The Draft Patents (European Patent with Unitary Effect and Unified Patent Court) Order 2016

Jane Lambert

In Implementing the Unitary Patent in the UK 22 Feb 2016 I discussed the consultation on the implementation of the Unified Patent Court Agreement in the legal systems of the United Kingdom. The consultation document, which was entitled Technical Review and Call for Evidence on Secondary Legislation Implementing the Agreement on a Unified Patent Court and EU Regulations Establishing the Unitary Patent, contained a draft statutory instrument upon which the public's views were canvassed. I discussed the responses to that consultation and the government's reply. The government has now published a draft statutory instrument known as The Patents (European Patent with Unitary Effect and Unified Patent Court) Order 2016 which will come into effect on the date of entry into force of the Agreement on a Unified Patent Court.

The Draft Order

The draft order consists of three articles:

• Art 1 concerns citation, the entry into effect and the extent of the order;
• Art 2 amends the Patents Act 1977; and
• Art 3 provides that any question whether an act done before commencement infringes a patent is to be determined in accordance with the law relating to infringement in force at the time the act was done.

Entry into Effect

Art 89 (1) of the UPC Agreement provides:

"This Agreement shall enter into force on 1 January 2014 or on the first day of the fourth month after the deposit of the thirteenth instrument of ratification or accession in accordance with Article 84, including the three Member States in which the highest number of European patents had effect in the year preceding the year in which the signature of the Agreement takes place or on the first day of the fourth month after the date of entry into force of the amendments to Regulation (EU) No 1215/2012 concerning its relationship with this Agreement, whichever is the latest."

The three member states in which the highest number of European patents had effect in the year preceding the year in which the signature of the UPC Agreement are France. Germany and the UK. France and 8 other countries have so far ratified the Agreement and s.17 of the Intellectual Property Act 2014 inserts a new s.88A and a new s.88B into the Act to enable the UK to do so. The German federal Ministry of Justice and Consumer Protection has introduced draft legislation to enable Germany to ratify the Agreement (see Entwurf eines Gesetzes zu dem Übereinkommen vom 19. Februar 2013 über ein Einheitliches Patentgericht). If, as is expected, that bill passes before the end of the summer the conditions set out in art 89 (1) of the Agreement will have been fulfilled by the end of the year and the Agreement and statutory instrument will come into force early in 2017.

Changes to the Patents Act 1977

Art 2 is by far the longest and most complex part of the draft Order.

The following sections are to be amended:

• s.58 (references of disputes as to Crown use), 
• s.69 (meaning of infringement), 
• s.77 ((effect of European patent (UK), 
• s.91 (evidence of conventions and instruments under conventions), 
• s.92 (obtaining evidence for proceedings under the European Patent Convention), and
• s.130 (interpretation).

A new s.83A is to be inserted which in turn inserts new Schedules A3 and A4.   Schedule A3 will provide for the application of the Act in relation to unitary patents.  Schedule A4 will provide for the jurisdiction of the Unified Patent Court with regard to unitary patents and European patents (UK).

Further Information

As the changes are too complex to be discussed in a single article I shall deal with them separately in future posts. Should anyone wish to discuss this article or the unitary patent or Unified Patent Court generally please call me on 020 7404 5252 during normal office hours or use my contact form.