unified Patent Court and Unitary Patent system

The past few weeks have seen two significant developments in the process for setting up the Unified Patent Court (UPC). The UPC is a new litigation system established to enforce a new form of patent – the Unitary Patent (UP) – which will provide patentees with a single patent right enforceable across Europe. Before the new system can begin to operate, ratification of the UCP Agreement by the UK and Germany is required.

On Monday 26 June, the UK Parliament was presented with secondary legislation which is the final legislative step in the UK’s ratification process and will pave the way for the UK Government to formally ratify the Agreement. This step would appear to ease uncertainties which had developed following the Brexit referendum result and the General Election as to whether the UK would ratify the UPCA.

Meanwhile, the Chairman of the UPC Preparatory Committee confirmed in a statement that the opening of the UPC is likely to be delayed until early to mid-2018. This is significantly later than the original plan of having the court operational from December 2017. The delay is due to problems with ratification not just in the UK but also in Germany, where ratification has been postponed pending a judgment of the German Constitutional Court. There is little detail so far on the substance of this claim or the probability of its success.

Despite the delays and uncertainties, the current expectation is nevertheless that the UPC will come into operation within the next year and BIA Members should make preparations accordingly. Members should be aware that European patents and pending European patent applications will automatically be under the competence of the UPC unless an opt-out is registered by the patent owner. There will be a ‘sunrise period’ of at least three months prior to the opening of the UPC in which patent owners can register their opt-outs. Opting-out will protect the patent owner from an attack on their patent which could lead to it being lost across Europe. Whether the benefits outweigh the costs is likely to vary depending on the nature of each individual patent.

Patent owners should also be aware of the potential risk that the UK may leave the jurisdiction of the UPC following Brexit. The latest delays reduce the time available for when the UK could join pre-Brexit and could ultimately make it difficult for the UK to join which could have a knock-on effect on the viability of the system as a whole.

BIA members should seek advice on the best option for them. The BIA has also updated its guidance document to reflect the latest developments.