Unified Patent Court Consultation

As I said in How the Intellectual Property Act 2014 changes British Patent Law 21 June 2014 JD Supra, the most important provision of the Intellectual Property Act 2014 is s.17 which inserts a new s.88A into the Patents Act 1977. That section confers power on the Secretary of State to make provision in the UK for the Agreement on a Unified Patent Court.

Why is that agreement important? It is because art 1 establishes a court common to almost all the countries of the European Union including the UK for the settlement of disputes relating to European patents and European patents with unitary effect ("Unitary patents").  That court will be known as the Unified Patent Court ("UPC") and it will consist of a Court of First Instance and a Court of Appeal. The Court of Appeal will sit in Luxembourg but the Court of First Instance will have a central division with Paris with sections in London and Munich. In addition there will be regional and local divisions of the Court of First Instance in the contracting countries.

European patents are patents granted by the European Patent Office ("EPO"). Despite their name European patents are not patents for the whole of Europe or even for the whole European Union ("EU") but for individual designated contracting countries. Thus a European patent (UK) is essentially a patent for the UK only and practically the only difference from a patent granted by the Intellectual Property Office ("IPO") in Newport is that a European patent (UK) is granted by an agency that acts on behalf of all the governments that are party to the European Patent Convention. Unitary patents will be patents granted by the EPO not just for individual countries but for almost all the countries of the EU as though they were one country.  If a Unitary patent is valid it will be valid in all those states.  If it is invalid it will be valid in none of them. The tribunal that will decide whether or not such a patent is valid or invalid and whether or not it has been infringed will be the UPC.

At present disputes over the validity and infringement of European patents are determined by national courts. In England and Wales these are the Patents Court which is established as part of the Chancery Division by s.6 (1) (a) of the Senior Courts Act 1981 and the Intellectual Property Enterprise Court ("IPEC") which was established by The Crime and Courts Act 2013 (Commencement No. 3) Order 2013 and The Civil Procedure (Amendment No.7) Rules 2013 (see Jane Lambert "What does the Intellectual Property Enterprise Court mean for Litigants in the North West?" 12 Oct 2013 IP North West). After a transitional period the jurisdiction to hear and determine disputes over the validity of European patents (UK) and whether they have been infringed in England and Wales will pass from the Patents Court and IPEC to the UPC. 

The UPC will be quite different from an English court because it has jurisdiction not only over common law countries like the United Kingdom and Ireland but also over the civil law countries whose practice and procedure is quite different from ours. Some ideas of the differences between the Civil Procedure Rules and the rules proposed for the UPC can be seen from the draft rules of procedure that appear on the Unified Patent Court's website. Now this is going to have a tremendous effect on the way we do things in the United Kingdom not just because a lot of British businesses will opt for unitary patents nor even because there will be a transfer of jurisdiction from courts in the United Kingdom to the UPC but because it will influence the way we conduct other types of litigation in the UK.

As this is an important development HM government has begun a consultation on the legislative changes needed to implement the UPC Agreement and the Unitary patent. The consultation period is very short in that it closes at 11:45 on 2 Sept 2014.  To facilitate this consultation HMG has published a consultation document 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 which has been prepared by the IPO ("the consultation document"). impact assessments on Unified Patent Court implementation: Alignment of exceptions to infringement, Unified Patent Court Implementation - Jurisdiction and Unified Patent Court Implementation - Unitary Patent and a statement of innovation.

On pages 29 to 34 of the consultation document there is a draft statutory instrument together with an explanatory note on page 35. The statutory instrument will be known as The Patents (European Patent with Unitary Effect and Unified Patent Court) Order 2015 ("the Order") and it will be made under s.88A of the Patents Act 1977. Art 1 (2) of the Order provides that it will come into force when the UPC agreement comes into force and art 1 (3) that it has the same extent as the Patents Act 1977 which means that it covers not just the UK (England and Wales, Scotland and Northern Ireland but also the Isle of Man). Art 2 makes substantial amendments to the Patents Act 1977 including the insertion of new Schedules A3 and A4 on the Unitary patent and the UPC.

Although neither I nor my chambers are on the list of organizations consulted on this proposed legislation in Annex A (page 24) I shall be responding to it and I shall bring it to the attention of inventors through my Inventors Club blog and businesses and individuals and their professional advisors in the regions through my regional blogs and newsletters. Should there be demand for seminars and webinars by local solicitors or patent attorneys I shall hold those as well. The only reason why the provisions of the Intellectual Property Act 2014 relating to registered designs and unregistered design rights got through (particularly clause 13) is that the government has ears only for the design lobby and ignored the warnings of experienced IP practitioners. This legislation is much more significant and far reaching and we have to make sure the same thing does not happen again.